Catchy and inventive trade marks may sometimes border on being scandalous. In Australia, like in most foreign jurisdictions, scandalous trade marks are not registrable. What is scandalous will always depend on the context and there are no hard and fast rules. That said, a good start is to ask yourself (or your trade marks lawyer), whether your goods or services, if labeled with a particular trade mark, are likely to shock your customers.
Australian Trade Marks Office (ATMO) has recently accepted a trade mark EAT MY BALLS CATERING (1516073) in relation to catering services for registration. This trade mark is a good example of an otherwise inappropriate slogan being used creatively and raises an interesting issue of scandalous trade marks.
The Trade Marks Act 1995 (Cth) stipulates that trade marks, which are scandalous, are not registrable. What precisely constitutes scandalous is a matter of opinion and the changing standards of morality. It seems that trade mark examiners often have difficulty in deciding whether a particular trade mark should be accepted or rejected based on this ground and the ATMO decisions in this area are not plentiful.
Last published decision was in 2011 in Peter Hanlon  ATMO 45, where the ATMO had to decide whether a trade mark POMMIEBASHERS in relation to clothing and beverages (including beer) was scandalous. The ATMO explained that a question of whether a trade mark is scandalous has to be answered by reference to its (intended) use. Will it shock the ordinary customer for the relevant goods or services? Hence, while a trade mark KUMTOYS for playthings in class 28 could be scandalous, the same trade mark for sex dolls in class 10 may not be. The ATMO found that POMMIEBASHERS was “merely colourful Australian slang in popular common use”.
Some examples of other contentious trade marks on the Australian Trade Marks Register are below. Do you think they are scandalous?
NUCKING FUTS (1408134) for nuts is registered with a curious disclaimer that the trade mark will not be marketed to children.
KUMTOYS (857668) for games and playthings was accepted for registration.
CUM ON (1519284) in relation to cosmetics, lubricants and condoms did not attract an objection for being scandalous and neither did BIG FAT COCK (1535851) for cleaning services.
COCKSOX (1198496) for underwear is a registered trade mark in Australia.
All nine attempts to register the word KUNT/KÜNT for clothing and alcoholic beverages failed in Australia.
THAT SHIT’S COOL (1524841) for clothing was accepted as registrable.
When applying for a trade mark, brand owners have to consider whether it may shock their potential customers. If so, it is likely that the ATMO will object to such a trade mark as being scandalous. That said, not all of the above trade marks are scandalous – some are simply bad taste.
Lastly, trade mark applicants need to be aware of the markets in which the goods will be sold. Sometimes a foreign word, which sounds nice, may have a devious meaning in foreign slang. Remember Mitsubishi Pajero (Spanish slang for a person who masturbates) sold to the Latin American market or Ford Pinto (a colloquialism for “penis” in Brazil) intended for the Brazilian market?
For all trade mark queries, please contact associate and registered trade marks attorney Mindaugas Skavronskas.