By Lydia Rhanakumar
Disclaimer: Some words in this article may offend the sensitivities of certain individuals. Please exercise discretion when reading.
Callipygian.
Intrigued? Well, you should be – the word means “having well-shaped buttocks” and is a registered trademark in the US! Now for those of you whose curiosity was aroused by the said word, let’s start from the very core of the matter by asking a rather valid question – can offensive trademarks be registered?
Basically, trademarks are a distinctive sign or indicator to identify to consumers that the products or services on or with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other parties. Seems rather easy to comprehend? Well, there’s more!
Now, you might think that the trademark databases of several Trademark Registries such as the United States Patent and Trademark Office (USPTO), the Intellectual Property Office of New Zealand (IPONZ), IP AUSTRALIA and our very own Intellectual Property Corporation of Malaysia (MyIPO) might be a tad bit dull – until due to curiosity or boredom – intrigue sets in and you start typing certain “words” you assume cannot possibly be trademarked – and make an interesting discovery.
Words such as “SNOT”, “PISS”, “SHIT” and the famous “FCUK” can be found on the USPTO, ”Intellectual Homosexual” and “NUCKIN FUTS” found on IP Australia, “CNUT”, “WNAK”, and a number of marks incorporating “Bitch”, such as “Stich ‘n’ Bitch” and “lippy bitch” found on IPONZ and lastly LIP BABI, KINGKOTE, PAL-AT and SODICK found on MyIPO. These are – to a certain extent – rather interesting, but when does it cross the line to the point that a trademark is deemed OFFENSIVE in nature?
It should be noted that in all the Trademark Registries stated above, there is a particular section which indicates that a mark, or a part of a mark shall not be registered as a trademark “if it contains or comprises any scandalous or offensive matter or would not otherwise be entitled to protection in any court of law”. However, it is imperative to bring forth the notion on what matter might in fact be considered scandalous or offensive. In such cases, what might be considered scandalous or offensive is often a subjective decision. Clearly, a trademark encompasses the appearance, pronunciation, meaning, and commercial impression of the respective marks – thus, it would be upon one’s individual mental impression or cognitive perception about the said marks. This is generally left to the imagination and comprehension of the public at large.
In Malaysia, for instance, the section that governs “offensive trademarks”, section 14(1)(b) TMA 1976, does not specify to whom the said marks would be offensive to – the section plainly connotes that it is an objective decision, nevertheless a particular mark’s impression on the general public at large would be subjective in nature to each and every individual. At this juncture, an objective test would be formed to determine if the mark would be deemed offensive based on the zeitgeist or generally accepted morals of the time. However, it should also be noted that as religious and moral standards change, sometimes quite rapidly, the Registrars too should not be stuck on an outmoded set of moral principles nor should he be so presumptuous as to set a particular standard. Eventually, one sees an overlap of both subjective and objective tests being present and adjudicated by the Registry – a seemingly tedious task!
Thus, we can say that the impression of a mark should be looked at subjectively – reading into not only the visual or aural connotation of the mark, but the overall perception of the mark. It must be noted that a mark should not be objected to merely on the ground that is has a “slight similarity” with an offensive or scandalous word.
Let’s take the “FCUK” mark for example. Would it be mistaken for that four-lettered expletive often known as the F-word? In judging whether the word FCUK would be construed as the other F-word, the Registrar had to examine the visual, aural and conceptual impact of the mark on consumers. The pronunciation would be by its individual letters (F-C-U-K), rather than as a word, so aurally they would be quite different. The conceptual meaning of the mark depended on whether the mark would be seen as the F-word, either spelled correctly or misspelled. While the F-word would cause offence to a significant section of the public, the offence was not caused by FCUK in itself. Rather the possibility of it being offensive arose through wordplay, mistake, or misconstruction of the letters. It would not be entirely accurate to see the mark as objectionable because it was capable of being seen as something that it was not.
The recent acceptance of the registration of the “NUCKIN FUTS” trademark in Australia raises questions about whether there is a changing approach in determining potentially offensive trademarks, due to the view and impression of the general public about what is considered offensive. The said mark covers goods such as “nuts and other snacks”, and was initially objected to by IP Australia on the basis that the mark is scandalous in nature. The mark was considered to be an obvious spoonerism, where the first consonant of each word in the mark is switched to form a play on words, and thus was found to contain or comprise a scandalous matter.
The applicant later contended that the F-word had become part of the everyday language of Australians, and quite remarkably IP Australia accepted the application for registration upon entry of the condition that “the trademark will not be marketed to children”. This suggests that allusions to obscenity in witty phrases or plays on words may no longer be considered offensive by a substantial number of people and reflects the subjective nature of the grounds of offensiveness and the increasing prevalence and tolerance of bad language.
Certain marks are also considered offensive due to the marks bearing some form of colloquial significance or slang in certain countries – for instance, marks such as “LIP BABI” and “PAL-AT” imply negative connotations amongst the local Muslims and Malays. What is significant here is that the Applicants of both of these marks are from overseas, and this clearly shows that there was a step lacking during the conceptualisation of the trademark, something that IP firms would do well to incorporate when advising clients – a linguistic search. Generally, both the said marks in all essence can be registered in their home countries – however, trademarks are territorial in nature and thus must be filed in each country where protection is sought. Further, seeing that the Applicants are foreign companies, it is imminently clear that they would not be aware of the definition attached to those words. This is where carrying out a linguistic search would come in handy. Don’t make the same mistake as Mitsubishi when they named their sport utility vehicle “PAJERO”. In Spanish slang, this is equivalent to the word “wanker”. Needless to say, they have had to adopt alternative trademarks in Spanish-speaking markets.
At this point, you may be wondering if every word or name you can think of has already been registered by someone, somewhere at some point in time. It is in fact extremely difficult today to find a trademark that is available unless it is an invented word like Kodak or Exxon. On the whole, in these modern times, businesses will continue to adopt controversial trademarks and push marketing boundaries. Let’s face it – we always remember something intriguing, naughty or scandalous and when creating a brand which reflects these alluring connotations it is best to keep in mind at all times the image that you intend to create amongst the general public at large!
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