Now, you might wonder, what exactly does “scandalous” mean in this day and age? The truth is, it’s a moving target. What’s acceptable now may have been shocking 20 years ago, and vice versa. But if you’re thinking about registering a trade mark with edgy language, suggestive imagery, religious references, or controversial content, you need to understand this area of the law clearly before you file.
What Is a “Scandalous” Sign Under Australian Trade Mark Law?
The word scandalous is legally defined quite broadly. According to the Macquarie Dictionary, it means:
- disgraceful to reputation
- shameful or shocking
- defamatory or libelous
And under Webster’s Dictionary:
- causing scandal
- offensive to decency
- shocking to the moral feelings of the community
It’s up to the Registrar of Trade Marks to decide whether a mark would be considered shameful, offensive, or shocking to an ordinary person in today’s society, not based on their personal views, but on what the general public would think.
Community Standards
It’s important to remember that standards of decency evolve over time. Words or images that were once taboo may now be commonplace. Conversely, some terms that were once acceptable can now be seen as offensive, especially where they touch on sensitive cultural or social issues. As a trade mark attorney, I often remind clients that the Registrar should not act as a censor, nor as a trendsetter. The goal is to follow community standards, without lagging behind or rushing ahead of what society deems acceptable.
What Kind of Signs Are Likely to Be Rejected?
These are what could trigger a refusal under section 42(a):
- Straight-out profanity is usually unacceptable, i.e. whether spelled out or implied.
- Clever, humorous modifications (such as using deliberate misspellings or playful imagery) may sometimes get over the line, but not always.
- Any mark that shows contempt for religion, mocks sacred symbols, or uses religious figures in an inappropriate context is likely to be rejected.
- For example, using a religious figure to sell products like alcohol or contraceptives will almost certainly attract refusal.
- Trade marks that promote or trivialize violence, racism, or terrorism are seen as scandalous.
- This has become even more sensitive in the post-9/11 era. For instance, an application using “snuff” in connection with film services, referencing illegal acts, would be refused outright.
- Trade marks that insult individuals or groups, whether based on race, religion, gender, or nationality, will always be rejected.
- This applies even if the mark uses symbols like flags in an abusive way.
- Using the image of a person in a scandalous way (such as a caricature of a political or religious leader, combined with profanity) can trigger a refusal.
- The examiner will look at the context, how the image is presented, and how it connects to the goods or services.
- Using Indigenous cultural material, especially sacred symbols, stories, or names, without permission or sensitivity, may result in refusal. IP Australia takes these concerns seriously, particularly if the material promotes intolerance or is used for commercial gain inappropriately.
Scandalous vs. Bad Taste
One of the most common grey areas is the difference between “scandalous” and merely “bad taste.” Bad taste alone won’t prevent registration. It depends on the context and the market for the goods. For example, cheeky slogans for adult-themed products may be acceptable, but putting the same words on children’s toys would likely cross the line. The key test is that would the ordinary person in the target market find the trade mark genuinely offensive or shocking, or merely a bit cheeky or crude?
Practical Tips Before You File a Trade Mark
If you’re thinking of filing a bold or edgy trade mark, here are a few points to consider:
- Context matters, i.e. what are the goods and services? Who is the target market?
- Humor and creativity can help, but obvious profanity won’t get through, but clever wordplay sometimes will.
- Avoid anything that promotes violence, racism, religious intolerance, or personal abuse, as these are never acceptable.
- If your trade mark draws on Indigenous cultural material, consult with the relevant community and tread with great care.
- And most importantly, get legal advice early. An experienced IP attorney can tell you whether your trade mark is likely to be rejected before you invest time and money.
Final Thoughts
I always tell my clients, pushing creative boundaries is fine, but you need to know where the legal boundaries lie. Section 42(a) on scandalous signs is there to protect public decency and prevent offensive or harmful trade marks from entering the marketplace. If you’re unsure whether your trade mark might be seen as scandalous, or if you want to file a clever, edgy mark and maximize your chance of success, our team is here to help.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
