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Scandalous Trade Marks: How Far is Too Far?

In nearly all industries, marketing arbours the conventional. Imaginative, striking and memorable branding not only helps your product stand out from your competitors, but these qualities are increasingly attractive to consumers. Edgy – even controversial – brand names and trade marks have the potential to elevate your business or product. But how edgy is too edgy?

As always, the law has a lot to say on the issue. Fledgling businesses and their marketing people would do well to familiarise themselves with the relevant trade mark law when making branding decisions. A registered trade mark does two things: 

  • defines how your product or service is uniquely recognised, and 
  • legally protects your exclusive right to use your trade mark. 

Acquiring a registered trade mark requires formal registration, and the trade marking process is governed by the Australian Trade Mark Act.

Are Rude or Scandalous Trademarks Illegal?

Section 42 of the Australian Trade Mark Act states that an application for the registration of a trade mark must be rejected if the trade mark contains or consists of scandalous matter, or, if it’s use would be contrary to law. 

This section isn’t toothless – trade mark applications being rejected under section 42(a) for being “too scandalous” are far from unheard of. This can be (and has been) confusing for businesses, after all, a bit of scandal can be great for advertising. 

What Counts as Scandalous Matter in Trade Marking?

What does the Australian Trade Mark Office or, if it comes to it, the courts, consider when deciding if a trade mark is scandalous?

Taking a look at some recent examples of trade mark applications that ran into trouble at the Australian Trade Marks Office we can see some patterns emerging. In 2003, a trade mark application for the slogan LOOK GOOD + FEEL GOOD = ROOT GOOD, in relation to a cosmetic product range, was found not to be scandalous. This decision was reached in consideration of the evolution of public taste and contemporary community standards. The decision also makes the distinction between branding that is scandalous and branding that is merely crude, explicit or in bad taste. 

This reasoning was followed in the appeal decision to allow the registration of the POMMIEBASHER beer and clothing trade mark. While the initial rejection decision held that the term promoted violence and racial prejudice, the appeal decision reasoned that the term isn’t actually used in that way, that it had become part of “ordinary and acceptable, if colourful and colloquial language”. 

This decision does prove that courts consider the way terms are used in their contemporary setting, rather than their literal meanings. 

However, the threshold is not limitless. 

A streetwear trade mark application including the mark KUNT was rejected due to the phonetic closeness to another English word. 

The distinction between this and the above examples is that although both are somewhat controversial, it can depend on how upfront the scandalous nature appears in the wording. 

Another example of a trade mark that was granted is that of ‘ABSOFCUKINGLUTELY’. This trade mark was only granted after it was amended from its original, less subtle, spelling. 

Subtle and Imagination in Crude Trade Marks

It’s clear that in cases focusing on crude or explicit language, decision making bodies consider the level of subtlety and imagination utilised by the trade mark. The bottom line seems to be that a bit of creativity goes a long way in distinguishing the striking from the scandalous. 

Trade Marking a ‘Scandalous’ Brand Name

Pod Legal is no stranger to these kinds of cases. 

In 2012, we successfully appealed against the rejection of the NUCKIN FUTS brand name, applied for in relation to a range of nut-based snack foods. At first, the trade mark was rejected on the grounds it constituted a scandalous spoonerism. We considered this decision to be inconsistent, not only with other permissible brand names and trade marks (FAR KEW, FARKEN AWESOME, to name but two), but also out of step with common parlance, in Australia. 

For better or worse, we argued, it can’t be denied that Australians are getting more and more comfortable with the F word. The Trade Marks Office agreed and accepted the NUCKIN FUTS trade mark for registration, as a consequence.

The NUCKIN FUTS case also exemplified further elements that may be considered in determining whether a trade mark is scandalous. It was considered important, for example, that the NUCKIN FUTS brand name would predominantly be marketed in pubs and not, therefore, directed at children. 

This shows that consideration will be given to the sensibilities of the targeted consumer. It seems obvious and welcome that a similar trade mark would not be granted to a children’s product. 

Moving Forwards with Scandalous Trade Marks

Sure enough, community standards are constantly changing. What would have caused a scandal a decade ago might not even raise an eyebrow in 2020. Nevertheless, the bottom line is that businesses should be informed of the relevant law when choosing what path their branding will take. If your brand might benefit from an edgy or shocking trade mark, that’s OK, but be prepared for legal hassles along the way.

If you’re looking to trade mark a brand involving scandalous terms, crude colloquialisms or swear words, reach out to Pod Legal for experienced support in this complex facet of trade marking in Australia.