The Registrar is obliged to decide, on behalf of the ordinary person, whether a trade mark should be regarded as shameful, offensive or shocking, and therefore be rejected.

The words and images fitting this description have changed over time, and it is quite likely in the 21st century, that words which would have caused major offence in earlier times are now acceptable as trade marks in certain markets. Similarly, words which were once innocuous may have developed quite different connotations and now be regarded as scandalous in certain circumstances.

2.2

The Registrar must decide potentially scandalous matters with very little support from the courts or other decision makers. Justice Evershed stated in La Marquise Footwear, Inc’s Application (1947) 64 RPC 27 at 30:

I must wholeheartedly accept the proposition that it is the duty of the Registrar (and it is my hope that he will always fearlessly exercise it) to consider not merely the general taste of the time, but also the susceptibilities of persons, by no means few in number who still may be regarded as old fashioned and, if he is of the opinion that the feelings or susceptibilities of such people will be offended, he will properly consider refusal of the registration.

Further guidance comes from Mr Myall, the deciding officer in a UK case, where the test was "contrary to morality” rather than scandalous. In Hallelujah Trade mark [1976] RPC 605 (‘Hallelujah Case’) he said at 607:

I conclude that the phrase "contrary to morality" falls to be considered by the generally accepted standards of today and not by those of 1938. The difficulty is to be sure what those are, and more particularly, where the line is to be drawn between marks whose registration is prohibited by the section and those where it is not. When religious and moral standards are changing, sometimes quite rapidly, it seems to me that the Registrar should only follow where others have given a clear lead. While he must not remain isolated from the day-to-day world, frozen in an outmoded set of moral principles, he must equally not presume to set the standard. He must certainly not act as a censor or arbiter of morals, nor yet as a trendsetter. He must not lag so far behind the climate of the time that he appears to be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts for registration a mark which many people would consider offensive.

2.3

There is additional comment, but little direction, from two other decisions:

Trade Mark Application No. 106321 by Eric Granville Mercy (1955) 25 AOJP 938 (‘Mecca’)
In the Matter of Ellis & Co.’s Trade Marks (1904) 21 ROC 617 (‘Quaker’)

The Mecca decision suggests that the trade mark:

should be evaluated in the context of the ordinary people it might offend, and
only a proportion of Australians need to be offended for grounds for rejection to be raised under this section.

The Quaker decision suggests that:

a “sentimental objection” is not enough for a ground for rejection to be raised under this section; and
the standard to be adopted when evaluating grounds for rejection is how the ordinary person will react to the trade mark, whether that person is a Muslim, Christian, Quaker or any other religion, race, or persuasion.

None of these decisions gives a clear view of what the Registrar should or should not regard as scandalous. It appears that the ordinary person should not be credited with either a very thick or very thin skin. But neither should the ordinary person be subjected to gross obscenity or profanity. The Registrar's decision is one which must be made on the merits of each case, taking into account the words or images applied for, the intended market for the goods/services involved and the level of acceptance of the terms within the general population.

2.4

The scandalous element has to be something that is obvious and up front in the trade mark. A mere suggestion within the trade mark or a vague possibility that someone might find it offensive is not sufficient.

2.5

Consideration should be given to context of use, but that alone cannot be the decisive factor. It is appropriate to consider normal, expected usage rather than possible usage. For example, in relation to an application for t-shirts it would not be appropriate to consider how a trade mark would be received when worn in church during a solemn religious occasion as this would not constitute normal expected usage for such goods.

2.6 Obscene and coarse language in trade marks

While changes in society have resulted in fairly broad acceptance of many scatological and suggestive words, there are some words which are likely to cause offence across a wide section of the community. Whether a word considered by many as offensive language is acceptable as a trade mark will depend to some degree on the amount of invention and imagination used to present it. Phonetic equivalents of strong but commonly used expressions, such as PHAR QUE or FAR KEW, will generally be acceptable if the expression is sufficiently modified by way of humour, thoroughly idiosyncratic spelling (for example, DR PHUQ) or other factors (for example, disguising the word within a device element).

Conversely, an overt phonetic equivalent such as FUK M, FUCT or F⮍CK where the difference in spelling is minor and it is not softened by anything in the way of humour or subtlety, is still sufficiently scandalous as to require a ground for rejection, as is the word concerned spelt out in full.

2.7

Less commonly used expressions, particularly where they also have a double meaning, are far less likely to be offensive to any significant element of society. Calculated concealment of the words, or a clever disguising within a device element may create an acceptable trade mark. Clever advertising campaigns may bring words regarded as coarse into almost acceptable usage. An example is the television campaign that brought the word BUGGER into prominence. There are now a number of registrations containing this word, something that would have been unlikely 20 years ago.

2.8 Profanity

Profanity is defined in the Macquarie Dictionary in part as meaning characterised by irreverence or contempt for God or sacred things; irreligious, especially speaking or spoken in manifest or implied contempt for sacred things. The Registrar has historically been particularly careful in the handling of trade marks which may have religious connotations. Religion is an issue often surrounded by strong feelings. Particular care needs to be taken with applications incorporating profanity or religious images. Again, the offending words/images need to be obvious within the trade mark, as a ground for rejection is not appropriate if there is only a vague suggestion that something might be profane.

2.9 Words or images appearing to condone violence, racism and/or terrorism

Post September 2001 the public is more conscious of issues such as terrorism. Trade marks which suggest violence along these lines may cause more public concern than they might have in the past.

Trade marks incorporating words and images which appear to condone and/or promote violence, racism or sociopathic behaviours fall within the ambit of scandalous marks. Again the reference needs to be obvious within the trade mark before a ground for rejection can be raised. For example, an application for the word SNUFF for movie studio and/or movie making services in class 41 would attract a ground for rejection under section 42(a), because it is a direct reference to so called "snuff" movies, i.e. movies in which people are actually murdered.

2.10 Is it scandalous or just in bad taste?

Where a trade mark incorporates elements of obscenity, violence or profanity the examiner needs to decide whether the trade mark is scandalous or only in bad taste. This requires a consideration of the ultimate market for the goods. Words considered as bad language while most likely acceptable on adult surf clothing or party plan goods designed for adults, are unlikely to be acceptable on children's toys or clothing. However, the fact the examiner finds the trade mark in bad taste on the adult goods is insufficient reason to apply the provisions of section 42(a). For example, applications such as ROOT GOOD or I DON'T GIVE A FLYING F♦ ♥ ■ might be in poor taste but are not scandalous.

2.11 Trade marks which must be regarded as scandalous

There are some trade marks which, no matter what the market is, will always be regarded as scandalous and therefore unacceptable to the Registrar. These trade marks are often those likely to be seen as promoting racial vilification, religious intolerance and personal abuse of an individual. The following examples demonstrate the kinds of phrases which will always attract a ground for rejection under section 42(a):

trade marks with elements of personal abuse (eg ROOT YOU, <politician's name>);
trade marks incorporating racial or ethnic abuse (eg F**K <country or ethnic group name>);
trade marks incorporating abuse of a national flag (eg F**K with the Australian flag forming the stars); and
trade marks incorporating elements of religious intolerance/abuse (eg ALL <name of religion>S ARE EVIL).

2.12 Images of Persons

A section 42 ground for rejection will apply in relation to trade marks containing images of persons that would clearly be viewed as scandalous. Images can include photographs, portraits, cartoon caricatures and other stylised representations.

If research shows that there are strong community, governmental or other significant concerns then this is relevant information that may support raising a section 42 ground for rejection. However a section 42(a) ground for rejection would typically only be raised at examination where:

the trade mark itself could be considered scandalising (e.g. a grossly distorted caricature of a major political leader); or
the trade mark contains or consists of an image of a well-known person accompanied by a profane suggestion; or
the relationship between the goods and services and a person’s image in the trade mark would clearly scandalise (e.g. an image of the Pope in relation to “contraceptives”).

Section 43 may also be triggered if the image of a person contained in the trade mark has some fame, renown or notoriety in relation to the specified goods and services. Refer to Part 29 Trade Marks Likely to Deceive or Cause Confusion - 4.4 Marks suggesting endorsement, licence or approval.

2.13 Indigenous Knowledge trade marks

When assessing trade marks that contain Indigenous Knowledge subject matter, careful consideration should be given to whether the material would be likely to offend.

A section 42(a) ground for rejection should be raised for trade marks that contain subject matter that:

• Has religious, spiritual, or cultural significance;

• Is sacred or secret;

• Is derogatory or otherwise promotes intolerance, racism, or violence.

Where material in a trade mark is of significant cultural, spiritual or religious significance to an Indigenous community, consideration should be given as to whether the commercial use of the material in the form of a trade mark would be scandalous, including:

• The nature of the indigenous subject matter and its sensitivity to Indigenous people;

• The context in which the mark is proposed to be used i.e. the goods and services;

• Ownership and any other mitigating or aggravating factors identified through research.

A ground for rejection may be reconsidered where information or evidence is provided showing that the trade mark or proposed use of the trade mark would not be offensive to the relevant Indigenous community.