12.5. Section 43 refusal to register: Scandalous content

Any design that is ‘scandalous’ or ‘might reasonably be taken to be scandalous’ must not be registered (s 43; for applications filed before 10 March 2022, Designs Regulations, sch 2(8); for applications filed after 10 March 2022, para 4.04(1)(aa)).

A scandalous design is one that would cause significant shock or offence to the public or to an individual’s sense of propriety or morality.

What is being assessed is the design in relation to a product, so the overall appearance of the product is relevant.

A design can be scandalous because of a single visual feature or part or because of its overall appearance. The assessor will therefore examine all aspects and components of the design as well as its overall appearance.

When determining whether a design is scandalous, or might reasonably be taken to be scandalous, the assessor must also ensure that other material in the design application – e.g. applicant and designer details and the statement of newness and distinctiveness – does not fall into this category.

Designs that are or could be considered in bad taste are not scandalous unless they reach the threshold of being shocking or offensive.

Assessing whether a design is scandalous

The assessment will take into account all of the visual features that make up the design, including the particular pattern, shape, image, word or ornamentation included as part of the design applied to the product.

Note that different sections of Australian society have different standards of morality or propriety. A design that is quite acceptable in large parts of society could be offensive to certain groups. (This provision is similar to the scandalous objection in the law of trade marks.)

Therefore, when assessing a design, we consider whether it:

• would shock or offend a person or group of people (or could reasonably be expected to shock or offend them)
• would be (or could reasonably be expected to be) defamatory to a person or group of people
• is offensive in the current context. Certain visual features that may have caused offence in the past are now generally more accepted. On the other hand, a visual feature that was once acceptable may now have become offensive (e.g. because its meaning has changed)
• includes profanity or has religious connotations. The Registrar is particularly careful in handling these designs because they can give rise to strong feelings and cause offence
• ​​​​​​​seeks to profit from another person's death or misfortune
• appears to condone violence, terrorism, racism or another type of discrimination. Again, the Registrar takes great care in handling these designs.

Context of use

In assessing a design to decide whether it falls into the category of ‘scandalous’, the assessor will consider the context in which a design is used, including:

• the product’s intended use
• the product name in the application
• the relevant market or industry.

A product will not be scandalous merely because of its intended use or the market or industry that it will be used in. However, the product name and its purpose might affect the assessment, especially if the name is likely to affect people’s assessment of the design. The product name and intended use may be shocking or offensive to the public because of what they see the product bearing the design as representing.

Example

A design has the product name ‘Children’s toy’ but its overall shape clearly suggests adult use. This visual feature may be quite normal for an adult entertainment product but likely to shock and offend when applied to a children’s toy.

Extent and degree of offence

In determining whether a design is (or could reasonably be taken to be) scandalous, an important consideration is the extent and degree of offence. Section 43 applies when:

• the design would be scandalous to a significant proportion of the Australian community (e.g. child pornography)
• the design would be scandalous to a minority of the community and it promotes racial or other discrimination
• the design contains material that is likely to be libelous or defamatory.​​​​​​​

​​​​​​​Designs that include Indigenous Knowledge

Designs that consist solely of or incorporate Indigenous Knowledge in a way that results in misuse and / or a deceptive Indigenous connection with a person or group are likely to cause offence and be considered scandalous.

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What is Indigenous Knowledge

Indigenous Knowledge (or IK) is a term used to encompass knowledge held and continually developed by Indigenous peoples around the world. In Australia, our primary focus in this area is Aboriginal and Torres Strait Islander people. IK includes traditional cultural expressions (TCEs) such as language, symbols and visual art that can be represented in a design.​​​​​​​​​​​​​​

The following scenarios may apply when considering a design that includes IK:

• Indigenous designs that should not be used by anyone
• ​​​​​​​Indigenous designs that should not be used by anyone other than the traditional owners / creators
• ​​​​​​​Indigenous designs that can be used by anyone, but only with appropriate permission / consent from traditional owners / creators.

Indigenous designs applied for and registered in the name of a person or persons who have no connection to a traditional cultural expression may be considered shocking or offensive to both Indigenous and non-Indigenous people. It may be that only the traditional owner should use the design, or that no one should have the ability to commercially gain from a design that is considered sacred.

It’s important to note that this type of situation is not limited to a non-Indigenous person inappropriately asserting ownership of a design. It may be that an Indigenous group is offended by the use of an Indigenous design by another Indigenous group. For an example of considerations in a trade mark law context, see Jabree Ltd v Gold Coast Commonwealth Games Corporation [2017] ATMO 156.