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2.29.12 Scandalous Matter

Date Published

It is a formal requirement that:

"a complete application must not contain or consist of scandalous matter."

There have been no administrative and judicial decisions considering the term "scandalous matter" under the Australian patents legislation. The only guidance in this area derives from a number of administrative and judicial decisions considering the term "scandalous matter" under the Australian and United Kingdom trade marks legislation. These decisions have not arrived at clear or objective criteria or guidelines for determining whether a trade mark is scandalous. However, they have stated and applied the following principles:

  • the ordinary meaning of the word "scandalous" is intended by the legislation (Cosmetic, Toiletry and Fragrances Association Foundation v Fanni Barns [2003] ATMO 10). The word includes matter that is disgraceful to reputation, shameful or shocking, and defamatory or libellous. It goes beyond merely giving offence.
  • the Registrar of Trade Marks must consider the general taste of the time as well as the susceptibilities of persons who may still be regarded as old fashioned (La Marquise Footwear Inc's Application (1947) 64 RPC 27 at 30).

  • the standard is how the ordinary person would react to the trade mark (Ellis & Co's Trade Mark (1904) 21 RPC 617).

Note: The relevant provisions are:

•  Formalities Determination (sec 17)
•  Schedule 3 (clause 14).

See 2.29 Formalities and Forms for further information.

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