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| Image courtesy of steffenz |
According to reports, the initial objection was based on the fact that the proposed trade mark was an 'obvious spoonerism' evoking an offensive word. However the applicant, Universal Trading Australia Pty Ltd as trustee for Basil and Groovy Trust, reportedly argued that the swear word implied by the trade mark was part of Australian everyday language and should not be considered offensive.
Under section 42(a) of the Trade Marks Act 1995 (Cth), an application for registration of a trade mark must be rejected if the Registrar of Trade Marks is satisfied that the trade mark 'contains or consists of scandalous matter'.
In an earlier decision considering the application of this section, a delegate of the Registrar found that, in order for a trade mark to be rejected under section 42(a), it must do more than give offence. Instead, there must be a 'real tangible danger' of 'a significant degree of disgrace, shock or outrage' being caused by the mark (Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594). In that case, the hearing officer accepted for registration the trade mark LOOK GOOD + FEEL GOOD = ROOT GOOD on the ground that, while crude and potentially in bad taste, it was not in ordinary circumstances likely to cause a significant degree of shock to members of the public.
Last year, the trade mark POMMIEBASHER was also accepted for registration, with the hearing officer finding that the term was colourful Australian slang and would not cause offence to any person (Peter Hanlon [2011] ATMO 45).
Other trade marks that have been accepted for registration in Australia include several marks incorporating the word 'damn' or 'bloody', CNUT, ABSOFCUKINGLUTELY (after rejection of the proposed mark ABSOFUCKINGLUTELY on the ground of section 42(a), although the registration was successfully opposed on different grounds)[1] and FCUK. The latter was the subject of a proceeding in the United Kingdom unsuccessfully seeking a declaration of invalidity (Re Registered Trade Mark No 2184549 in the name of French Connection Limited (2006) 70 IPR 438). It was held that, although the trade mark could be used to evoke the similarly-spelled swear word, it was not the swear word and that accordingly 'the generally accepted moral principle prohibiting the use of swear words' did not apply to the word FCUK. On that basis it was found that 'the intrinsic qualities of the mark FCUK are not such as to render it objectionable'.
On the other hand, an application to register the word KUNT was rejected in Australia because it was the aural equivalent of a swear word that was still considered highly offensive, not merely suggestive of such a word (Application to Register KUNT [2007] ATMO 34). The hearing officer did comment that the mark KÜNT, which was the word intended to be used by the applicant, may be registrable with an endorsement stating any meaning in a foreign language. However a subsequent application to register KÜNT was allowed to lapse after an adverse report.
In summary, resemblance to or evocation of a swear word does not necessarily preclude the registration of a trade mark. However, it appears to remain the case that an application for such a mark may be found to be scandalous if it too closely resembles a swear word.
Although the applicant for the NUCKIN FUTS trade mark sought to rely on the increasing acceptance of the relevant swear word in the community, it is not clear that this was the sole reason for its acceptance for registration or that a proposed mark would be accepted if it bore a closer aural or visual resemblance to a swear word. Further, the NUCKIN FUTS trade mark is subject to an endorsement requiring that it not be marketed to children, which further supports the view that potentially vulgar trade marks will still be subject to close scrutiny by IP Australia.
Partner: Paul Kallenbach
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