PERSPECTIVES

By requiring a high degree of outrage from the consumer majority, the current legislation leaves inadequate recourse for minority groups who are offended by trademarks. The high bar of ‘scandalous’ can produce unfair results for minority groups in circumstances where a trademark is something that is highly offensive to them, but only mildly shocking or colourful to the majority. For example, the offensiveness of referring to African American women as ‘BLACK TAIL’ was overlooked in America since the trademark was directed towards a Caucasian audience.5 In Australia, the majority group is Western and Christian; in 2021, Christianity was the most common religion at 43.9%,6 and 69.9% of the population had an Australian or English ancestry.7 Thus, the views of groups not aligning with this demographic will have less weight when considering whether a trademark is scandalous.

¹ Trade Marks Act 1995 (Cth) s 42(a).

² Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003) 57

IPR 594, 599.

³ Trademark Application No. 106321 by Eric Granville Mercy (1955) 25 AOJP 938.

4 Anne-Marie Cropley, ‘The Registration of Scandalous Trademarks’ [2008] (72) Intellectual Property Forum: Journal of the Intellectual Property Society of Australia and New Zealand 20, 26.

5 Ibid 26.

6 ‘Religious Affiliation in Australia’, Australia Bureau of Statistics (Web Page, 4 July 2022) <abs.gov.au/articles/religious-affiliation-australia>.

This is particularly an issue as controversial marks have an inherent appeal to brand owners, as their ‘edginess’ makes them more memorable and provides greater distinctiveness to their products.8 For example, the ‘FCUK’ mark by French Connection, which despite being difficult to pronounce, is very noteworthy and lends the brand an exciting and controversial image.9 Furthermore, minority groups only make up a ‘small percentage’ of a company’s market share, and so losing their patronage is not enough of a deterrence to prevent trademark owners from using such ‘offensive’ marks.10 Advertising and brand marketing means that successful trademarks are highly visible and almost inescapable for all consumers.11 Thus, the current regulatory framework has created a scenario where non-Western and non-Christian individuals may be regularly exposed to deeply offensive trademarks and have no legal means of address.

7 ‘Cultural Diversity: Census’, Australia Bureau of Statistics (Web Page, 28 June 2022) <https://www.abs.gov.au/statistics/people/people-and-communities/cultural-diversity-census/latest-release>.

8 Amanda Scardamaglia, ‘Are You Nuckin Futs? Registering ‘Scandalous’ Trademarks in Australia’ (2012) European Intellectual Property Review 34(9) 628, 629.

9 Patricia Loughlan, ‘Oh Yuck! The Registration of Scandalous Trademarks’ [2005] (61) Intellectual Property Forum: Journal of the Intellectual Property Society of Australia and New Zealand 38, 38-9.

10 Cropley (n 4) 20.

11 Ibid.

II. PRACTICAL ISSUES WITH LOWERING THE THRESHOLD

Although examining a mark from the perspective of any group which may take offence with the mark may produce fairer outcomes, it is extremely difficult to enact. The major difficulty would lie in assessing whether the minority group actually takes offence at the mark. Individuals within the same group will still have different opinions and values, and so not all members may find the mark offensive.12 For example, the US Courts found that the view of seven Native Americans that the football team ‘Redskins’ was offensive did not represent the opinion of the entire ethnic group.13 Although those individuals took offence with the name, the Court found other Native Americans took pride in their name being used as a symbol of ‘strength and skill’.14 Similarly, while a part of the lesbian community found ‘DYKES ON BIKES’ offensive, others had re-claimed the label ‘dyke’ to represent themselves and so found the mark more humorous than offensive.15 Determining the group majority’s opinion in every instance of contentious trademarks would be arduous and complex, requiring surveys of all group members.16 This would render the trademark registration process extremely lengthy and expensive, and would not be an appropriate use of government funds by IP Australia.17 Thus, it would not be feasible to assess a trademark’s offensiveness to all groups in Australia.

III. RESOLUTION OF ISSUE THROUGH PUBLIC DISCOURSE INSTEAD OF LAW

Rather than being regulated by legislation, offensive trademarks should be scrutinised by society and be curtailed via social activism and public backlash. The ATMO is not the appropriate body to adjudicate on the morality of marks and control social discourse. IP law is designed to protect and achieve commercial objectives, and so determining morality is ‘outside the function and purpose’ of the ATMO.18 Furthermore, preventing registration does not necessarily prevent offensive brand names from being displayed.19 In the United States, 53.45% of rejected marks were still being used,20 further reinforcing that IP law is not the appropriate body of law to resolve issues based on morality or political correctness.

Thus, rather than being prescribed by law, offensive trademarks should be scrutinised by society, driven by changing values. For example, the increased focus on cultural sensitivity and political correctness led to the

‘RedSkins’ and ‘Coon Cheese’ trademarks being voluntarily changed by businesses. Social activism is therefore a more powerful mechanism through which to hold businesses accountable and raise awareness of offensive terms.21 Further, restricting the content of trademarks via the law may be harmful to minority groups as it prevents them from reclaiming certain marks for themselves.22 Minority groups often re-claim disparaging names for themselves, such as the word ‘queer’ by gay activists or ‘n*gger’ by AfricanAmerican rap artists.23 The prominence of trademarks via mass marketing has meant they have become part of ‘society’s zeitgeist’,24 and arbitration by the ATMO risks stifling social discourse. Thus, there are strong policy reasons for preventing IP law from arbitrating on the offensiveness of trademarks, and instead relying on social activism and public backlash to assist minority groups in addressing scandalous marks.

Unfortunately, the current regulatory framework of trademark law majorly favours Western and Christian groups and allows for businesses to profit off offending minority groups. However, the complex social issues raised by this are better resolved through public discourse rather than a heavy-handed approach through law reform.

12 Jendi B. Reiter, 'Redskins and Scarlet Letters: Why "Immoral" and "Scandalous" Trademarks Should Be Federally Registrable' (1996) 6(3) Federal Circuit Bar Journal 191, 204-7.

13 Ibid 204.

14 Ibid 205.

15 Cropley (n 4) 28.

16 Anne Gilson LaLonde and Jerome Gilson, ‘Trademarks Laid Bare: Marks That May Be Scandalous or Immoral’ (2011) 101(5) The Trademark Reporter 1476, 1493-4.

17 Ron Phillips, ‘A Case for Scandal and Immorality: Proposing Thin Protection of Controversial Trademarks’ (2008) 17(1) University of Baltimore Intellectual Property Law Journal 55, 70-1.

18 Megan M. Carpenter, ‘Contextual Healing: What to Do about Scandalous Trademarks and Lanham Act 2(a)’ (2016) 68(1) Hastings Law Journal 1, 44; Sophia O'Sullivan, ‘Scandalous Trademarks in Australia and the United States: Constitutional Validity, Uncertainty and Inconsistency’ (2018) 3 Perth International Law Journal 10, 11.

19 LaLonde (n 16) 1485-6.

20 Carpenter (n 18) 362.

21 Phillips (n 17) 63.

22 Reiter (n 12) 207.

23 Ibid.

24 Ibid 208.