Kristopher Preston

[2024] ATMO 103

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReTrade mark application number 2298094 (25) – ZRO FUX – in the name of Kristopher Preston

Delegate:                 Robert Wilson

Representation:       Applicant: Griffith Hack Lawyers

Decision:                   2024 ATMO 103

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 42(a) – trade mark does not contain or consist of scandalous matter – application accepted

Background

1. On 4 September 2022 Kristopher Preston (‘Applicant’) filed an application to register the trade mark detailed below

Application Number:	2298094
Goods:	Class 25: Apparel (clothing, footwear, headgear)
Trade Mark:	ZRO FUX	(‘Trade Mark’)

2. The application was examined as required by s 31[1] and on 18 November 2022 the examiner issued an adverse report. The examiner indicated his view that there was a ground for rejecting the application under s 42(a). The examiner’s view was that the Trade Mark is phonetically identical to, and clearly references the phrase ZERO FUCKS and because of this:

It is likely that this would offend a section of the community and it is scandalous because the word FUCK or FUCKS, or variations thereof, is considered offensive to a significant portion of the Australian consumers of the goods you are claiming.

[1] References to sections or regulations in this decision, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

1. By correspondence dated 23 February 2024, the Applicant responded to the adverse report. The Applicant’s response was prepared and filed by the Applicant’s representatives Griffith Hack Lawyers. For reasons which will be discussed below, the Applicant submitted that there was no ground for rejecting the application under s 42(a). The examiner was not persuaded by the Applicant’s submissions and on 29 February 2024 issued a second adverse report. On 19 March 2024 the Applicant requested to be heard by way of written submissions.

The Law in Respect of s 42(a)

4. Section 42(a) provides that, ‘An application for the registration of a trade must be rejected if … the trade mark contains or consists of scandalous matter’. Whether a trade mark contains or consists of scandalous matter is to be considered in the light of circumstances as they existed at the filing date of an application.

5. Provisions regarding scandalous material in trade marks have long existed in trade mark legislation in many jurisdictions; nevertheless, the rationale for the existence of this ground for rejection is unclear. The purpose of the provision does not seem to be, for example, to prevent the use of trade marks which are considered scandalous because, in circumstances where their use would not be contrary to law, such trade marks may be used by traders in the absence of registration. It is the view of the authors of Australian Trade Mark Law that it is ‘more likely that the prohibition is motivated by a desire not to give a form of state-sanctioned imprimatur, through the act of trade mark registration, to subject matter such as obscene, profane, abusive or racist terms or images’ and thereby ‘ensure that the trade marks registry is not discredited by creating a suggestion that the Office approves of, or sanctions, the applicant’s choice of marks’.[2]

[2] Robert Burrell and James Handler, Australian Trade Mark Law (Oxford University Press, 2^nd ed, 2016) 165.

6. Section 42(a) refers to ‘scandalous matter’. The term ‘scandalous’ is not defined in the Act. In this circumstance, a useful starting point is the dictionary definition of the term. The Macquarie Dictionary defines ‘scandalous’ as an adjective with the following meanings:

1. disgraceful to reputation; shameful or shocking.

2. defamatory or libellous, as a speech or writing.

As the Trade Mark does not fall within the second definition, it is the first definition which will be focussed on here.

7. In Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd, after considering dictionary definitions, the delegate stated that ‘scandalous indicates the causing of a significant degree of disgrace, shock or outrage [which] goes beyond merely giving offence’.[3] The trade mark under consideration in Cosmetic Toiletry was LOOK GOOD + FEEL GOOD = ROOT GOOD. The delegate found that the trade mark was ‘crude both in sentiment and in grammatical construction’ and ‘may be in bad taste’ but nevertheless had not quite ‘transgressed the standard of s 42’ because it was not likely to ‘cause any significant degree of shock’.[4] The delegate’s approach in Cosmetic Surgery was closely mirrored in Kuntstreetwear Pty Ltd’s Trade Mark Application, wherein the delegate considered that the phonetic equivalent, ‘cunt’ of the applied for trade mark, KUNT, was ‘highly offensive in “normal” society’. (Phonetic equivalents will be discussed in due course.)  In light of the above, I take the approach, here, that for an application to be rejected under s 42(a), the trade mark must contain or consist of matter which is likely to cause a significant degree of disgrace, shock or outrage which goes beyond merely giving offence.

[3] (2003) 57 IPR 594, 598 (Williams) (‘Cosmetic Toiletry’).

[4] Ibid.

8. What constitutes ‘scandalous’ changes over time, along with what might be considered by society in general as shameful or shocking. Not so many years ago, that a person might be divorced was widely considered shameful. In the modern, broader Australian community divorce is common and is, generally, considered neither shameful nor shocking. Similarly, homosexuality was once considered by the broader community as so shameful and shocking that it was illegal. Homosexuality is no longer illegal in Australia nor considered by most of the population as shocking or shameful. However, there remain sections of the Australian population to whom divorce and/or homosexuality continue to be shocking and shameful. This raises the question, in considering s 42(a), as to what proportion of the Australian population would need to consider a trade mark to be scandalous before it is appropriate to reject an application to register such a trade mark.

9. Relevant to the proportion of the Australian population that might need to find a trade mark scandalous for an application to be rejected under s 42(a), in La Marquise Footwear Inc’s Application, Evershed J stated:

I must wholeheartedly accept the proposition that it is the duty of the Registrar (and it is my hope that he will always fearlessly exercise it) to consider not merely the general taste of the time, but also the susceptibilities of persons, by no means few in number who still may be regarded as old fashioned and, if he is of the opinion that the feelings or susceptibilities of such people will be offended, he will properly consider refusal of the registration.[5]

[5] (1947) 64 RPC 27, 30.

1. In the 1976 case, Re HALLELUJAH Trade Mark¸ the delegate found that the word ‘hallelujah’ had an overwhelmingly religious significance and that its use on women’s clothing would offend generally accepted mores of the time and would offend the religious susceptibilities of a not insignificant number of persons. In reaching this finding the delegate stated:

   I conclude that the phrase ‘contrary to morality’ falls to be considered by the generally accepted standards of today and not by those of 1938.  The difficulty is to be sure what those are, and more particularly, where the line is to be drawn between marks whose registration is prohibited by the section and those where it is not.  When religious and moral standards are changing, sometimes quite rapidly, it seems to me that the Registrar should only follow where others have given a clear lead.  While he must not remain isolated from the day-to-day world, frozen in an outmoded set of moral principles, he must equally not presume to set the standard.  He must certainly not act as a censor or arbiter of morals, nor yet as a trendsetter.  He must not lag so far behind the climate of the time that he appears to be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts for registration a mark which many people would consider offensive.[6]

[6] [1976] RPC 605, 607 (Myall) (‘Hallelujah’).

1. Section 42(a) is not, on its face, a discretionary provision; nevertheless, there is some discretion and value judgements to be made in considering the provision. For example, taking a reductio ad absurdum approach, it would be impractical and undesirable that the Registrar should reject an application to registrar a trade mark on the basis that one or two people only found it scandalous. The appropriate approach is that a significant number of persons would be likely to find the trade mark scandalous before the Registrar ought to reject the application. What constitutes a significant number of persons requires consideration of the surrounding circumstances such as the degree of disgrace, shock and/or shamefulness, the manner in which the public is likely to be exposed to the mark, along with consideration of the numbers of persons that are likely to find the trade mark scandalous.

2. In summary, in assessing whether a trade mark contains or consists of scandalous matter, the Registrar must be satisfied that the trade mark consists of matter which, at the time the application was filed, was likely to cause a significant degree of disgrace, shock or outrage which goes beyond merely giving offence. Once so satisfied, the Registrar must be further satisfied that a significant number of persons would find the trade mark to have that effect.

3. Before moving to consider the Trade Mark in the light of the law discussed above, it is necessary to say something about trade marks and their phonetic equivalents in considering s 42(a). The approach taken by examiners is explained in the IP Australia Trade Marks Manual of Practice and Procedure (‘Manual’). The Manual states:

   Whether a word considered by many as offensive language is acceptable as a trade mark will depend to some degree on the amount of invention and imagination used to present it. Phonetic equivalents of strong but commonly used expressions, such as PHAR QUE or FAR KEW, will generally be acceptable if the expression is sufficiently modified by way of humour, thoroughly idiosyncratic spelling (for example, DR PHUQ) or other factors (for example, disguising the word within a device element).

   Conversely, an overt phonetic equivalent such as FUK M, FUCT or F⮍CK where the difference in spelling is minor and it is not softened by anything in the way of humour or subtlety, is still sufficiently scandalous as to require a ground for rejection, as is the word concerned spelt out in full.

Application of the law to the Trade Mark

1. The basis of the examiner’s objection was that the Trade Mark is phonetically identical to the phrase ZERO FUCKS. The Applicant submitted in response to the first adverse examination report that:

   [T]he Manual makes clear that it is not enough for ZRO FUX to be ‘phonetically similar’ to ZERO FUCKS. It must be so similar such that the difference in spelling is minor, and not softened by any humour or subtlety. …

   Examiners have applied these principles in accepting trade marks including FARKEN ORSUM (which is phonetically similar to FUCKING AWESOME), FARKOFF (which is phonetically similar to FUCK OFF), FARKUT (which is phonetically similar to FUCK IT) and FORK’N L (which is phonetically similar to FUCKING HELL). Notably, these trade marks (along with PHAR QUE and FAR KEW) attempt to humorously spell the way Australians pronounce the word FUCK. There is no doubt what the words FARK or FORK or FARKEN means in context and yet the trade marks were registered due to their idiosyncratic spelling and humour.

   We submit that ZRO FUX should be treated no differently than the trade marks referred to above.

   Firstly, we submit that ZRO FUX is not necessarily phonetically similar to ZERO FUCKS. A consumer encountering the words ZRO FUX and considering them together may not even identify a similarity with ZERO FUCKS. The unique spelling of ZRO may be read and spoken as an acronym, as indeed may FUX. The most prominent and distinctive word will also be given more emphasis by the consumer.

   Even if ZRO FUX is read and spoken as ZERO FUCKS, we submit that the trade mark is sufficiently modified by way of humour and idiosyncratic spelling the commonly used phrase ‘zero fucks’. (citations omitted)

2. I am not entirely persuaded by the Applicant’s submissions although the submission regarding the doubtful reading of ZRO as ZERO has merit. In the end though, that point might not be determinative as it is possible that the simple presence of FUX in the Trade Mark could be sufficient to warrant the objection, regardless of the reading of ZRO. I am not persuaded that FUX is other than an overt phonetic equivalent of FUCKS and is not sufficiently modified by way of humour, thoroughly idiosyncratic spelling, or any other factor to avoid its further consideration.

3. In considering whether the Trade Mark is otherwise scandalous, the Applicant submitted:

   ‘Zero Fucks’ is a phrase used to emphasise that a person does not care about something at all. The phrase has been incorporated into the title of movies and comedy specials in recent times, which have been streamed on major platforms such as Netflix. This demonstrates that the phrase (even using correct spelling) is not offensive when directed towards an appropriate audience in light of prevailing community standards.

I find the Applicant’s submissions in this regard persuasive. The ‘title of movies and comedy specials’ referred to by the Applicant include the 2021 French film given the English language title, Zero Fucks Given, and a comedy special by stand-up comedian Kevin Hart entitled ‘Zero F**ks Given’. Such use in mainstream media is a good indication of the current level of offence such words are likely to cause in the broader Australian population. If it were necessary, it could be considered that this is a ‘clear lead’ which the Registrar might follow as contemplated in Hallelujah. While the word FUX contained in the Trade Mark, or the Trade mark as a whole, might be considered by some, or even many, to be in bad taste, puerile or offensive, I am not satisfied that the reaction to the words ‘zero fucks’ by the broader Australian community any longer rises to the level of causing a significant degree of shock or outrage which goes beyond merely giving offence. Further, there is nothing before me which suggests that the Trade Mark is likely to be scandalous to some small, but significant, minority. I am, therefore, not satisfied that the Trade Mark contains or consists of scandalous matter.

Decision

1. I am not satisfied that the Trade Mark contains or consists of scandalous matter. Accordingly, I accept the application. Official notification of the acceptance will be published in due course.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
6 June 2024