D05.6 Scandalous designs

Date Published

The regulations provide that there is a ground of revocation if the design is scandalous or might reasonably be taken to be scandalous. A scandalous design is one which would cause a significant degree of shock or offense to the public or an individual’s sense of propriety or morality. It is important to note that it is the design being assessed, albeit the design in relation to a product.

The scandalous nature of a design may result from a single visual feature or be limited to only part of the overall appearance. This may be a particular pattern, shape, image or word, or ornamentation included as part of the design applied to the product. Where a visual feature as part of an overall design would shock or offend, or be defamatory to a person or group of people, or might reasonably be taken to result in one or more of these outcomes, the design would then meet the definition of ‘scandalous’ under the provision.

Any assessment of whether a design is scandalous should however take into account all of the visual features forming the design in relation to a product.

Other factors to consider include:

  • Visual features that may fit this description need to be assessed against their current relevance. This may have changed over time, and it could be the case that a visual feature which may have caused offense in the past is now generally more accepted by the public. Similarly, a visual feature which was once innocuous may now have developed a quite different meaning and be regarded as scandalous in certain circumstances.
  • The Registrar is particularly careful in the handling of designs which:
    • include profanity or religious connotations;
    • appear to condone violence, racism and/or terrorism or other type of discrimination.

These issues are ones that are often associated with strong feelings and cause offence. Caution should be to be taken with designs incorporating the above.

  • Is the design likely to shock or offend? Or, is the design instead likely to be seen as something in bad taste?

There is a question of what standard of morality or propriety is to be applied. In particular, a design might be viewed as offensive to some sections of Australian society, and quite acceptable to others.

The context of use, including the product name provided by the Owner and the particular market or industry that the product is applicable to, should also be considered as part of this assessment. Again, it is the design applied to the product that is of concern, not necessarily the purpose of the product or industry to which the product is applicable. That said, the product name and its purpose can also be relevant factors to consider, especially if the name is likely to affect the public’s assessment of the design. It may raise significant concern on the basis that it suggests what the product is and who it is aimed at, which may be shocking or offensive to the public on the basis of what they see the product bearing the design as representing.

An example of this could be a design with the product name ‘Children’s toy’, which includes a visual feature (for instance the overall shape) that clearly suggests use in an adult entertainment setting. Whilst the visual features of the design may be quite normal when applied to an adult entertainment product and itself may be considered scandalous, it is likely to shock and offend the general public when it is applied to a children’s toy.

Accordingly, this provision would apply if:

  • The design would be viewed as scandalous to a significant degree of the Australian community (e.g. child pornography);
  • The design would be viewed as scandalous to a minor portion of the community, and it promotes racial or other types of discrimination; or
  • The design contains material that is likely to be libellous or defamatory.

Note that it would seem likely that the ‘informed user’ concept is not appropriate to the test of a scandalous design, as arguably a design is unlikely to be considered scandalous to the relevant informed user.

This issue has parallels in both Trade Marks and Patent law. Please note however that under both Trade Mark and Patent law, the equivalent provision is worded in a way that suggests a slightly different assessment. In both cases the application must not contain or consist of scandalous matter, whereas Designs legislation includes both designs that are scandalous and designs that might reasonably be taken to be scandalous. The latter allows for a wider consideration as to whether the design meets this threshold.

Further information about how this issue is dealt with under Trade Mark and Patent practice and procedure is available at:

Trade Marks