Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Scandalous matter

Date Published

Key Legislation:​​​​​​​

Patents Regulations:

  • Schedule 3 (superseded) Formal requirements for documents to be filed- for applications before 24th February 2019

Legislative Instruments:   

Related Chapters:

Trade Marks Office Manual of Practice Procedure


It is a formal requirement that a complete application must not contain or consist of scandalous matter.

However, in practice we rarely need to consider this requirement.

Examination practice

There have been no administrative or judicial decisions considering the term ‘scandalous matter’ under Australian patents legislation. Therefore, in practice, examiners are not expected to consider the requirement of ‘scandalous matter’ except in in extreme examples.​​​​​​​

    Case law

    The only guidance for the term ‘scandalous matter’ is under Australian and United Kingdom trade marks legislation. These decisions have not arrived at clear 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 page 30); and
    • The standard is how the ordinary person would react to the trade mark (Ellis & Co's Trade Mark (1904) 21 RPC 617).

    Amended Reasons

    Amended Reason Date Amended

    Published for testing

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