Australia: Shocking your clients just became passé: US Court takes away the edge from scandalous trademarks

Thanks to two recent rulings of the US Supreme Court and the Court of Appeals of the Federal Circuit Court, trade marks containing "disparaging", "immoral" and "scandalous" matter are no longer barred from obtaining registration in the United States of America. In the past, the US Patent and Trade Mark Office (USPTO) had the power to refuse to register trade marks containing such matter under provisions that have now been struck down for violating the First Amendment right to free speech.

In this article, we consider the current position in the United States in the wake of these decisions, and compare this with the interpretation and application of the equivalent Australian provision dealing with "scandalous" trade marks.

The current position in the United States

Section 2(a) of the US Lanham (Trademark) Act provides that no trade mark shall be refused registration unless it, inter alia, "consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage".

In the case law, "immoral" or "scandalous" matter has been defined as:

"shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable...giving offense to the conscience or moral feelings...calling out for condemnation; vulgar." ¹

The USPTO's power to reject trade mark applications containing "disparaging" matter was challenged when an Asian-American rock-dance band applied to trade mark their band name THE SLANTS. The USPTO refused registration, on the basis that the word "slants" was "disparaging" to the Asian-American community (of which, it should be remembered, the members of the band were a part). Like true rock stars, the band took their case all the way to the Supreme Court, which ruled that a ban on the registration of "disparaging" trade marks violated the right to free speech under the First Amendment.

Hot off the heels of this ruling, in December 2017 the Court of Appeals for the Federal Circuit handed down the decision of In Re: Erik Brunetti (Brunetti). Brunetti concerned a trade mark application by the founder of an American lifestyle and clothing brand, cheekily named FUCT. Mr Brunetti's application was refused on the basis that it is the phonetic equivalent of a "vulgar" word.

Mr Brunetti appealed the decision up to the Court of Appeals for the Federal Circuit Court, which ultimately found that the ban on "immoral" and "scandalous" marks was a restriction on free speech, and not narrowly tailored to the protection of a government interest. While the Court recognised that the word FUCT was in fact "vulgar", it held that the First Amendment protects "even private expression which is offensive to a substantial composite of the general public" and the provision was struck down as unconstitutional.

Following Brunetti, commentators expect the USPTO will face a flood of applications for controversial, boundary-pushing trade marks that were previously unlikely to have been accepted.

Scandals down under

Section 42(a) of the Trade Marks Act 1995 (Cth) is the Australian equivalent of Section 2(a) providing, in even stronger terms than its US counterpart, that "an application for the registration of a trade mark must be rejected if the trade mark contains or consists of scandalous matter" (emphasis added).

But, of course, there is no Australian equivalent to the First Amendment. How, then, would a trade mark application for FUCT fare under Australian law?

Some guidance on the interpretation of "scandalous" is provided by the Trade Marks Office Manual of Practice & Procedure, which states that:

"While changes in society have resulted in fairly broad acceptance of many scatological and suggestive words, there are some words which are likely to cause offence across a wide section of the community. Whether a word considered by many as offensive language is acceptable as a trade mark will depend to some degree on the amount of invention and imagination used to present it. Phonetic equivalents of strong but commonly used expressions...will generally be acceptable if the expression is sufficiently modified by way of humour, thoroughly idiosyncratic spelling...or other factors."

This is no doubt how popular clothing brand French Connection has been able to obtain multiple registrations for FCUK (ostensibly an acronym for the name French Connection United Kingdom). Other inventively modified trade marks that have achieved registration include FAR KEW, FARKOFF and NUCKIN' FUTS. However, the Manual is clear that more overt phonetic equivalents such as FUCT will still be rejected under section 42(a).

In deciding whether a mark is too "scandalous" for registration, the Registrar will consider the merits of each case, taking into account the words or images in the trade mark, the intended market for the goods and services and the level of acceptance of the term within the general population.

A number of cheeky variations on the "F word" seem to be registrable these days on the basis that the word is now commonly used in Australia and, consequently, is no longer offensive or shocking to a substantial proportion of the population. However, other words remain decidedly off limits.

Take an application to register the trade mark KUNT for clothing which was, for obvious reasons, rejected under section 42(a). On appeal, the hearing officer noted that:

"the denotations of some foreign language or slang obscenities may be found to be so obscure to Australians, or meaningful only within the sub-culture which uses and accepts them without shock, that they could be accepted for possible registration".²

However, in this case (and despite the applicant's argument that the trade mark was a reference to a Dutch word "kunnen" meaning "you can"), the hearing officer determined that the word was far more likely to be viewed as a crude variation on the English obscenity.

It will be interesting to see whether the recent developments in the United States have any impact on the way trade mark applications are determined in Australia. Ultimately, however, determining whether a trade mark is scandalous or just in bad taste is something of a subjective test, on which reasonable minds (particularly those of different generations or backgrounds) may disagree. Some might consider that Nuckin' Futs!

Footnotes

¹In re McGinley, 660 F.2d 481, 485 n.6 (CCPA 1981) AT.

² Kuntstreetwear Pty Ltd's Trade Mark Application (2007) 73 IPR 438 at 449.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.