Canada: Scandalous, Obscene, Or Immoral Trademarks Revisited

Last Updated: January 26 2018
Article by John McKeown

In September we discussed the potential registration of trademarks categorized as "scandalous, obscene or immoral" marks. A case raising this issue was at the oral argument stage before the U.S. Court of Appeals for the Federal Circuit. The Court's decision has now been released.

The Facts

A Los Angeles designer filed several trademark applications for the trademark FUCT for use in association with a line of clothing. The applications were rejected by the U.S. Patent and Trademark office on the basis of non-compliance with the Lanham Act, which precludes the registration of a trademark that "consists of or comprises immoral, deceptive or scandalous matter".

The designer appealed the rejection to the U.S. Court of Appeals for the Federal Circuit. The appeal was held in abeyance pending the release of the decision of the US Supreme Court in the SLANTS case. In that decision the Court found that a related provision of the Lanham Act, precluding the registration of disparaging trademarks, was unconstitutional under the US Free Speech Clause of the First Amendment.

The Court of Appeals has now released its decision. They agreed that substantial evidence supported the Board's findings and the Board did not err when it concluded that the mark included immoral or scandalous matter. However, the Court said that the bar on the registration of immoral or scandalous marks was an unconstitutional restriction of free speech. This decision follows the U.S. Supreme Court decision in the SLANTS case. In that case the court said that the bar on registration of disparaging marks violated free speech principles.

One of the judges in the case delivered a separate written decision that proposed the bar be limited to only "obscene" marks since there were previous decisions that supported the position that a bar directed at such marks was not a violation of free speech principles. However, the majority did not agree with this approach.

The Canadian Position

Paragraph 9(1)(j) of the Trademarks Act prohibits the adoption, which includes use and application for registration of any scandalous, obscene, or immoral word or device in connection with a business as a trademark or otherwise. There are only a few cases that have considered the subsection. They suggest that in applying the paragraph the critical issue is to determine what are the current acceptable standards and what would be scandalous, obscene, or immoral to "some people by no means few in number".

The Canadian Charter of Rights and Freedoms guarantees the rights and freedoms set out in it subject only to such reasonable limits prescribed by law as can be demonstrably justified in a free and democratic society. Freedom of expression is one of the rights that is guaranteed in the Charter.

There is Canadian case law dealing with copyright and obscenity. Generally decisions under the criminal law relating to obscenity should act as a guide in deciding whether a work is obscene. But this will not provide complete certainty as the book Fanny Hill: Memoirs of a Woman of Pleasure was condemned as obscene in England but found not to be obscene in Ontario.

In a leading case it was said in this area of the law one must be especially vigilant against erecting personal tastes or prejudices into legal principles. The standards of the community are not set by those of lowest taste or interest. Nor are they set exclusively by those of rigid, austere, conservative, or puritan taste and habit of mind. Something approaching a general average of community thinking and feeling must be discovered. Community standards must be Canadian. In cases close to the borderline, tolerance is to be preferred to proscription.

Comment

It has been suggested that the FUCT decision may be the final word in the U.S concerning "scandalous, obscene or immoral" marks since it follows and applies the recent decision of the U.S. Supreme Court in the SLANTS case.

It is not clear how brand owners in the U.S. will react. Marks that are disparaging like SLANTS may be perceived by brand owners as poor choices since potential customers will view them as offensive. However, marks that are potentially scandalous or immoral may be perceived by some brand owners in specific markets as advantageous since they will stand out in advertising. At the same time such marks will be potentially capable of being protected under the U.S. trademark system. Even if they are not protectable in Canada they could be widely advertised on the Internet and as we all know the Internet has no boundaries.

Because of these developments the Canadian Intellectual Property Office should develop a new up to date practice direction concerning the application of paragraph 9(1)(j) of the Trademarks Act to pending trademark applications.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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John McKeown
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