In a recent light-hearted decision from the Australian Trade Marks Office, the application for the word mark ZRO FUX was assessed as to whether the mark contains or consists of scandalous matter. The decision in Kristopher Preston [2024] ATMO 103 is an important reminder for brands seeking to register eye-catching trade marks using idiosyncratic spelling, phonetic equivalents and how to avoid rejection of a trade mark application due to scandalous matter.
In September 2022, the Applicant applied to register the trade mark ZRO FUX for goods in Class 25, encompassing apparel (clothing, footwear, headgear). The application encountered resistance when the examiner issued an adverse report, citing section 42(a) of the Trade Marks Act, which mandates rejection if a trade mark contains or consists of scandalous matter. The examiner argued that ZRO FUX was phonetically identical to the phrase “zero f**ks” and likely to offend a significant portion of Australian consumers.
Scandalous matter
Section 42(a) stipulates that an application for the registration of a trade mark must be rejected if the trade mark contains or consists of scandalous matter. The term “scandalous” is not defined within the Trade Marks Act, necessitating reliance on judicial interpretations and dictionary definitions.
Accordingly, the delegate first considered the Macquarie Dictionary definition of “scandalous” as:
- Disgraceful to reputation; shameful or shocking.
- Defamatory or libellous.
Given that the trade mark did not fall within the second definition of defamatory or libellous, the focus was on whether ZRO FUX was disgraceful, shameful, or shocking. The decision in Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd 1 (Cosmetic Toiletry) provided that “scandalous” implies causing a significant degree of disgrace, shock, or outrage, beyond merely giving offence.2
Cosmetic Toiletry
In Cosmetic Toiletry, opposition was taken against registration for the trade mark ‘Look Good + Feel Good = Root Good’ for toiletry goods in classes 3 and 25. The hearing officer noted that in ‘most minds’ the mark will be seen as “crude, both in sentiment and in grammatical construction“; however, had not “transgressed the standard of s42” as in ordinary circumstances, ” it is not, in itself, likely tocause any significant degree of shock“.3 Accordingly, the delegate considered that for the application to be rejected under s42(a), the trade mark “must contain or consist of matter which is likely to cause a significant degree of disgrace, shock or outrage which goes beyond merely giving offence”.4
Phonetic Equivalents and Idiosyncratic Spelling
The IP Australia Trade Marks Manual of Practice and Procedure (the Manual) offers guidance on handling trade marks containing offensive language, especially phonetic equivalents. The Manual suggests that phonetic equivalents can be acceptable if sufficiently modified by humour or idiosyncratic spelling.
The Applicant argued that ZRO FUX should be treated similarly to previously accepted marks, such as FARKEN ORSUM and FARKOFF. They contended that ZRO FUX was not necessarily phonetically identical to “zero f**ks” and that its unique spelling added a layer of idiosyncrasy and humour.
The delegate acknowledged the Applicant’s argument regarding the doubtful reading of ZRO as ZERO. However, they emphasised that the presence of FUX in the trade mark was a critical factor. Despite the unique spelling, FUX was considered an overt phonetic equivalent of “f**ks”, necessitating further scrutiny under section 42(a).
Cultural and Media References
The Applicant cited cultural references, such as the French film “Zero F**ks Given” and Kevin Hart’s comedy special “Zero F**ks Given”, to demonstrate that the phrase has been used in mainstream media, implying a lower level of offence in contemporary society. The delegate acknowledged these references, noting that the use of such phrases in mainstream media can serve as a “good indication of the current level of offence such words are likely to cause in the broader Australian population”.5 This approach aligns with the reasoning in the UK Hallelujah Trade Mark case, 6 where the delegate emphasised that the Registrar in relation to changing moral standards, “should only follow where others have given a clear lead” and must not “act as a censor or arbiter or morals” or presume to set the standard.7
Outcome for ZRO FUX
The delegate in reaching the decision, considered that the mainstream media adoption of the phrase “zero f**ks” could be considered a ‘clear lead‘ by which the Registrar could follow if required. Accordingly, the delegate found that while some may find the word FUX in “bad taste, puerile or offensive“, the words are unlikely to cause a significant degree of shock or outrage beyond merely giving offence.
The decision importantly offers insight into the application of section 42(a), the assessment of societal standards, phonetic equivalents, and cultural and media references in determining whether a trade mark is likely to cause offence. The decision is also a reminder of culturally contextualised arguments when contesting adverse reports under section 42(a), the evolving nature of morals and the need for the Registrar to align with the contemporary societal standards of Australians.
This article was written by Luke Dale, Partner and Christopher Power, Law Graduate.
1 (2003) 57 IPR 594, 598 (Williams).
2 Ibid.
3 Ibid 600.
4 Kristopher Preston [2024] ATMO 103, [7].
5 Ibid [16]-[17].
6 [1976] RPC 605.
7 Ibid 607.
