Raymond Scott (top) is a solicitor and Richard Watts a partner in Simpson Grierson's specialist intellectual property team.
An increasing number of New Zealand trade mark registrations which allude to potentially offensive material and the recent acceptance for registration of a NUCKIN FUTS trade mark in Australia are raising questions about whether there is a changing approach to potentially offensive trade marks due to shifting public views about what is considered offensive.
The Australian application for NUCKIN FUTS, covering nuts and other snacks, was initially objected to by IP Australia on the basis that the mark is scandalous.
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. The Australian Trade Marks Act 1995 provides that a trade mark application must be rejected if its use would be contrary to Australian law or if it contains or consists of scandalous matter.
The applicant later contended that the "F" word had become part of the everyday language of Australians, and IP Australia accepted the application for registration upon entry of the condition that "the trade mark will not be marketed to children".
New Zealand's approach to registration of offensive marks differs slightly. A trade mark is not registrable under New Zealand's Trade Marks Act 2002 if it is contrary to New Zealand law, or its use or registration would be likely to offend a significant section of the community, including Māori. The degree of offensiveness must be enough to cause outrage amongst a substantial number of people, although a trade mark may be registrable if it is merely vulgar or in poor taste.
Several New Zealand applications incorporating bad language have previously been refused registration, such as BULLSHIT. However, over the last 15 years a number of trade marks which allude to potentially offensive things have been registered. These include "5hit", "CNUT", "FCUK", "WNAK", and a number of marks incorporating "Bitch", such as "Stich 'n' Bitch". This suggests 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 offensiveness ground and the increasing prevalence and tolerance of bad language.
The offensiveness ground may not be raised if an applicant seeks registration of the individual inoffensive components of a potentially offensive mark. For example, it is conceivable that the words NUCKIN and FUTS could be registered individually, as each word has no known meaning.
In accepting the NUCKIN FUTS mark for registration, the condition required by IP Australia that "the trade mark will not be marketed to children" attempts to protect a vulnerable section of society from the crude allusion. It is surprising that the condition acknowledges the potentially scandalous nature of the mark, despite Australian law prohibiting the registration of scandalous marks. The condition also raises a number of difficulties:
it does not define what age group "children" applies to;
it is unclear whether marketing includes both product packaging and advertising; and
it is unclear whether indiscriminate or non-market-specific marketing is permitted.
Moreover, children are likely to come across the product at some point, even if it is limited for sale at certain venues such as pubs and clubs.
The Assistant Commissioner of Trade Marks in New Zealand has recognised that children may be inadvertently exposed to certain products and advertising though children may not be a target market. Limitations on the use of offensive trade marks in advertising are also dealt with outside the realm of trade mark law, such as by New Zealand's Advertising Standards Authority's codes for advertising. Given these difficulties, it is doubtful that the Intellectual Property Office of New Zealand would require similar conditions of use for potentially offensive marks which are registered.
There is an appreciable difference between bad language and threats to fundamental moral principles such as human rights. A trade mark application for BIN LADIN in Europe was rejected on the basis that it alluded to Osama Bin Laden and would glorify terrorism, while a trade mark application in Japan for ADOLF HITLER was also rejected on the basis that it could harm public order and morals.
Although standards of offensiveness in society will gradually change over time, it is unlikely there will be a significant shift in the view of principles of morality. The offensiveness ground in New Zealand's Trade Marks Act is valuable in assisting with the preservation of fundamental moral principles, and is key to facilitating consumer protection and the operation of a fair commercial market. Having regard to potential offence caused to Māori is also significant in recognising obligations under the Treaty of Waitangi. With these factors in mind, the offensiveness ground can be considered a necessary and justified limit on the freedom of (commercial) expression.
Ultimately, businesses will continue to adopt controversial trade marks and push marketing boundaries. However, New Zealand's Trade Marks Act and consumer protection laws remain useful for ensuring moral principles are not disregarded in our competitive commercial market.