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Friday, 25 August 2017

Registering the offending, offensive trademark

Draining Offensive Words of Their Power

In the USA, recently, there was a case of Matal v Tam, which broke new ground. It was a case that established that certain previously unregistrable trademarks could be registered. 

Under the previous position, it was understood that the law allowed trademark applications in the US to be registered, except for certain exceptions. (Ref: 15 U.S. Code § 1052)

The Slants, an American band. They were the reason for Matal v Tam. 

One of these exceptions was if a trademark "consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute".

Brief Facts in Matal v. Tam

The brief facts of the landmark case were:
  1. An Asian-American band wanted to register a trademark called "The Slants". Its members consisted of Asian Americans.
  2. The word "slant" was considered a derogatory term, hence falling under the "disparage" clause above.
  3. The band members believed that using the term as their band's name would "reclaim" the term and drain the offending word of its power.
  4. Due to the above provision, the US Patent and Trademarks Office (USPTO) rejected the application.
  5. However, the US Supreme Court held that the USPTO's decision violated the First Amendment, i.e. speech cannot be banned on the ground that it expresses ideas that offend.
The court noted that it was desirable to register trademarks for commercial purposes, but even unregistered trademarks in use could be enforced in a court of law. However, between registration and non-registration, registration brings greater benefits under the law. 

Registration is "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate."

Testing for Disparaging Trademarks

According to the US Supreme Court decision, there is a two part test to determine if a trademark falls within the "disparaging" clause. The following paragraphs were borrowed liberally from the court's decision.

First, the trademark examiner considers "the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services".

If the trademark's meaning is thought to refer to "identifiable persons, institutions, beliefs or national symbols," the examiner will consider "whether that meaning may be disparaging to a substantial composite of the referenced group." 

If the examiner finds that a “substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark . . . to be disparaging in the context of contemporary attitudes,” a prima facie case of disparagement is made out, and the burden shifts to the applicant to prove that the trademark is not disparaging.

The USPTO has further specified that “[t]he fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.”

The First Amendment of the United States of America. From

The First Amendment

From the footnotes of the decision:

A fundamental principle of the First Amendment is that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys. The test for viewpoint discrimination is whether—within the relevant subject category—the government has singled out a subset of messages for disfavor based on the views expressed.

So it is the right of speech that has been used to challenge the "disparaging trademark" law. 

From one of the judges, Kennedy J: "A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society."

This right to speech is much more than just the right to register seemingly offensive trademarks, but for now, it has played an important part in the IP landscape of the USA.

It seems that in light of the decision, some people are registering offensive, unsavoury trademarks, on the assumption that their applications can be approved.

Is there a similar law in Malaysia?

This is a perfectly valid question if you are a Malaysian. After all, we know that the right of speech in Malaysia is limited, due to safety concerns of the government. We want a peaceful nation. So what does our law say?

A photo of Kuala Lumpur on a rather cloudy morning, featuring the KLCC Twin Towers.

As a matter of fact, there are some similar provisions in Malaysian law. 

Section 14(1)(b) and (c) say this:
"A mark or part of a mark shall not be registered as a trade mark -
(b) if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;

(c) if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation;"
Under these two provisions, the following are prohibited:

- Scandalous matter
- Offensive matter
- Other matters not entitled to protection by any court of law
- Matters which the Registrar thinks is, or may be, prejudicial to the interest or security of the nation

What is offensive and/or scandalous really depends on content, and the context. In a piece by Jorge Espinosa, he wrote that the pre-Supreme Court Matal v Tam position made it politically correct to register "Think Islam" but made it wrong to register "Stop the Islamisation of America". 

Sarah Jeong, writing for The Verge, wrote that some seemingly offensive trademarks had been registered, even before the Supreme Court's Matal v Tam decision, such as: “Dangeros Negro" (2010), “Stinky Gringo” (2006) and “Celebretards” (2009).

A really strange situation might crop up when a registered "offensive trademark" from the USA cannot be registered in Malaysia. Can the American trademark owner then take action against the Malaysian offender for, perhaps, selling goods that infringe his trademark rights?

I think that in some cases, it is possible for the applicant who wants to register a seemingly offensive trademark to explain and prove to the MyIPO Registrar that, "Hey mister, this trademark isn't as offensive as it looks... nor is it as scandalous as you imagine...!"

An example might be in the word, "Negro", which in America seems to be an offensive word. But if you go back to the origin of the word, it came from the Spanish language, meaning "black". And if you apply it in that context, "black" doesn't mean anything offensive.

Another example might be the word, "Gay", which as a modern English colloquialism, means "homosexual". However, the original meaning of the word "gay" meant "happy" and "joyful". Look into the lyrics of old songs, and you'll see references to "happy and gay". But times change, and as one Quora opinion stated,
The use of "gay" as a synonym for "happy" is outdated. If you use it that way, you will confuse readers.
Maybe one day Malaysia will have its First Amendment. But for now we have the right of the Registrar to refuse scandalous and offensive marks. We have our Sedition Act, which somehow manages to scare applicants away from registering seditious trademarks. So for example, I suppose we won't have a tours and travels company trying to register "Balik China" (Return To China) anytime soon. But the meaning is innocuous, isn't it? Or is it? Think for yourself...

A photo of Malaysia's first Prime Minister, Tunku Abdul Rahman, on the day of Independence, shouting "Merdeka! Merdeka! Merdeka!"

Anyway, the Malaysian Independence Day is coming soon... Selamat Merdeka! This year is rather special because it is our 60th year of independence... as Malaya. (Actually, the country Malaysia only came into being in 1963, with Singapore as one of its members... notice how neither Singapore nor Malaysia ever mentions it during their independence day celebrations?)

Have a nice weekend!
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