Australian trade mark registrations could now be
vulnerable to cancellation either because they are scandalous or
because their use would be contrary to law.
Trade mark registrations for REDSKINS owned by the Washington
Redskins football team face cancellation in that country because a
US court has held that they disparage Native Americans. Would such
registrations in Australia be vulnerable to cancellation on similar
US law allows a trade mark registration to be cancelled if it
"may disparage" or bring people into contempt or
disrepute. The US court decision is a significant victory for
Native American activists who have long campaigned against the
REDSKINS trade marks. The judge found that "evidence shows
that the term 'redskin,' in the context of Native
Americans, was offensive." The Washington Redskins have
signalled their intention to appeal.
In Australia, there are registration for the following REDSKINS
for clothing, games equipment and textile goods owned by the
United States National Football League; and
REDSKINS owned by Société des
Produits Nestlé SA for confectionery.
Australian law has no direct equivalent allowing the above
Australian registrations to be cancelled. To oppose registration or
to cancel an existing registration, the trade mark would need to be
"scandalous" or its use would need to be "contrary
What is "scandalous"?
Guidance from Trade Marks Office or court decisions is limited
and offending a particular group or minority may suffice but the
offence must be reasonably based. On this basis, terms such as
POMMIEBASHER and FAT BASTARD have been registered. There is also
the trade mark ABO on the register.
Presumably applications containing terms such as NIGGER or
NIGGER BROWN would be rejected, as in the product packaging below
left. The trade mark Registration 240232 (on the right), dating
from 1970, excludes any such material:
Because the courts and the Registrar of Trade Marks accept that
what is scandalous varies over time, it is possible that the
Australian REDSKINS registrations might now be vulnerable to
A less stringent approach seems to be taken for other types of
potentially scandalous trade marks. The Trade Marks Office
Examination Manual gives the following guidance:
"While changes in society have
resulted in fairly broad acceptance of many scatological and
suggestive words, there are some words which are likely to cause
offence across a wide section of the community. Whether a word
considered by many as offensive language is acceptable as a trade
mark will depend to some degree on the amount of invention and
imagination used to present it. Phonetic equivalents of strong but
commonly used expressions, such as PHAR QUE or FAR KEW, will
generally be acceptable if the expression is sufficiently modified
by way of humour, thoroughly idiosyncratic spelling (for example,
DR PHUQ) or other factors (for example, disguising the word within
a device element).
Conversely, an overt phonetic
equivalent such as FUK M, FUCT or FCK where the difference in
spelling is minor and it is not softened by anything in the way of
humour or subtlety, is still sufficiently scandalous as to require
a ground for rejection, as is the word concerned spelt out in
However FCUK is a registered trade mark.
What is "contrary to law"?
"Contrary to law" is very broad and may cover material
that is not "scandalous" but is defamatory. It is also
broad enough to cover a breach of section 18C of the Racial
Discrimination Act 1975, which provides:
because of race, colour or national or ethnic origin
It is unlawful for a person to do an act, otherwise than in
the act is reasonably likely, in all the circumstances, to
offend, insult, humiliate or intimidate another person or a group
of people; and
the act is done because of the race, colour or national or
ethnic origin of the other person or of some or all of the people
in the group."
It is possible that Australian trade mark registrations such as
those containing REDSKINS could now be vulnerable to cancellation
either because they are scandalous or because their use would be
contrary to law. Irrespective of their existing registrations and
the use of the marks over many years, it is questionable whether
the Registrar of Trade Marks would now register terms such as
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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