The Japanese restaurant ‘Fuku’ (pronounced foo-koo), which recently opened a new West Palm Beach location, ran into a snag while attempting to register their trademark. The Florida Department of State Divisions of Corporations rejected the application on the basis of subsection 2(a) of the Lanham Act, which states that a mark that “consists of, compromises or includes immoral, deceptive or scandalous matter” is not registrable. Far from immoral, the word “fuku” actually means “good fortune, wealth, and prosperity” in Japanese. Restaurant owner Paul Ardaji is currently appealing the decision, saying that “[t]he state looks at things from a very narrow scope.” While some Floridians like J.C. Reyz think that the name is for “shock value,” Ardaji is certain that the state will “realize it’s not our intention to be scandalous or deceptive.” Without a valid registration, Ardaji is vulnerable to others using ‘fuku’ in their business names and misleading consumers which will eventually diminish his own restaurant’s reputation and goodwill.

The Canadian Trade-marks Act contains a similar provision against “any scandalous, obscene or immoral word or device.” In fact, subsection 9(1)(j) is even stricter than its US counterpart, prohibiting any adoption of obscenities in connection with a business rather than simply being a bar to registration. A trademark is deemed to be adopted, according to section 3, when it is first used or made known  in Canada or when an application for its registration is filed. Furthermore, this prohibited mark need not be used “as a trademark”, to identify the source of wares or services, pursuant to the definition provided in section 2, which means uses that would normally not infringe trademark rights may be prohibited by subsection 9(1)(j).

However, this paragraph has apparently not received much attention from Canadian courts and is subject to the “sensibilities” of trademark examiners. Nevertheless, ‘Fuku’ raises some interesting issues for trademark boards. Ardaji’s attorney James D’Loughy cited two reasons for their failure to register. “I believe they’re culturally unaware of what the word means,” he said. “I think there is some puritanical viewpoint based on the letter we received.”

As globalization and multiculturalism flourish, trademark examiners will inevitably encounter more foreign words. In fact, English is notorious for being “a language that lurks in dark alleys, beats up other languages, and rifles through their pockets for spare vocabulary” so these non-english words already have some stake in our dictionary real estate. The chances of some of these “loan words” resembling a rude word or phrase in English is statistically unavoidable seeing as there are only so many ways to arrange the 26 letters of the alphabet.

There’s certainly a constitutional argument for equality to be made here – while a native English speaker would not be prohibited to registering the phrase “good fortune” for her business by subsection 9(1)(j), a Japanese-speaking person would be refused the opportunity to register the same phrase in her first language.

The same logic is relevant to subsection 12(1)(a) of the Trade-marks Act which states that a trademark is not registrable if it is “a word that is primarily merely the name or the surname of an individual“. A significant portion of English surnames are also common words, making them not “primarily merely” a name. Hypothetically, Mr. Black, would have a significantly easier time advocating that his business name “Black Photography” does not fall under the 12(1)(a) prohibition than Ms. Chan who is trying to register “Chan Cosmetics”. Again, the difference between them lies in etymology.

The other constitutional argument to be made relates to the so-called “puritanical viewpoint” D’Loughy cited. Even if a mark is obscene or immoral or scandalous, there appears to be some conflict with the guarantee of free expression in prohibiting it. This is especially true with the Canadian provision which effectively prevents an individual from being taboo in any way connected to her business. Where “obscene” means a racist or sexist or homophobic slur, such a strict provision can be justifiable. However, in the case of “Fuku”, there is simply no good reason to bar adoption or registration.

Nancy Situ is a JD candidate at Osgoode Hall Law School.

Posted in Trademarks