Free speech, clever word play or just offensive? Now that disparaging trade marks have been cleared in the US, we look at how far you can go in Australia.

The US Supreme Court has recently handed down a decision striking out a clause in US trade mark law that stopped the registration of disparaging trade marks.

The court ruled the clause was unconstitutional because it infringed on the First Amendment right to free speech.

Australia has a similar clause in its trade mark laws. But before anyone runs out to try and register a disparaging trademark in Australia to test the law, bear in mind that there is no explicit constitutional right to free speech in the Australian Constitution. (The High Court has ruled there’s an implied right to freedom of political speech, but that’s another story.)

So what happened and what’s the position in Australia?

US Supreme Court strikes out disparagement clause

The case before the US Supreme Court (Matal v Tam) involved a Japanese American music group calling itself The Slants that wanted to register the band name as a trade mark.

The group knew of the racist slur associated with the name and wanted to ‘reclaim’ the term and rid it of its disparaging effect. After the USPTO refused to register the mark based on the disparagement clause, the group argued that preventing them from using the name was a violation of free speech.

While the Supreme Court invalidated only the disparaging trade mark section of the statute, the immoral or scandalous element of the legislation still stands. Yet the reasoning in the judgement could easily be applied to the statute as a whole.

The case brings other disparaging decisions under US trade mark law back into public attention. Blackhorse v Pro Football, Inc. is currently pending appeal after the USPTO cancelled six trade marks using the term Redskins associated with a Washington state football team. The marks were blocked because of the disparagement clause and Pro Football, Inc. appealed. Given the Tam decision, it’s now unlikely the USPTO decision will stand in the way of registration of the trade marks for the team.

It is arguably too early to say whether the case will open the floodgates for disparaging and offensive marks. Free speech cases by their very nature protect the right to say something that others believe should not be heard.

From a long term viewpoint, it is questionable that many trade mark applicants would be trying to alienate sectors of their consumer market by seeking to offend. However World Trademark Review blogger Tim Lince observed that 11 potentially offensive marks were filed on the same day as the Supreme Court ruling. After questioning the applicants, Lince discovered that over half confirmed that they were filing in direct response to the Matal v Tam decision. If this is the primary motivation, it’s unlikely that it will be a growing trend beyond the immediate excitement.

What about Australia?

Without the constitutional foundation of free speech, it is difficult to see how a ripple effect could reach Australia. This is especially so when IP Australia rarely raises the equivalent objection under Section 42(a) of the Trade Marks Act 1995 (Cth). It is important to remember that Australia has never purported to have an unchanging standard for scandalous marks and it has always been a subjective test.

When it comes to religious marks IP Australia has been open about the standard changing over time, having previously objected to the use of terms such as Jesus and Mecca but now allowing their inclusion in various marks. Following the case of Re Hanlon [2011], the threshold for a “scandalous” trade mark is not whether it “could” offend but rather that it “will” offend. Furthermore, “a substantial number” of people must find it shocking.

The other issue to note is that the objection relies heavily on the goods and services for which the mark is seeking registration. It is not testing for whether it will offend people generally but rather that it will offend the “intended consumers”.

With all these requirements, it is little surprise that examiners have turned to s 42(a) infrequently. This returns to the question – why would anyone want to offend those whom the applicant intends to market to? Rather, it is more likely for scandalous marks to be offensive to the unintended market. Following the registration of NUCKIN FUTS and FCUK and the refusal of the mark KUNT it seems that IP Australia has greater tolerance for clever word play and little tolerance for explicit phonetic and visually offensive language.

The ground for rejecting a scandalous mark in Australia is not threatened by any competing constitutional right. The Trade Mark Examiner’s manual guidelines for rejecting scandalous marks are based upon societal standards of what offends. It is for this reason that section 42(a) will unlikely ever be deemed invalid. Rather we expect that as society’s standards change we’ll see marks registered that might have been blocked in the past.