July 6, 2017

Trade-marks: Bring out your Worst Words

Image Authored by: Marc J. Belliveau Posted in: Intellectual Property

On June 19, 2017, the U.S. Supreme Court (USSC) delivered a unanimous decision that the 1946 trade-mark law (Lanham Act) prohibiting the registration of “disparaging” words and phrases, violated the country’s constitution as an unacceptable restriction on free speech.

The doors have now opened wide in the U.S. to apply for blatantly offensive trade-marks.

The case involved an Oregon-based, Asian-American dance-rock band called The Slants, who applied to register the band name as a trade-mark. The U.S. Patent and Trademark Office (USPTO) denied the application because it deemed the mark as offensive; the band appealed the refusal and won. The USPTO then appealed to the USSC and lost.

The American statute prohibited registration of trade-marks that consist of “immoral, deceptive or scandalous matter or matter that may disparage … persons, living or dead, institutions, beliefs, or national symbols or bring them into contempt of disrepute”.

The USSC decision also represents a victory for the NFL’s Washington Redskins, who’s six offensive trade-marks were cancelled in 2014 at the request of Native American activists and who are appealing the cancellation. They will now likely have their marks reinstated.

Canadian Perspective

 In Canada, a similar provision is now more likely to be challenged as unconstitutional under our Canadian Charter of Rights and Freedoms. The Trade-marks Act prohibits words and phrases that are “scandalous, obscene or immoral”.

The significant difference between the Canadian and American laws is that while the U.S. prohibition only applies to registration of trade-marks, the Canadian provisions prohibit adoption, use and registration, which is a much greater limit on a person’s freedom of expression. This may be more vulnerable to a successful attack than its U.S. counterpart.

The Canadian Trade-marks Examination Manual provides some basic guidance to the public, trade-mark agents and trade-mark applicants:

  1. A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive. It is defined as causing general outrage or indignation.
  2. A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage. This word is generally defined as something that is offensive or disgusting by accepted standards of morality or decency; or offensive to the senses.
  3. A word or design is immoral when it is in conflict with generally or traditionally held moral principles, and generally defined as not conforming to the accepted standard of morality.

Unpredictable and Inconsistent Approach

 Although rarely considered in Canadian courts, there are examples of trade-marks that have triggered the subjective “scandalous, obscene or immoral” threshold. The following past decisions reflect the morals of their time.

On the other hand, two racist Redskins football trade-marks, considered racist by many, were registered and have since been renewed twice. The trade-mark register discloses 177 INDIAN registrations and 32 ESKIMO registrations, many of which are obviously offensive or objectionable. There are six registered trade-marks containing the word “bastard”, yet LUCKY BASTARD (for vodka) was recently refused. Many more examples exist to show the unpredictability and inconsistency of trade-mark examinations. At some point a Canadian applicant will appeal a refusal and the USSC jurisprudence will likely affect the outcome of the Canadian appeal.

Summary

 There is a great deal of subjectivity in determining whether a chosen word or phrase is over the limit of what is considered appropriate. With the emphasis on political correctness in recent years, it seems the spectrum of moral acceptability is shifting every few months. As such, it will become increasingly difficult to assess whether our trade-mark registry will accept or refuse a contentious application, at least until a court draws the line.

For more information about intellectual property matters, please contact Marc Belliveau.

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