Tianchu Gao is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School.
Trademarks are legal mechanisms that serve to protect corporate identities by distinguishing the products of a particular business from others in the marketplace. They have become so fundamental and ubiquitous in the modern economy that you may think that trademark registration is a straightforward process. But there are unexpected complications—what should we do about trademarks that appear obscene?
Section 9(1)(j) of Canada’s Trademarks Act prohibits the registration of marks that consist of or are likely to be mistaken for “any scandalous, obscene or immoral word or device.” In their Trademarks Examination Manual (“the Manual”), the Canadian Intellectual Property Office (CIPO) clarifies the interpretation of this provision:
- A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive. It is generally defined as causing general outrage or indignation.
- A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage. This word “obscene” is generally defined as something that is offensive or disgusting by accepted standards of morality or decency; or offensive to the senses.
- A word or design is immoral when it is in conflict with generally or traditionally held moral principles, and generally defined as not conforming to accepted standard of morality.
The test that determines if a trademark is “scandalous, obscene or immoral” depends on whether it “offend[s] the feelings or sensibilities of a not insignificant segment of the public.” The Manual further clarifies this standard through a review of the caselaw. Problematic trademarks discussed in the Manual include the word “HALLELUJAH” for offending people’s religious sensibilities, the word “OOMPHIES” which resembles “oomph,” the American slang for sex appeal (though the decision to deny registration was later overturned), and the representation of a topless female dancer. These examples, although stemming from cases heard decades ago, illustrate what CIPO considers “scandalous, obscene or immoral.”
The American version of the law concerning obscene trademarks is already dead. The Lanham Act (or the U.S. Trademark Act) previously banned registration of marks that “may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols” or contain “immoral or scandalous matter.” Both provisions were repealed a few years ago after a series of successful challenges launched by rock bands and clothing designers with trademark proposals like “The Slants,” “Fuct,” and “Thunderpussy.” The U.S. Supreme Court held on separate occasions that these provisions were unconstitutional under the Free Speech Clause of the First Amendment. The public’s changing attitude toward vulgar expressions clearly inspired by rising pop culture may be equally important underlying these rulings. People, especially from younger generations, tend to accept these expressions and not see them as immoral or obscene. After all, the line that distinguishes the obscene from the non-obscene is usually thin and subjective.
Is section 9(1)(j) of the Canadian Trademarks Act also subject to a constitutional challenge? It’s hard to tell. As entertainment lawyer William Genereux points out, the Charter protects people’s fundamental freedoms in “opinion and expression,” but it also gives the government the discretion to limit such freedoms to the extent “that can be justified in a free and democratic society.” Social values clearly play a major role in deciding where the boundary lies, but courts also need to be vigilant in distinguishing social values from “personal tastes and prejudices.”