4.1 Likely to offend a significant section of the community

Pursuant to section 17(1)(c) of the Act, an application for registration of a trade mark must be rejected if the use or registration of the mark would be likely to offend a significant section of the community.

The word “offend” is defined in the Macquarie Dictionary as meaning:

1. To irritate in mind or feeling, cause resentful displeasure in.
2. To give offence or cause displeasure.

No exact equivalent of section 17(1)(c) existed in the Trade Marks Act 1953,³² nor is there an exact equivalent in overseas legislation.³³

In the Hallelujah case ³⁴ Mr Myall, acting as the UK Registrar’s Hearing Officer, considered whether the trade mark HALLELUJAH was registrable in respect of “articles of clothing for women” under the UK Trade Marks Act 1938. Section 11 of that Act prohibited the registration of any matter the use of which would be “contrary to morality”. Mr Myall made the following comments regarding the meaning to be attributed to the phrase “contrary to morality”:³⁵

It is well established that the registrability of a trade mark must be judged as at the date of its application. I conclude that the phrase “contrary to morality” falls to be considered by the generally accepted standards of today and not by those of 1938. The difficulty is to be sure what those are, and more particularly, where the line is to be drawn between marks whose registration is prohibited by the section and those where it is not. When religious and moral standards are changing, sometimes quite rapidly, it seems to me that the Registrar should only follow where others have given a clear lead. While he must not remain isolated from the day-to-day world, frozen in an outmoded set of moral principles, he must equally not presume to set the standard. He must certainly not act as a censor or arbiter of morals, nor yet as a trendsetter. He must not lag so far behind the climate of the time that he appears to be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts for registration a mark which many people would consider offensive.

Mr Myall concluded that the use of the mark HALLELUJAH would be “contrary to morality” because it would “offend the generally accepted mores of the time”.³⁶

Mr Myall went on to consider whether registration of the mark should also be refused pursuant to section 17(2) of the UK Trade Marks Act 1938. With regards to that section he commented, firstly, that “a refusal would … not be justified by a vague feeling of distaste for the mark itself”,³⁷ and secondly that:³⁸

The adverse use of the Registrar’s discretion would be warranted if registration would be reasonably likely to offend persons who might be a minority in the community yet be substantial in number.

In support of the above proposition Mr Myall quoted the comments of Evershed J in La Marquise Footwear Inc’s Application, ³⁹namely:

It is the duty of the Registrar … to consider not merely the general taste of the time, but also the susceptibilities of persons, by no means few in number, who still may be regarded as old fashioned and, if he is of the opinion that the feelings or susceptibilities of such people will be offended, he will properly consider refusal of the registration.

Mr Myall concluded that the registration of the mark HALLELUJAH for clothing would be “reasonably likely to offend the religious susceptibilities of a not insubstantial number of persons”.⁴⁰

More recently the question of whether a mark is “contrary to accepted principles of morality” was discussed in Ghazilian’s Trade Mark Application.⁴¹In that case the applicant had applied to register the mark TINY PENIS in respect of clothing, footwear and headgear. Acting as the Appointed Person, Simon Thorley QC commented: ⁴²

In my judgment the matter should be approached thus. Each case must be decided on its own facts. The dividing line is to be drawn between offence which amounts only to distaste and offence which would justifiably cause outrage or would be the subject of justifiable censure as being likely significantly to undermine current religious, family or social values. The outrage or censure must be amongst an identifiable section of the public and a higher degree of outrage or censure amongst a small section of the community will no doubt suffice just as lesser outrage or censure amongst a more widespread section of the public will also suffice.

Mr Thorley went on to say that the Registrar must consider the question objectively, from the point of view of “right-thinking members of the public”:⁴³

A right-thinking member may himself or herself not be outraged but will be able, objectively, to assess whether or not the mark in question is calculated to cause the “outrage” or “censure” that I have referred to amongst a relevant section of the public.

Mr Thorley concluded that the mark TINY PENIS was “contrary to accepted principles of morality”, and therefore should not be registered:⁴⁴

I do not doubt that a very large section of the public would find [the mark] distasteful but that is not enough. Would they be outraged? Would they feel that the use should properly be the subject of censure? … Placing myself in the shoes of the “right-thinking” member of the public … I have concluded that this trade mark would cause greater offence than mere distaste to a significant section of the public. The offence resides in the fact that an accepted social and family value is likely to be significantly undermined. This value lies in the belief that the correct anatomical terms for parts of the genitalia should be reserved for serious use and should not be debased by use as a smutty trade mark for clothing.

In another recent decision, the OHIM Fourth Board of Appeal considered whether the mark DICK & FANNY was registrable. ⁴⁵ The examiner had rejected the mark on the basis that it was liable to offend a significant portion of English-speaking consumers and was thus contrary to “public policy or accepted principles of morality”. The Fourth Board of Appeal disagreed and held that the mark was registrable. In support of the mark’s registrability the Fourth Board of Appeal noted that the mark “does not proclaim an opinion, it contains no incitement, and conveys no insult”. The Board agreed that the mark “may, at most, raise a question of taste, but not one of public policy or morality”. The United Kingdom Patent Office appears to have had the same opinion, as an earlier application for the mark DICK & FANNY that was filed with that Office was accepted, and has been registered.

It is clear from the above that a distinction should be drawn between marks that are offensive and marks that would be considered by some to be in poor taste. Section 17(1)(c) only prohibits the registration of marks that are likely to offend a significant section of the community. It does not prohibit the registration of marks that are in poor taste.

When considering whether the use or registration of a trade mark “would be likely to offend a significant section of the community”, examiners should note that:

• Each case must be decided on its own merits.
• The question must be considered as at the date of application.
• The question must be considered objectively, from the point of view of “right-thinking members of the public”.
• The application should not be rejected merely because the mark is considered to be in poor taste.
• A mark should be considered “likely to offend a significant section of the community” where:
  • The mark is likely to cause a significant section of the community to be outraged; and/or
  • A significant section of the community is likely to feel that the use or registration of the mark should be the subject of censure.
• A significant section of the community is likely to feel that the mark should be the subject of censure where the mark is likely to undermine current religious, family or social values.
• The significant section of the community may be a minority that is nevertheless substantial in number.
• A higher degree of outrage or censure among a smaller section of the community, or a lesser degree of outrage or censure among a larger section of the community, may suffice.

Footnotes

³² Section 16(1) of the Trade Marks Act 1953 prohibited the registration of “any scandalous matter” or “any matter the use of which would be … contrary to morality”.

³³ Section 3(3)(a) of the UK Trade Marks Act 1994 prohibits the registration of a trade mark that is “contrary to public policy or to accepted principles of morality”, while section 42(a) of Australia’s Trade Marks Act 1995 prohibits the registration of a trade mark that “contains or consists of scandalous matter”.

³⁴ HALLELUJAH Trade Mark [1976] RPC 605.

³⁵ Ibid, at 607-608.

³⁶ Ibid, at 610.

³⁷ Ibid, at 609.

³⁸ Ibid, at 610.

³⁹ (1946) 64 RPC 27 at 30.

⁴⁰ HALLELUJAH Trade Mark [1976] RPC 605 at 610.

⁴¹ [2002] RPC 628.

⁴² Ibid, at 635.

⁴³ Ibid.

⁴⁴ Ibid, at 638.

⁴⁵ Dick & Fanny, Case R 111/2002-4.