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by Lisa Ritson and Amruta Bapat

Australian law prohibits the registration of "scandalous" trade marks. Although the legislation does not define the term "scandalous", the case law has set a relatively high threshold for determining that a mark is "scandalous". Recent examples of successfully registered marks - namely NUCKIN FUTS and POMMIEBASHER - suggest that marks which are crude or in bad taste will not necessarily be considered "scandalous" under Australian law. However, marks which are overt phonetic equivalents of obscene words, with little or no modifications in spelling, are likely to be refused registration.

Key lessons

  • Trade mark applicants may experience difficulties if applying to register marks that are phonetic equivalents of obscene or offensive words, as such marks may be considered "scandalous" under Australian law and refused registration.
  • However, marks which lack an obvious "scandalous" element, or which are softened using humour, plays on words, unusual spelling or concealment within a device may be granted registration.

What does "scandalous" mean?

Under s 42(a) of the Trade Marks Act 1995 (Cth) (Act), a trade mark application must be rejected if "the trade mark contains or consists of scandalous matter". Neither the Act nor its corresponding regulations define the term "scandalous" for the purposes of s 42(a).

The Australian Trade Marks Office (ATMO) and Australian courts have interpreted the term "scandalous" by reference to its dictionary definition, i.e. "shameful", "shocking" or "offensive". The ATMO Manual of Practice and Procedure (ATMO Manual) provides that, in determining whether a mark is "scandalous", the merits of each case must be considered, including:

  • the words or images applied for;
  • the intended market for the relevant goods and services; and
  • the level of acceptance of the terms within the general population.

The threshold for rejecting a trade mark application under s 42(a) of the Act is relatively high. For a trade mark to be "scandalous" under s 42(a), it must have an "obvious and up front" scandalous element, rather than a mere suggestion or a vague possibility that the mark may be offensive in some circumstances. Marks that are crude or in poor taste will not necessarily be considered "scandalous". However, overt phonetic equivalents of obscene words, with little or no differences in spelling or presentation, are likely to be rejected. Marks which incorporate elements of personal, racial, ethnic or religious abuse will also be considered "scandalous" and refused registration.

For example:

  • the mark LOOK GOOD + FEEL GOOD = ROOT GOOD was held not to be scandalous, although it was arguably "crude", "explicit" and in "bad taste";(1) but
  • the mark KUNT was refused registration, due to its obvious visual and phonetic similarity with another English word.(2)

Some recent examples - NUCKIN FUTS and POMMIEBASHER

More recently, the trade marks NUCKIN FUTS and POMMIEBASHER were granted registration by the ATMO.

The trade mark NUCKIN FUTS, which was advertised for registration in July 2012, is protected in respect of goods including prepared nuts and potato crisps. The NUCKIN FUTS mark presumably overcame any section 42(a) objection as it does not contain an obvious, "up front" scandalous element, but rather a more subtle play on words.

In a decision that has raised eyebrows in both hemispheres, the POMMIEBASHER mark was held not to be "scandalous".(3) A Delegate of the Registrar of Trade Marks held that, based on the material before him, the term POMMIEBASHER was part of "ordinary and acceptable, if colourful and colloquial, language", and does not suggest that such a person "engages in racial vilification, or is prone to verbal abuse".

Scandalous? Maybe - but it's a high threshold

The examples in this article show that it is relatively difficult for a mark to be refused registration on the basis that it is "scandalous", with marks such as CUNCE, UNFKNBLVBLE! and "Farkoff" being granted registration. Nevertheless, trade mark applicants seeking to register a mark which is an obvious phonetic equivalent of an obscene word will need to be prepared for the application being rejected.

Please click on the links below for the other articles in the January 2013 IP/IT newsletter

Notes:
(1) Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594.
(2) Kuntstreetwear Pty Ltd's Trade Mark Application (2007) 73 IPR 438.
(3) Re POMMIEBASHER [2011] ATMO 45.

The information provided is not intended to be a comprehensive review of all developments in the law and practice, or to cover all aspects of those referred to. Readers should take legal advice before applying it to specific issues or transactions.

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