The registration of trademarks categorized as "scandalous, obscene or immoral" marks are in issue in both the United States and Canada. The issue has been recently raised in a case before the U.S. Court of Appeals for the Federal Circuit.
The Facts
A Los Angeles designer filed several trademark applications for the trademark FUCT for use in association with a line of clothing. The applications were rejected on the basis of the non-compliance with the Lanham Act which precludes the registration of a trademark that "consists of or comprises immoral, deceptive or scandalous matter".
The designer appealed the rejection to the U.S. Court of Appeals for the Federal Circuit. The appeal was held in abeyance pending the disposition by the US Supreme Court in the SLANTS case. In that decision the Court found that a related provision of the Lanham Act precluding the registration of disparaging trademarks was unconstitutional under the US Free Speech Clause of the First Amendment.
The oral argument stage of the appeal was completed in August and has been widely discussed. One issue raised was whether trademarks should be dealt with in the same way as works protected by copyright.
The Canadian Position
Paragraph 9(1)(j) of the Trademarks Act prohibits the adoption, which includes use and application for registration of any scandalous, obscene, or immoral word or device in connection with a business as a trademark or otherwise. There are only a few cases that have considered the subsection. They suggest that in applying the paragraph the critical issue is to determine what are the current acceptable standards and what would be scandalous, obscene, or immoral "by some people by no means few in number".
There is Canadian case law dealing with copyright and obscenity. Generally decisions under the criminal law relating to obscenity should act as a guide in deciding whether a work is obscene. But this will not provide complete certainty as the book Fanny Hill: Memoirs of a Woman of Pleasure was condemned as obscene in England but found not to be obscene in Ontario.
In a leading case it was said in this area of the law one must be especially vigilant against erecting personal tastes or prejudices into legal principles. The standards of the community are not set by those of lowest taste or interest. Nor are they set exclusively by those of rigid, austere, conservative, or puritan taste and habit of mind. Something approaching a general average of community thinking and feeling must be discovered. Community standards must be Canadian. In cases close to the borderline, tolerance is to be preferred to proscription.
Comment
It is difficult to know how to resolve these issues but two things seem clear. First, while mainstream businesses are not likely to register trademarks like FUCT businesses not part of the mainstream may wish to do so. Second, the Canadian Intellectual Property Office should develop a new up to date practice direction concerning the application of paragraph 9(1)(j) of the Trademarks Act to pending trademark applications.
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