VOLSTEAD PTY LTD

[2025] ATMO 164

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2426972 (class 33) - Pingers - in the name of VOLSTEAD PTY LTD

Delegate:

Anne Makrigiorgos

Representation:

Applicant: Self represented

Decision:

2025 ATMO 164

Trade Marks Act 1995 (Cth) – s 33 proceeding - s 42(a) ground for rejection considered – trade mark not scandalous – trade mark application accepted.

Background

1. On 9 February 2024, VOLSTEAD PTY LTD (‘Applicant’) applied to register trade mark number 2426972 (‘Application’) for the trade mark Pingers (‘Trade Mark’) for Spirits (beverages) (‘Goods’) in class 33 pursuant to the provisions of the Trade Marks Act 1995 (Cth) (‘Act’).

2. The Application was examined as required under s 33. On 19 February 2024, IP Australia issued an Adverse Examination Report identifying grounds of rejection under s 42(a). The examiner stated as follows:

   Your trade mark is PINGERS, which refers to the illegal drug MDMA, commonly known as ecstasy. It is likely that this would offend a section of the community and is scandalous because the trade mark may be understood to promote or endorse the consumption of ecstasy tablets, or PINGERS.

   Generally, where a trade mark can be seen to promote illegal activity, such as the recreational abuse of an illicit substance, then this ground for rejection will be appropriate.

3. In response to the objection, the Applicant questioned where the examiner sourced the reference to Pingers as the Macquarie, Oxford and Cambridge dictionaries did not define the word as referring to MDMA. The Applicant argued that the Trade Mark was not scandalous as:

• the Trade Mark does not refer to MDMA.

• the Oxford Dictionary and Cambridge Dictionary define Pinger as a device that produces sound pulses or makes a series of short high sounds or pings, which is the ordinary meaning.

• if Pinger were to have another meaning within a minority sub culture of illegal drug users, this secondary meaning is not prevalent and does not in and of itself impute a scandalous nature to the ordinary meaning.

• the word Ecstasy has been accepted as not being offensive or scandalous or as promoting the use of MDMA and is currently registered under number 1966760.[1]

• the word Pingers like Ecstasy holds an alternate and non-offensive ordinary meaning and should equally be considered not to be offensive.

• there is no indication of endorsement or promotion in simply displaying the term Pingers as there is nothing instructive, imperative or encouraging of action in the use of a noun.

• for the small section of the illegal drug-using community, it is more probable than not that they would not be shocked or offended by a beverage company registering the Trade Mark for spirits

  [1] This trade mark was registered under number 1966760 from 2 November 2018 in respect of  ‘Hygienic lubricants; Personal sexual lubricants; Preparations for use in vaginal lubrication; Spermicidal creams; Spermicides for application to barrier contraceptive devices; Spermicides for application to condoms; Spermicidal gels; Prophylactic preparations for application to barrier contraceptive devices; Prophylactic preparations for application to condoms; Contraceptive preparations’ in class 5.

1. A further adverse report was issued by the examiner on 19 May 2025 maintaining the ground for rejection under s 42(a). The examiner noted that while the word PINGER has a dictionary definition in relation to sound emitting devices, the word is also commonly referred to as a colloquial term in relation to the MDMA. Given the common and widespread understanding of PINGERS as an illicit drug reference, it is reasonable to assume that a large proportion of Australian consumers will understand the term in relation to this meaning. Given the goods, it is more likely the ordinary Australian consumer, being over the age of 18, on encountering the word PINGER or PINGERS, will assume the drug reference rather than a sound emitting device.

2. In response to the objection, the Applicant requested a hearing by way of written submissions on 10 July 2025. The Applicant chose to rely on the submissions on file together with a submission filed on 29 July 2025 that ‘The claimed goods are devices that emits a sound from the closure on the goods’.

3. As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the ground for rejection under s 42(a) identified by the examiner and I am not bound by the examiner’s findings. Nor is this hearing a review of the examiner’s objections. Whilst I may consider reasoning provided by the examiner in support of the objection, ultimately, I must make a decision based on my interpretation of the facts and law.

Discussion

1. Section 42(a) provides that an application for the registration of a trade mark must be rejected if the trade mark contains or consists of scandalous matter.

2. In terms of s 42(a) ‘scandalous’ is not defined in the Act. The Macquarie Dictionary Online defines scandalous as ‘disgraceful to reputation; shameful or shocking’. This is the ordinary meaning of the word but what will constitute a scandalous trade mark is subjective, and there is no guidance from the legislation.

3. To be scandalous the Trade Mark must cause a degree of disgrace, shock or outrage to the ordinary person[2] that goes beyond giving offence or the effect of a word that tends toward scandalous but is really just in bad taste.[3] The Registrar must distinguish between terms that may have a tendency to be scandalous, and those that are. The Registrar must be satisfied that a trade mark is scandalous; it is not enough that the Registrar merely apprehend such a situation. It will depend on the context of the alleged scandal.[4]

   [2] Re Mercy (1955) 25 AOJP 938.

   [3] Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Ltd [2003] ATMO 10 (Hearing Officer Williams) (‘Cosmetic Toiletry’).

   [4] Re Hanlon [2011] ATMO 45 (Hearing Officer Williams).

4. As stated by Hearing Officer Williams in Cosmetic Toiletry:

   I am required to consider the effects of the trade mark in any situation where it may be encountered.  Those affected may not be the actual buyers of the goods so marked, nor need they encounter the trade mark at the point of sale.  Conversely, I must be careful to allow only for the affront caused by the trade mark, not by, for instance, any exaggerated brashness of those who choose to display it inappropriately.  That distinction is both critical and difficult to draw.  It is, of course, possible to imagine situations where deliberately inappropriate use of this trade mark might cause offence.  Indeed, those bent on causing offence may manage to do so despite the inoffensive nature of any trade mark they may care to display.  As I have said, however, I think that more than this is required if s 42 is to be triggered.[5]

   [5] Cosmetic Toiletry (n 4).

5. It is thus appropriate to consider the people 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. It is sufficient that a not insubstantial number of people will be, or are likely to be, shocked.[6]

   [6].Ibid.

6. I note the following regarding the word Pingers:

• while the Applicant submits that the Macquarie Dictionary does not define Pingers as referring to MDMA, this is not correct. The Macquarie Dictionary Online defines Pinger as follows:

• the Applicant is correct that the Oxford and Cambridge Dictionaries do not define Pinger as referring to MDMA.

1. I make the following comments regarding the Applicant’s submission that the ‘claimed goods are devices that emits a sound from the closure on the goods’. The Goods are spirits. Spirits may be sold in all manner of containers with a closure that may or may not make a noise, but fundamentally, the Goods are spirits and not containers, and spirits do not ping.

2. As the Goods are spirits, the persons who will be directly exposed to use of the Trade Mark will be those over the age of 18, which would be the bulk of the Australian population. In my view, these consumers fall into two distinct groups – those aware and those unaware of the slang meaning of Pingers as MDMA. Those consumers who would be unaware of the slang meaning of Pingers may or may not be aware that Pingers means something that pings such as a bell or timer. Those that would be aware of the slang word Pingers would not only consist of illegal drug users as submitted by the Applicant, they would also consist of many who do not use illegal drugs, including teenagers, parents, and those involved in health, education and law enforcement such as health workers, teachers, police, ambulance, customs officials, lawyers and corrections officers.

3. I am satisfied that those that would be aware of Pingers meaning MDMA are likely to be a significant subset of the Australian population (‘Subset’), although legally, only those over the age of 18 can purchase the Goods. The question now is whether I am satisfied that use of the Trade Mark would shock or outrage this Subset of the Australian population? I must consider the sensibilities of all in this Subset.

4. In answering this question, I have considered that there are many slang names of illegal drugs which have been appropriated from ordinary everyday English words. The United States Drug Enforcement Agency provides a list of  over 30 slang words for MDMA including Bean, Candy, Chocolate Chips, Clarity, Dancing Shoes, Decadence, Doctor, Essence, Lollies, Roll, Rolling, Running, Sweets and XTC.[7] I note that some of these words are registered as trade marks in respect of alcoholic beverages namely XTC[8], Decadence[9] and Rolling[10]. Further there are other words registered as trade marks in respect of alcoholic beverages which are slang for other drugs for example, NITRO[11] (amyl nitrite), CRYSTAL[12] (crystal methamphetamine), frank[13] (GBH), WHIPPET[14] (nitrous oxide), TNT[15] (fentanyl), Angel Dust[16] (PCP), Mean Green[17] (PCP) and Tickets[18] (LSD). These are ordinary English words with well known meanings which have been appropriated and used as a slang name for illegal drugs.[19]

   [7] United States Drug Enforcement Agency list of Drug slang and code words online at See also the online document ‘A parents’ guide to drug slang’ at and the Australian Government Department of Health, Disability and Ageing online drug name information at

   Registration number 1929666.

   [9] Registration number 1381793.

   [10] Registration number 1399941.

   [11] Registration number 1844292.

   [12] Registration number 1750871.

   [13] Registration number 1163542.

   [14] Registration number 918654.

   [15] Removed registration (non renewal) number 1145239.

   [16] Removed registration (non renewal) number 1210021.

   [17] Registration number 2329798.

   [18] Removed registration (non renewal)number 1158580.

   [19] There are over 250 slang words and terms for cocaine, over 130 for LSD and over 200 for heroin. See (n 7).

5. In my view, to most minds of the Subset, the Trade Mark will not cause any significant degree of disgrace, shock or outrage that goes beyond, at the very most, giving offence. I do not consider the mere use of the Trade Mark would be interpreted by consumers in the Subset as promoting or endorsing the consumption of MDMA tablets, just as the trade mark Coke is not seen as promoting or endorsing the consumption of cocaine. I agree with the Applicant that there is nothing instructive, imperative or encouraging of action by the use of the Trade Mark in respect of the Goods. The Trade Mark is clearly in bad taste but that is not sufficient for s 42(a). I find that the Trade Mark is not scandalous and I am therefore not satisfied that the Trade Mark has transgressed the standard of s 42(a).

Decision

1. Section 33 of the Act provides:

   Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   Note:For this Act see section 6.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:For limitations see section 6.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   Note:For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:For applicant see section 6.

2. As I am not satisfied on the balance of probabilities that there is a ground for rejecting the Application in respect of the Goods under s 42(a), I accept the Application for possible registration.

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

18 August 2025