The US Supreme Court declared as unconstitutional on June 24, 2019, a federal prohibition on the registration of immoral or scandalous trademarks. The trademark in question was FUCT, a popular clothing brand out of Southern California with roots in skateboard culture. The reason essentially was that trademark examiners can’t reject a trademark for expressing a viewpoint because that infringes on free speech.
Here in Canada a trademark examiner is guided by paragraph 9(1)(j) of the Trademarks Act which prohibits the adoption of any trademark consisting of, or so nearly resembling as to be likely to be mistaken for, any scandalous, obscene or immoral word or device. The Trademarks Examination Manual, published by the Canadian Intellectual Property Office (CIPO) states:
- A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive. It is generally defined as causing general outrage or indignation.
- A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage. This word “obscene” is generally defined as something that is offensive or disgusting by accepted standards of morality or decency; or offensive to the senses.
- A word or design is immoral when it is in conflict with generally or traditionally held moral principles, and generally defined as not conforming to accepted standard of morality.
The CIPO Manual goes on to review the caselaw, which in turn reflects accepted standards of morality that seem quaint and out of date. Here’s a question: is old caselaw on accepted standards of morality still relevant today?
The CIPO Manual states:
In La Marquise Footwear Inc. Re. (1946), 64 R.P.C. 27, Mr. Justice Evershed overruled the Registrar’s decision to refuse to register the non-invented word OOMPHIES for shoes on the admitted ground that “oomph” was American slang for sex appeal. Evershed J., while overruling the Registrar, made it quite clear that he had no disagreement with the principles upon which the Registrar acted, stating at page 30:
I must wholeheartedly accept the proposition that it is the duty of the Registrar (and it is my hope that he will always fearlessly exercise it) 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.
Additionally, Miss Universe, Inc. v. Bohna (1991), 36 C.P.R. (3d) 76 (T.M.O.B.) [affirmed (1992) 43 C.P.R. (3d) 462 (F.C), and reversed for confusion (1994), 58 C.P.R. (3d) 381 (F.C.A)] states at 82 of the decision:
I must say that at present we live in what is commonly called a “permissive age” where previously accepted moral standards are undergoing change. The difficulty is to determine what are the acceptable standards today and what would still be considered immoral, scandalous, or obscene by some people by no means few in number.
Although it does not specifically say “not insignificant”, the wording “by no means few in number” connotes the same idea.
In another case, the refusal to register a trademark was based on the argument that the trademark would offend people’s religious sensibilities. In Hallelujah Trade Mark  R.P.C. 605, the word HALLELUJAH was refused registration in respect of articles of clothing for women on the grounds that the word had an overwhelming religious significance and, as applied to the goods, would offend accepted mores of the time. As such, the Office is of the view that trademarks containing any religious references are generally not considered to be proper subject matter for obtaining a trademark registration.
A trademark consisting of the representation of a topless dancer combined with a second representation of the torso of a topless dancer was found contrary to paragraph 9(1)(j) and was refused by the Registrar pursuant to paragraph 12(1)(e) (see application No. 409,882).
Another question is whether in Canada the ability of trademark examiners to refuse trademarks violates basic constitutional rights. There is no easy answer. Freedom of expression is protected as a fundamental freedom by the Canadian Charter of Rights and Freedoms, but the Charter permits the government to enforce reasonable limits “that can be justified in a free and democratic society” – so, those rights are not absolute.