Peter Hanlon

[2011] ATMO 45

TRADE MARKS ACT 1995

REASONS FOR DECISION OF A DELEGATE OF

THE REGISTRAR OF TRADE MARKS

Re:Trade mark application number 1267253 (25, 32) - POMMIEBASHER- in the name of Peter Hanlon.

Delegate:	T.E. Williams
Representation:	Applicant: self-represented
Decision:	2011 ATMO 45 S 42(a). Trade mark POMMIEBASHER not scandalous. Reasons for acceptance

Background

1. Trade mark application 1267253 (“the application”) was filed at the Trade Marks Office by Mr Peter Hanlon (“the applicant”) on 15 October 2008.  The application is for registration of the trade mark POMMIEBASHER in respect of “Clothing; footwear; headgear” in class 25 and “Beers; mineral and aerated waters and other non-alcoholic drinks; fruit juices and fruit drinks” in class 32

2. An examiner of trade marks examined the application and reported that the trade mark could not be accepted for registration. The examiner maintained, over the course of two reports, that a ground for rejection of the application existed under s 42(a) of the Trade Marks Act 1995 (“the Act”).

3. Section 42 reads:

   An application for the registration of a trade mark must be rejected if:

   (a)the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law

4. The applicant requested to be heard in order to resolve the matter.  I conducted that hearing and, after carefully considering the issues involved, I have accepted the application.  I set out now the reasons for that decision.

   The issue

5. Section 42(a) is almost identical in its terms to its predecessor, s 28(c) of the now-repealed Trade Marks Act 1955 (the 1955 Act) which relevantly provided that

   A mark:

   (c) which comprises or contains scandalous matter

   shall not be registered as a trade mark”. 

6. Under both the Act and the 1955 Act, delegates of the Registrar have grappled with the difficulty of explaining, in practical terms, the meaning of the word “scandalous”. I will set down some of the background to these provisions, since understanding their purpose and history will assist in understanding their terms.

7. The history of the 1955 Act makes it clear that neither s 28(c) of that Act nor s 42(a) of the current one is intended to directly address issues of morality. The predecessor of the 1955 Act was the Trade Marks Act 1905 (“the 1905 Act”).  This provided, at s114, that:

   No scandalous design, and no mark the use of which would by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a court of justice, or the use of which would be contrary to law or morality, shall be used or registered as a trade mark or part of a trade mark.

8. In 1954 the Dean Committee reviewed the 1905 Act.  Among the changes proposed was an amended version of s 114.  The report of the committee noted that the proposed terms of the amended version would have:

   … in substance the same effect as Section 114 of the present Act, but it relieves the Registrar or the Court from considerations of ‘morality’”. 

   That amended version ultimately became s 28 of the 1955 Act.  Neither the document Possible Changes to the Australian Trade Marks Legislation - a Discussion Paper (1991) nor the subsequent Recommended Changes to the Australian Trade Marks Legislation (1992) suggested that further change was needed.

9. The focus of the Australian legislation had thus been shifted, from conformity with one or more moral codes, to a prohibition of registration of “scandalous” trade marks, a more subtle test, as I will explain.  “Contary to morality” was retained in the UK legislation until 1994 and has remained beyond then in amended form (“contrary to public policy or accepted principles of morality”).  I will also explain how it may be that, despite diverging legislation, issues arising under UK legislation may have unduly clouded matters under the legislation that has applied in Australia since 1955, and noting that a presumption of registrability has been operative in Australia since 1995.

   Discussion

10. The word “scandalous” has more than one facet, as I will explain, and thus the application of s 42(a) is not straightforward. In what follows, I will look broadly at s 42(a) under the following headings:

    • Context
    • Categorising scandalous trade marks
    • More nuances than just “shocking”?
    • OOMPHIES and later UK decisions
    • Drawing these threads together

    Context

11. Concepts such as “causing offense” depend directly on context.[1] They might thus seem related to the ordinary sense of the word “scandalous”. The terms of s 42(a), however, do not refer to “use” of the trade mark and paragraph (a) is thus different to (b), where the Act makes consideration of “use” explicit. None the less, there remains a link between s 42(a) and the context of use.

    [1] Thus, what is offensive if shouted inside a church during a sermon might not be found so in the context of a public demonstration where anger was being expressed by a large number of people.  See the revocation of acceptance of the trade mark FUCT, in Re: Die Hard Pty Ltd [1995] ATMO 26, where the difference between “scandalous” and “offensive” was relevant.

12. Firstly, “intention to use” is part of the definition of “trade mark” in s 17 of the Act, and thus the concept of notional fair use is applicable. Secondly, decisions of this office and of the courts (see paragraph 17 below) have demonstrated that it is appropriate to consider the persons who will, as customers, be directly exposed to use of the trade mark. Thus s 42(a) will inevitably be applied to a trade mark set in the context of use, by the owner, in respect of the goods or services for which registration is sought. Hence, a trade mark might be found scandalous for skateboards but not for surgical prostheses[2].  

    [2] Compare “Shock! Horror! Registering a scandalous trade mark” Australian Intellectual Property Law Bulletin 2008 Volume 21 No 1, where it was suggested that FUCKERWARE might be appropriately registered, as well as actually registered, in respect of the direct marketing and selling of adult products and sex toys via parties.

13. Even so, the test remains “Is the trade mark, in the context of use, one that the Registrar judges to be scandalous”.  In passing, I will also note that, given that this test revolves around notional fair use, it cannot give undue weight to the actual motivations - assuming these can be assessed - of the person who has applied to register the trade mark.  Any application for registration thus starts with a clean slate, not one that is stained by the known or imputed intentions of an applicant.

    Categorising scandalous trade marks

14. In a review of cases decided under federal trade mark law in the United States, Moral Intervention in the Trademark Arena: Barring the Registration of Scandalous and Immoral Trademarks (1993) 83 TMR 661, the author, Stephen R Baird, notes at p 704 that relevant trade marks could be divided into seven categories: (1) those with a religious nexus; (2) those consisting of or comprising racial slurs or epithets; (3) those consisting of or comprising profane matter; (4) those consisting of or comprising vulgar matter; (5) those relating to sexuality; (6) those involving innuendo; (7) those suggesting or promoting illegal activity.

    More nuances than just “shocking”?

15. In 2003, dealing with the trade mark LOOK GOOD + EAT GOOD = ROOT GOOD[3], I looked at then-current dictionary entries in the Macquarie Dictionary and the Oxford English Dictionary and concluded that “scandalous indicates the causing of a significant degree of disgrace, shock, or outrage”.  I then went on to note the relevance of s 33 by showing how French J had applied s 44 in the context of s 33.  My intent was to highlight that the Registrar must be satisfied that a trade mark is scandalous; it is not enough that he/she merely apprehend such a situation.  Or, as I put it in the decision, “there is a need to clearly distinguish between words that may have a tendency to be scandalous and those that are”.

    [3] Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594

16. In dealing with the trade mark KUNT[4] Hearing Officer Thompson again noted relevant dictionary entries, relying on the Oxford English Dictionary definition of “scandalous” as (relevantly):

    [4] Appn by Kuntstreetwear Pty Ltd [2007] ATMO 34, 73 IPR 438

    1. Of the nature of, or causing, a ‘stumbling-block’ or occasion of offence; also, bringing discredit on one's class or position. Obs.

    1592 Maldon (Essex) Borough Deeds Bundle 149 No. 13 Hereby you are growen verie scandalouse and offensive vnto many. 1649 MILTON Eikon. xxvii. 216 Many Laws..may be found both scandalous and full of greevance to their Posterity that made them. 1670 WALTON Lives I. 47 He was enabled..to make such provision for his children that they were not left scandalous, as relating to their or his Profession and Quality.

    b. In the 17th century applied to ministers of religion who were regarded as unfit for their office on the ground of heresy or unbecoming conduct.

    1631 High Commission Cases (Camden) 219 That such were scandalous and fitt to be therfore removed from the ministry. 1647 CLARENDON Hist. Reb. III. §56 Who were quickly taught, to call all those against whom such Petitions and Articles were exhibited the Scandalous Clergy; which appellation was frequently applied to men of great Gravity and Learning, and the most Unblemish'd lives. 1667 MARVELL Corr. Wks. (Grosart) II. 242 Yesterday was the debate concerning..the punishing of scandalous Clergymen.

    2. Of the nature of a scandal; grossly disgraceful. Also (now rarely) of a person: Guilty of grossly disgraceful conduct, infamous.

    1611 SHAKES. Wint. T. II. iii. 121 But this most cruell vsage of your Queene..somthing sauors Of Tyrannie, and will ignoble make you, Yea, scandalous to the World. 1681 J. FLAVEL Meth. Grace xxxv. 588 The scandalous falls of good men are like a bag of poison cast by Satan into the spring whence the whole town is supplied with water. a1704 T. BROWN Eng. Sat. Wks. 1730 I. 28 Domitian, the most scandalous emperor, and most infamous of men. 1720 HEARNE Collect. (O.H.S.) VII. 91 The most scandalous Election that ever was in Oxford. 1769 Junius Lett. lxviii. 348 Scandalous traffic..is introduced into the administration of justice. 1770 BURKE Pres. Discont. 52 Persons not only generally scandalous in their lives, but the identical persons who [etc.]. 1828 SCOTT F.M. Perth xxv, I..was this instant setting forth to Kinfauns, to plead my innocence of this scandalous charge. 1849 MACAULAY Hist. Eng. vi. II. 96 The worst that can be said of him is that he was indolent, luxurious, and worldly: but such failings..are scandalous in a prelate. 1868 E. EDWARDS Ralegh I. xx. 445 The great extent to which they [bribes] were accepted has long been one of the foulest scandals of a scandalous reign.

    3. Of words and writing: Defamatory, libellous. Of persons: Addicted to or loving scandal.

    1603 SHAKES. Meas. for M. V. i. 122 Shall we thus permit A blasting and a scandalous breath to fall, On him so neere vs? 1617 MORYSON Itin. II. 167 They were not content to returne a resolute answere, but added scandalous words, terming us meschini. 1642 (title) An Ordinance..for prohibiting the printing..of any Lying Pamphlet scandalous to His Majestie. 1646 H. MARKHAM Let. in 12th Rep. Hist. MSS. Comm. App. v. 2, I shall not trouble your Ladyship with her scandelous and sawcy language of my Lorde or yourselfe. 1700 CONGREVE Way of World II. ii, He..will willingly dispence with the hearing of one scandalous Story. 1749 FIELDING Tom Jones II. vii, The most scandalous tongues have never dared censure my reputation. 1821-22 SHELLEY Chas. I, III. 48 In distraining for ten thousand pounds Upon his books and furniture at Lincoln, Were found these scandalous and seditious letters. 1875 TENNYSON Q. Mary V. ii, But I am small and scandalous, And love to hear bad tales of Philip.

    4. Of a statement, etc.: Not pertinent to the case, irrelevant.

    1750 Vesey's Chanc. Cases (1773) II. 24 Nothing pertinent to the cause can be said to be scandalous. 1809 Ibid. (1827) XV. 477 The introduction of irrelevant and scandalous matter upon affidavits. 1835 J. S. SMITH Chanc. Pract. (1837) I. 567.

17. The hearing officer then noted two general principles from Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited (1946) 72 CLR 175 at 181 and 184. That case turned on the distinctiveness of a purported invented word as a trade mark but I agree that the portions on which he relied are probably very sound guides on this issue, to which the relevant principles logically extend:

    ·    The materials from which such a word has been fashioned cannot be neglected and if it is compounded of elements of which the source is manifest and the intended meaning is transparent, it becomes a question whether there is anything more than a colourable attempt at reproducing some of the sounds and all the sense of an expression belonging to common speech.

    ·    But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse.

18. His view, as my own had been, was that: “it is sufficient … that a not insubstantial number of people will be, or are likely to be, shocked.”  I remain convinced that such a finding is a relevant indicator, to which the Registrar would have regard when dealing with words that are seen, by the bulk of the Australian population, as being near-obscene, or that will be judged by the ear to be so.  In such a case, though not necessarily in all cases, the legislative test of “Is it scandalous?” would amount to an assessment in terms of “Will it shock the ordinary customer for the relevant goods/services?”

19. Other authorities have taken a different approach, and it is here that another facet of the word “scandalous” can be made out.  This gives rise to an important aspect of the Registrar’s practice.  Not all trade marks present issues that are as clear-cut as those with which Mr Thompson and I were concerned.  The Register of Trade Marks is open to the public, and thus stakeholders and other interested parties, potentially including foreign governments, will rightly hold the Registrar accountable for the state of the register.  The range of issues that can arise is also broad (see para 14 above) and hence cases where there is thus a need for considerable sensitivity in decision-making are many.  Large among them are those where the sensibilities of small but not insignificant subsets of the Australian population must be considered.

20. Probably the best-known statement of one potential for such sensitivity is as set out in para 21.  I stress that what follows arose under the law of the United Kingdom.  It is not on point with the Australian situation and I refer to it simply to counter the view that the issue it raises is of particular significance under our legislation.

    OOMPHIES and later UK decisions

21. In La Marquise Footwear Inc's Application, (1947) 64 RPC 27 at 30, Evershed J. overturned a refusal of registration of the trade mark OOMPHIES, saying:

    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.  I should certainly hope that, in taking a different view from him, I am in no way debasing the standard which, as a servant of the State, he should exercise and maintain in his jurisdiction.

22. This statement of policy must be seen in its legislative context.  The Registrar, in refusing registration, had relied on section 9 of the UK Trade Marks Act 1938 (“the old UK Act”), and refused the application on two bases. The first - that the trade mark was neither an invented word nor one without “direct reference to the character of the goods” - does not assist with understanding s 42(a) of the current Australian Act. The second basis was that, as a word meaning “sex appeal”, it ought to be refused registration in the exercise of his discretion.

23. The discretion on which the Registrar relied was a consequence of s 17 of the old UK Act. That provision gave the Registrar a discretion which is described as follows in Kerly’s Law of Trade Marks And Trade Names, 12^th Edition:

    The word “may” here gives the Registrar a discretionary power to refuse registration of trade marks which do or may comply with section 9 or 10 and are not prohibited by section 11 or 12. 

24. The discretionary power is thus best seen as a “further” power of refusal, giving rise to what I will refer, in what follows, as a “discretionary refusal”. 

25. Significantly, section 11 of the old UK Act, which required refusal of registration in respect of trade marks that were “contrary to morality”, did not figure in his decision.  On appeal before Evershed J, the Registrar argued instead that, as a word that was “salacious” to some but not to others, OOMPHIES could in principle be refused in the exercise of the Registrar’s discretion though it might be “otherwise registrable”.  Importantly for present purposes, the Registrar did not at any time argue that the contravention of the standards of old-fashioned people rendered a trade mark contrary to morality. 

26. The words of Evershed J, however, seem to cast a long shadow.  In 1976, Mr Myall, the deciding officer at the Registry, found that the trade mark HALLELUJAH[5], sought to be registered for “articles of clothing for women” was contrary to morality and that it was, as a direct consequence, caught by s 11 of the old UK Act.  Given his assessment of the mores of the day, that conclusion is understandable.  Mr Myall also discussed the difference between a discretionary refusal and one that was mandated by the legislation. 

    [5] [1976] RPC 605

27. None the less, having drawn the distinction between a discretionary refusal and one under s 11, Mr Myall appears to lean strongly towards a view that the standards of old-fashioned people are relevant to the determination of whether a trade mark is contrary to morality.  His conclusion, unless accompanied by a careful reading of the decision, might also suggest that a discretionary refusal is simply an alternative to a finding under s 11.  Although current (1994) UK legislation eliminated the basis for a discretionary refusal there was an observable constraint, before 1994, upon any tendency towards a discretionary refusal unless the trade mark was contrary to an express statutory provision.  As part of this, relevant decisions had criticized the notion that the above comment from Evershed J is supportive of such a finding.  See, in particular, the decision of Aldous J in Masterman’s Design [1991] RPC 89, at 103-104. A similar comment in Ghazilian’s Trade Mark Application [2002] RPC 33 (“TINY PENIS”) was viewed favourably with respect to the trade mark FCUK in Registered Trade Mark No 2184549 in the name of French Connection Limited, (2006) 70 IPR 438 at [28]. Despite this, the reference to the sensibilities of the “old-fashioned” is retained in the current (Australian) Trade Marks Office Manual of Practice and Procedure.

28. Basic Trademark SA’s Application [2005] RPC 25 (“JESUS”) was a decision under the 1994 UK Act, which refers to “contrary to public policy or morality”. The appointed person, Mr Hobbs, on appeal from refusal of the trade mark in the UK Registry, traversed the complexity of the 1994 UK Act enmeshed with surrounding European legislation including the European Convention on Human Rights. He adopted an objective test, applying the standard of a right-thinking person concerned to protect the religious sensibilities of others. I stress here that, in the context of Masterman’s Design (supra) from which it arises, “right thinking” refers to a person who “may himself or herself not be outraged but will be able, objectively, to assess whether or not the mark in question is calculated to cause the outrage or censure that I have referred to among a relevant section of the public”, per Mr Thorley in Ghazilian, supra. 

1. In JESUS it is arguable that the sensibilities protected were those of conservative Christians in a changing society where sectarian violence was a very real domestic concern.  Thus, and without criticism of the decision, it has been pointed out before now that, even if the outcome did not change, the terms of the decision would perhaps have been less emphatic in a Spanish-speaking jurisdiction, where Jesus is a common first name.

2. In Ghazilian, another decision under the 1994 UK Act, Mr Thorley, at [30] approached the matter as follows:

   The dividing line is to be drawn between offence which amounts only to distaste and offence which would justifiably cause outrage or would be the subject of justifiable censure as being likely significantly to undermine current religious, family or social values.  The outrage or censure must be amongst an identifiable section of the public and a higher degree of outrage or censure amongst a small section of the community will no doubt suffice just as lesser outrage or censure amongst a more widespread section of the public will also suffice.

3. The point I would make is that any decision applying a broad principle such as “contrary to public policy” or “scandalous” to the facts of a particular case needs to be seen in the context of the culture from which it comes. 

   Drawing these elements together

4. Dealing, under the (Australian) 1905 Act with the trade mark MECCA[6], the Deputy Registrar was quite direct.  He quoted extensively from the examiner’s reports in the matter.  He found that “the Australian public” knew Mecca to be the holy city of Islam and that “the public” appreciated its secondary significance, arising from what he described as “the fixed ambition of all Moslems (sic) to make a pilgrimage there at least once in their lives”.  Ultimately, his conclusion was that s 114 was triggered and he explained his finding as follows:

   The fact that Australia has only a very small Moslem population seems to me, in the present matter, irrelevant.  In any event, that population is not infinitesimal and I am of the opinion that the registration of MECCA as a trade mark might offend other nations, besides offending members of the Australian community. 

   [6] (1955) 25 AOJP 938

5. It might be said, in other words, that the Deputy Registrar’s refusal was on the basis that the trade mark was likely to be “offensive to a not-insignificant group”.  To avoid any doubt, I confirm that in this decision I am not using “offensive” to include trade marks that are merely distasteful[7].  Such an approach, had the Deputy Registrar been required to apply the present legislation, rather than that of 1905, would have been justified by a less obvious signification of the word “scandalous”, to which I now turn. 

   [7] In contrast, see the quote from Ghazilian, supra, at para 30 of these reasons. 

6. As the Oxford Dictionary shows, above, the word scandalous is also a term used in the law – for instance, contempt of court by “scandalizing the court” [8] - and in court rules.  In the latter, it seems there is wide recognition among judges that the word, like frivolous and vexatious, with which it is often used, have specialized meanings that are not quite as they are understood in colloquial usage outside the courts.

   [8] See Gallagher v Durack [1983] HCA 2; (1983) 152 CLR 238. Put simply, this has little to do with acting to shock or outrage judges, except in so far as the behaviour in question might act to undermine the public faith in the legal system. In the case of Mr Gallagher, this conduct consisted of asserting that it was popular demonstrations by union members that had caused the Federal court, on appeal, to find as it did.

7. In its more specialized sense, scandalous conduct, for instance, can allow a court proceeding to be struck out.  I set out the following[9] simply to illustrate that point:

   The trinity of epithets 'scandalous, frivolous or vexatious' has a very long history which has not been examined in this appeal, but I am confident that the relevant meaning is not the colloquial one.  Without seeking to be prescriptive, the word 'scandalous' in its present context seems to me to embrace two somewhat narrower meanings: one is the misuse of the privilege of legal process in order to vilify others; the other is giving gratuitous insult to the court in the course of such process.  Each meaning has lexicographical and legal support, the first in the principal OED definitions of 'scandal' and 'scandalous', which have to do with harm and discredit; the second in 'scandalising the court', a historical form of contempt; and both in Daniel's entry in Byrne's Dictionary of English Law cited in his judgment by Ward LJ.  These considerations are not of course exhaustive, but they are enough to make it plain that 'scandalous' in the rule is not a synonym for 'shocking'. It is a word, like its sibling 'frivolous', with unfortunate colloquial overtones which distract from its legal purpose: see the remarks of Lord Bingham CJ in R v Mildenhall Magistrates Court, ex parte Forest Heath DC (The Times, 16 May 1997).

   [9] (2002) EWCA Civ 223, in the England and Wales Court of Appeal, concerning an employment tribunal proceeding involving alleged discrimination. This had been struck out because the representative of the appellant had suggested that an adjournment had been refused because he (the representative) was neither white nor Oxford-educated.

8. Again, court rules may allow evidence that is scandalous to be stuck from the records. For example, evidence of adultery, if it was something that was irrelevant to, say, proceedings in relation to a debt, could be struck out without needing to establish that anyone among the ordinary public would be shocked or outraged by adultery in general or by the adulterous behaviour of the person in question. Thus, the application of the word “scandalous” as it appears in s 42(a) of the Act is somewhat more nuanced than my decision in Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd supra may suggest. 

9. Observably, and quite understandably, courts are reluctant to codify such principles.  I think that codification would be equally inappropriate in the case of the Registrar’s practice, which needs to reflect a careful balance of the facts of a very wide range of cases.  The complexity of these issues should not be under-estimated. 

10. Mr Hobbs, in JESUS, supra, acknowledged the seven categories into which Mr Baird had divided trade marks that might fail the appropriate test.  He noted that Mr Baird goes on to say:

    Although the decisions in each category purport to interpret the same [legislative] terminology, there appears to be more than one standard applied, the choice of which appears to vary according to the category involved.

11. Relevantly, Mr Hobbs then suggested:

    [This] reflects the fact that each category relates to a different type of transgression and also that social, linguistic and cultural conditions are apt to make it easier for trade marks to be regarded as acceptable in some of those categories and more difficult in others.

12. Also, a point that arises from his comment is that community standards are changing.  To reduce Mr Baird’s seven categories to inputs in a formula, even if it could be done perfectly in 2011, would be to produce something that would lose relevance as standards change.

13. With that as background I turn now to the facts and circumstances before me. In doing so I will explain why I am not satisfied that the trade mark is “scandalous” in terms of s 42(a) of the Act.

    Conclusion

14. The terms of s 33 provide that I must accept the application unless I am satisfied that there is a ground for rejecting it; relevantly, that the trade mark is scandalous in terms of s 42(a). Nothing on the file suggests that this is the case. The examiner has asserted that the trade mark is offensive but, as Mr Hanlon put it to me at the hearing, this is hardly likely when it is a term that, rendered as two words, or hyphenated, means, notoriously, a person who is unduly critical of English people. I stress that, both on the official file and in the additional material that Mr Hanlon put to me at the hearing, the term is shown to be part of ordinary and acceptable, if colourful and colloquial, language. So far as I can ascertain, it suggests that a person so described is markedly and stridently biased in his/her view of the English. However, the term does not go so far as to suggest that such a person engages in racial vilification, or is prone to verbal abuse or is literally one who “bashes” or assaults English people.

15. At the time of writing these reasons, the website of an English newspaper, The Sun carries a typical example.  Referring back to events of November last year, journalist John Etheridge put the matter in these terms:

    THIS is my fifth Ashes tour and something incredible has happened. The Aussie press have turned on their team.

    No more talk of weak and whingeing Poms. Or English cricket being a joke. It is Ricky Ponting and his players who are copping all the flak.

    Ponting woke in Brisbane the morning after the First Test and was confronted by a picture of himself spread across the back page of the local Courier-Mail newspaper with the word CLUELESS.

    Wherever Ponting looked, his team was being slaughtered.

    Greg Baum, respected veteran sports writer on the Sydney Morning Herald, wrote: "Here, shudder to think it, is England's future, and Australia's. Australia were helpless even to stem the tide, let alone stop it. Australia's bowling lacked not just bite, but teeth and gums."

    And Malcolm Conn, chief cricket writer on The Australian and a long-time Pommie basher, reckons Australia have not been this bad since the 1980s.

    Conn wrote: "Has Australian cricket really fallen this far? Is the national team really this bad?

16. The (UK) Sunday Times, of 17 December 2006 is consistent, and described Mr Conn four years earlier as “The Australian’s … self-styled Pom-basher-in-chief”.  It is true that these things were said in a cricketing context.  I have not investigated Hansard but if the term were to be used in Parliamentary debate about trade promotion strategies I doubt anyone would be surprised if it went without censure.  If some notable person were to be described, by themselves or anyone else, as “a pommie-basher”, I am quite sure that both the ABC and the BBC would be able to report this piece of trivia in the evening news with perfect equanimity.  The word is, in fact, in regular use in the media. 

17. The examiner has asserted that, “in the open marketplace … there is good reason to suppose that many people (English people but not them alone) would find this mark offensive”, but I am at a loss to understand how this might be so.  Leaving aside the sporting context where the usage is at least half-humorous, as illustrated by the material to which the examiner has referred, its usage elsewhere carries with it a suggestion that a person so motivated is biased, perhaps to an unpleasant degree.  There remains, even so, a clear difference between, on one hand, something that is able to be seen as (at worst) a boorish statement of bias, even if it carries implications of unpleasantness; and, on the other, that which is offensive.  

18. That is not to say that the term cannot be used in an offensive way.  Perhaps if one were being harassed in a crowded hotel by a drunken and abusive Englishman one would readily agree that pommie-bashers were a blight of Australian society, and that to be one would be reprehensible.  However, I advance this scenario simply to illustrate that to give such situations significant weight is to allow the conduct of the user to alter the content of the term used.  As can be seen, other scenarios might tend to suggest, equally wrongly, that words such as “gentleman” and “soccer player” also were newly discovered but particularly gross swear-words.  Sometimes, of course, a sign cannot be separated from the actions of those associated with it, but that would be a matter of social context.  This is not such a case, and there is nothing in our society, or in history, that would give the term the sort of offensive connotation that is now inextricable from, to use a clear example, the Swastika. 

19. Specifically, there is no clear or reasonable link between the term “pommie basher” and, for example, a violent subset of soccer fans.  The term in question can thus be appropriately divorced from the conduct of a particular (and potentially criminal) element of society, who might use it just as they might use many other words in the dictionary.  “Pommie-basher”, as I have said, is to my mind merely colourful Australian slang in popular common use.  Properly seen, and as I have just described, it is utterly unlike loaded terms such as “nigger basher” or “poofter basher”, whether these are rendered as one word or two. 

20. That conclusion carries great weight in terms of s 42(a) when I assess the sign POMMIEBASHER, intended for use as a trade mark on clothing in class 25 and on beverages in class 32. Even if the clothing is intended for infants, lawn-bowlers or members of a church choir, I fail to see how the trade mark approaches even the lesser standard of bad taste, let alone “scandalous”. Similar conclusions apply when I consider the trade mark as sought to be registered also for beverages.

21. On some goods, the trade mark may prove an oddity, but that is as high as I can put the matter.  If, at most, the trade mark causes a parent to decide that certain clothing is not appropriate for their child, or a vicar not to buy a particular bottle of blackcurrant juice for a fund-raising dinner, I seriously doubt that the parent, the vicar or anyone else involved would consider that they had been offended by the trade mark.  Even among British expatriates it is hard to see how the trade mark could be seen as, at the very worst – though I believe that I have stretched matters to their absolute limits here – in poor or questionable taste.

22. Nor can it be said that the trade mark POMMIEBASHER, if put into the Register of Trade Marks, would reasonably cause any sort of concern among stakeholders or the international community.  It cannot, as far as I can see, cause significant offence to anyone.  It is therefore fanciful to say that the trade mark is scandalous (in the common sense of the word) or that its registration would bring scandal (in the specialist sense of the word) upon the Registrar.  I can find nothing that would satisfy me that the applicant should not be able to register it and obtain the convenience and other benefits that registration is intended to bring.  It is a trade mark intended to be used for beverages and clothing and the Register should record this fact unless there is some reason to deny registration. 

23. Subject to anything that might be disclosed in the opposition process, it seems to me that the trade mark is in order for registration.  The only way to further test that proposition is to accept the application, as I have already done. 

    T.E. Williams
    Hearing Officer
    Trade Marks Hearings
    31 May 2011