Canada: Offensive Trademarks: Can They Be Registered In Canada And The US?

Last Updated: February 8 2016
Article by Philip Lapin

Can you register an offensive trademark in Canada? A recent U.S. decision concerning "disparaging" trademarks has led some Canadian practitioners to question if the result would be similar in Canada.

The U.S. Court of Appeals for t­­he Federal Circuit recently issued a split decision, In re Simon Shiao Tam, holding that the bar on registration of "disparaging" marks under section 2(a) of the Lanham Act is unconstitutional and violates the First Amendment.

Canada has a prohibition against the adoption of "scandalous, obscene or immoral" marks, arguably similar to the US provision. The In re Simon Shiao Tam decision raises an interesting question as to how Canadian courts would respond to arguments that the prohibition against such offensive marks is unlawful.


In November 2011, Simon Shiao Tam, the front man for the Asian-American dance-rock band The Slants, filed a US application seeking to register the mark THE SLANTS for "Entertainment in the nature of live performances by a musical band." Mr. Tam named his band in an attempt to "reclaim" and to "take ownership" of Asian stereotypes.

The trademark examiner refused to register the mark on the basis that it was "disparaging," finding that a substantial percentage of persons of Asian descent would find the term offensive. The examiner's refusal to register the mark was affirmed by the Trademark Trial and Appeal Board and by a panel of the U.S. Court of Appeals for the Federal Circuit.

Barring the registration of "disparaging" trademarks violates the First Amendment

Sitting en banc, the majority of the U.S. Court of Appeals for the Federal Circuit held that the government cannot refuse to register disparaging marks because it disapproves of the ideas or messages conveyed by those marks. The disparagement provision was found discriminatory on its face – denying the registration of marks that refer to particular ethnic groups or religions "only if the message received is a negative one."

The Court rejected the government's argument that the disparagement provision is a regulation of commercial speech, finding that the provision targets a mark's "expressive character," rather than its function as a source identifier.

Of particular note is the Court's finding that although the disparagement provision does not directly ban speech, it deprives brand owners of substantive and procedural rights and therefore has a significant chilling effect on private speech. The Court was also particularly concerned with the uncertainty as to what might be deemed "disparaging" by the U.S. Patent and Trademark Office ("USPTO").

The holding in this case was limited to the disparagement provision of section 2(a).

Canadian perspective

The arguably comparable Canadian provision is paragraph 9(1)(j) of the Trademarks Act, which prohibits any person from adopting a mark considered to be "scandalous, obscene or immoral."

There has been very little interpretation of paragraph 9(1)(j) by Canadian courts. In one of the few cases, a 1992 decision of the Canadian Federal Court, the Court rejected an objection to registration of the mark "MISS NUDE UNIVERSE" pursuant to paragraph 9(1)(j), finding that the word "nude" was a "perfectly acceptable adjective". Similarly, in a 2009 decision, the Federal Court dismissed an allegation that a trademark depicting the letter "A" in a circle formed by a snake - a symbol that held significant spiritual value for followers of the written work Grail Message (which by some observers, is more important than the Bible) - was "obscene, scandalous or immoral" because some individuals believed that the mark was not being used to spread the "original" message of the group's founder.

With very little case law on point, CIPO's Trademarks Examination Manual suggests that in examining a mark in respect of paragraph 9(1)(j), examiners may be guided by the following:

  • 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 generally defined as causing general outrage or indignation.
  • 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.
  • 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 accepted standard of morality. (see IV.10.6 of the Trademarks Examination Manual)

Examiners are also required to establish that the mark would offend the feelings or sensibilities of a not insignificant segment of the public.

In spite of these guidelines, the Canadian Trademarks Office ("Office") has inconsistently applied paragraph 9(1)(j), recently objecting to registration of the mark "Lucky Bastard" for "Distilled spirits, alcoholic beverages" as being "scandalous, obscene, or immoral," despite having previously granted registrations for trademarks incorporating the term "bastard," including the well-known trademark "FAT BASTARD" for wine. The Office relied on the Collins English Dictionary, which defines "bastard" as "informal" and "offensive," finding that a not "insignificant segment of the Canadian public would, upon first impression, view the subject mark as scandalous as it would offend their religious sensibilities". The same applicant had previously applied for the mark "Lucky Bastard Vodka," which was similarly rejected by the Office as being "scandalous, obscene, or immoral" back in 2012.

The Office's objections to the "Lucky Bastard" applications reflect a surprisingly puritanical view which do not appear consistent with the perception of typical Canadians in the twenty first century or the limited case law.

These examples illustrate the subjective nature of paragraph 9(1)(j) and the difficulty applicants face in predicting what the Office may deem as "scandalous, obscene, or immoral". Interestingly, similar issues pertaining to the arbitrary application of the U.S. disparagement provision were raised by the U.S. Court of Appeals in the Simon Shiao Tam decision.

Similar to the United States, freedom of thought, belief, opinion and expression are guaranteed by subsection 2(b) of the Canadian Charter of Rights and Freedoms. While freedom of expression arguments have not yet been raised in Canadian courts in the context of section 9(1)(j), the U.S. Simon Shiao Tam decision might influence future litigants or courts to consider the issue.

For further information regarding this topic, please contact a member of our firm's Trademarks group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Philip Lapin
Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions