Articles for March 2023

By Jennifer Song / Senior Associate

The Madrid Protocol System allows you to file trade mark applications in a number of jurisdictions through one Madrid Application. In most instances, it will be cheaper to file in numerous countries/jurisdictions via the Madrid Protocol System as opposed to filing separate national trade mark applications.

The World Intellectual Property Office (WIPO) administers the Madrid System. The details of all pending/registered Madrid Applications (and registrations, called “International Registrations”) can be accessed via its online portal called the Madrid Monitor: https://www3.wipo.int/madrid/monitor/en/

The Madrid Application must be based on a national trade mark that has already been filed or registered (typically an Australian trade mark for Australian applicants). A Madrid Application is then filed via WIPO designating the various jurisdictions that are party to the Madrid Protocol.

The list of 130 jurisdictions/countries that are party to the Madrid Protocol can be viewed at: https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf

Notably, some groups of countries can be claimed as one designation. These include the European Union (which covers all members states of the EU including the Benelux countries), the OAPI (African Intellectual Property Organisation (which covers Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Côte d’Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo).

Though one Madrid Application can designate up to 130 juridictions, each jurisdiction will examine the particulars of the trade mark application. If there are issues raised via an examination report (or “Office Action”) during examination, a trade mark attorney/lawyer will need to be engaged in that jurisdiction/country and will need to respond to the examination report. 

Once registered, the International Registration requires renewal every 10 years and can be done via the WIPO online portal. All designations can be renewed with the click of a button!

However be warned – in many instances and in certain jurisdictions like China, lodging a direct national trade mark can be a much better choice than lodging via the Madrid Protocol.

If you have any questions, please do not hesitate to contact us.

By Jennifer Song / Senior Associate

In Australia, an application for the registration of a trade mark must be rejected if the trade mark “contains or consists of scandalous matter”. The test as to whether a trade mark is “scandalous matter” can be summarised as: “Will it shock the ordinary customer for the relevant goods/services?”

Thus, what is “scandalous matter” is a matter of opinion and can change over time. In the past, trade marks containing offensive racial terms were registered but would not be registrable today. On the other hand, religious terms such as “Jesus” and “Hallelujah” have been rejected in the past but have now been permitted.

It appears that in Australia, the threshold for what is shocking and thus “scandalous matter” is quite high and many words/terms may be considered as being bad taste, but not “scandalous matter” and thus, registrable.

Several trade marks that contain words phonetically similar to “FUCK” have been registered:

• “HEDFUK”;
• “FARKEN ORSUM”;
• “FARKOFF”;
• “UNFKNBLVBLE!”;
• “FAR KEW”.

However, the misspelt “CNUT” has been registered although numerous applications for “KUNT” have been refused over the years. The word “ASSHOLE” has been registered.
In 2003, the Australian Trade Marks Office found that the phrase “LOOK GOOD FEEL GOOD = ROOT GOOD” in respect of cosmetics and sexual hygiene products was registrable as the phrase was considered not likely to cause a significant degree of shock, despite being crude in sentiment.
In 2011, the Australian Trade Marks Office found that the mark “POMMIEBASHER” was not “scandalous matter”. The Delegate concluded that the mark was “part of ordinary and acceptable, if colourful and colloquial, language”.

Do you have a scandalous trade mark you wish to use and register as a trade mark in Australia? Now may be a better time than ever to lodge the scandalous trade mark with the Australian Trade Marks Office.