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.