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More Scandalous, Obscene or Immoral Trademarks

In January 2018 we discussed this bar to the registration of trademarks in Canada. The issue is in the press again as the result of a recent decision of the Supreme Court of the United States.


The Facts

The applicant was an artist and entrepreneur who developed a clothing line sold in association with the trademark FUCT. The applicant’s position was that the mark was pronounced as the letters F-U-C-T. But as the court observed, many people would likely read it as a brand name which was the equivalent of the past participle of a well-known word of profanity.


Previously the US trademarks legislation provided that a mark that disparaged a person living or dead, could not be registered. However, the US Supreme Court in the SLANTS case found this provision was unconstitutional under the US Free Speech Clause of the First Amendment.


In this case, the application was initially barred because the applied for mark consisted of “immoral or scandalous” matter. The examining attorney at the US Trademarks Office determined the mark was vulgar and not registrable. On appeal to the Trademark Trial and Appeal Board, this decision was upheld as the mark was said to be “highly offensive” and vulgar and had “decidedly negative sexual connotations”.


The applicant appealed to the Court of Appeals for the Federal Circuit. The court set aside the decisions below because the prohibition in the legislation violated the US right to free speech.


The US Patent and Trademark Office applied to the US Supreme Court. The court agreed with the Court of Appeals that the bar was unconstitutional as violating free speech. In addition, the court said that the reference to “immoral or scandalous” was substantially overbroad. There are many immoral and scandalous ideas (even more than there are swearwords) and the legislation covers them all. This violated the right to free speech.


One judge of the panel said the court’s decision would lead to unfortunate results as now there was no statutory basis to refuse to register trademarks containing the most vulgar, profane, or obscene words and images imaginable. Another judge said that the decision did not prevent Congress from adopting more carefully focused statutory wording to preclude the registration of marks containing vulgar terms that play no real part in the expression of ideas. Unfortunately, it may be easier to say this than to draft a new provision.


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 “by some people by no means few in number”. In practice, the decisions made in the Canadian Intellectual Property Office have been inconsistent.


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, for example, 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 that one must be especially vigilant against making 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 is difficult to know how to resolve these issues, but two things seem clear. First, while mainstream businesses are not likely to register trademarks like FUCT, businesses not part of the mainstream may wish to do so. Second, to avoid inconsistent application of the bar, it would be helpful if the Canadian Intellectual Property Office developed a practice direction concerning the application of paragraph 9(1)(j) of the Trademarks Act to pending trademark applications.


John S. McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

Email: mckeown@gsnh.com


These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

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