In the US Supreme Court last week, a band called The Slants had a big win. The band, who are apparently “the world’s first and only all-Asian American dance rock band”, had applied to register their band name as a trade mark. Registration had been refused on the basis of a legislative provision which prohibited trade marks “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The US Patent and Trade Mark Office, noting that the word “slant” was an offensive racial epithet (and thus disparaged persons of Asian descent), refused registration on the basis of this “non-disparagement clause”. The Slants argued that their intention was to “reclaim” the epithet and “drain its denigrating force as a derogatory term”.

The argument taken to the US Supreme Court was that the non-disparagement clause was an unconstitutional infringement on the right of freedom of speech (including, in this case, freedom of trade marks) guaranteed by the First Amendment to the US Constitution. The Supreme Court agreed unanimously that the non-disparagement clause was unconstitutional and The Slants will get their trade mark. (An application to register “The Slants” as a trade mark in Australia was lodged in August 2015, but was later withdrawn, so maybe there will be no Australian tour to celebrate).

In Australia, we don’t have a constitutional guarantee of freedom of speech, but we do have a similar provision to the “non-disparagement clause”.  Australian trade marks law prevents the registration of “scandalous” trade marks. So, how might the application by The Slants have fared in Australia?

The Australian cases show that the question of what is “scandalous” requires an extensive consideration of the context.  For example, what is scandalous changes over time.  In 1955, an application to trade mark “Mecca” was refused on the basis that, as Mecca was recognised as the holy city of Islam, “the registration of MECCA as a trade mark might offend other nations, besides offending members of the Australian community”. Today, there are no less than 26 trade marks registered in Australia which include the word “Mecca”.

The context in which the trade mark will be used is also important. The use which is to be considered is the “normal, expected use” (not the full range of possible uses).  For example, the Trade Marks Office Manual says:

“For example, in relation to an application for t-shirts it would not be appropriate to consider how a trade mark would be received when worn in church during a solemn religious occasion as this would not constitute normal expected usage for such goods.”

To similar effect, in a case which allowed the registration of the trade mark “POMMIEBASHER” for certain clothing, the IP Australia hearing officer considered that:

“Even if the clothing is intended for infants, lawn-bowlers or members of a church choir, I fail to see how the trade mark approaches even the lesser standard of bad taste, let alone “scandalous”.

Conversely, however, an application in 2014 to trade mark “MH370” was refused on a number of bases, including that the trade mark was scandalous, because:

“It is likely that the use of this letter/numeral combination would offend a section of the community and is therefore scandalous. This is because of the sensitive nature of the tragedy to the Australian public and the associated loss of lives.”

Drawing all of that together, there must be a reasonable chance that an Australian application to trade mark “The Slants” would succeed.  If registration was refused, the drastic step of a constitutional challenge to the prohibition on “scandalous” (equivalent to the case which succeeded in the US Supreme Court) would seem likely to enjoy scandalously low prospects of success in Australia.

However, the real scandal in all of this would be if you didn’t take the opportunity to ensure that your trade mark protection strategies are up to date. We don’t claim to be much of a dance rock act here at StevensVuaran Lawyers, but we can certainly help you if you are thinking of getting the brand back together.

For more on our intellectual property law capabilities, contact Dennis Vuaran or Philip Stevens or Angus Macinnis