US Supreme Court classifies ban on registering ‘scandalous trade marks’ as a freedom of speech violation

02 August 2019

Last month’s landmark decision by the United States’ Supreme Court, which saw the U.S. Patent and Trademark Office’s power to ban ‘immoral’ and ‘scandalous’ trade marks struck down, is being heralded as another victory for ‘free speech’.

The decision was indeed a victory for streetwear designer Erik Brunetti, whose application to register the ‘FUCT’ trade mark (an acronym for ‘Friends U Can’t Trust’) was denied on such basis but overturned in June of this year. The Supreme Court considered that the provision under the U.S. Trademark Act (also known as the ‘Lanham Act‘) allowing a bar on the registration of ‘immoral’ and ‘scandalous’ to be “unconstitutionally view-point-based” and therefore a violation of the ‘freedom of speech’ clause of the First Amendment.

The ruling, which comes two years after the Supreme Court struck down a similar ban on ‘disparaging’ marks, has likely opened doors for the registration of trade marks that were previously deemed unregisterable in the U.S.

According to the majority opinion written by Justice Kagan, the ban provides the U.S. Patent and Trademark Office with discretion to approve or reject a mark based on their prediction of what a majority of consumers would think about those marks; and while ‘FUCT’ may be profane, “there are a great many immoral and scandalous ideas in the world (even more than there are swear words)”.

Although six justices agreed that the ban on registering ‘immoral’ or ‘scandalous’ marks was unconstitutional, three had dissented on the basis that some speech-related restrictions could survive constitutional scrutiny and that prohibiting the registration of ‘sexually explicit’ or ‘lewd’ marks may not violate the First Amendment – prompting calls for a narrower, viewpoint-neutral application of the Lanham Act’s ban.

While the Brunetti decision may open doors for those with pending applications for ‘immoral’ or ‘scandalous’ applications, it may not lead to an influx of applications to register obscene marks.

Generally, businesses are not barred from adopting, using or enforcing explicit trade marks and can now enjoy the protections afforded by federal registration – however, vulgar and profane marks are still deemed a risk for businesses that are facing pressure to assume more corporate social responsibility.

Nonetheless, the ruling has prompted discussion over the interpretation and application of the Lanham Act, which provides scope for Congress to adopt a more carefully focused statute that prohibits the registration of marks containing profane terms that play no real part in the expression of ideas.

In Australia, applications to register ‘scandalous’ trade marks are rejected under s 42(a) of the Trade Marks Act 1995 (Cth). Unlike the U.S, however, Australia doesn’t have a constitutional guarantee of freedom of speech, which affects the prospects of success for appeals to rejected applications that may be similar to Brunetti’s ‘FUCT’ mark.

While the Australian Trade Marks Act does not require a morality-based judgement of offending marks, the IP Australia Trade Marks Office (ATMO) has noted that trade marks that incorporate words and images that appear to condone and/or promote violence, racism or sociopathic behaviours fall within the ambit of ‘scandalous’.

When assessing potentially scandalous marks, ATMO often considers the transient definition and context of ‘scandalous’ matters. This was exhibited in 2014 when the application to trade mark ‘MH370’ was refused on likelihood that the configuration of numbers and letters would offend a section of the community due to the sensitive nature of the MH370 tragedy to the Australian community – a stance that ATMO would not have taken prior to the harrowing incident.

Additionally, ATMO has applied this transient approach to other applications to register marks that traditionally bore racial or religious connotations – the offensive quality of each mark having fluctuated over time. It will be interesting to see what approach ATMO will take with ‘scandalous’ trade marks following the U.S decision.

This article was written by Helen Kavadias, Partner and Laksha Prasad, Graduate.

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