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Challenge on offensive trademarks could bring clarity

Focus on: Intellectual Property Law
|Written By Michael McKiernan
Challenge on offensive trademarks could bring clarity
Peter Henein says U.S. Supreme Court decisions, while obviously not binding on Canadian courts, can still prove influential north of the border.

Canadian intellectual property lawyers say brand owners would benefit from the clarity a Constitutional challenge would bring to the country’s ban on offensive trademarks.

This summer, the U.S. Supreme Court struck down part of the portion of its law prohibiting disparaging trademarks, ruling that the ban infringed on First Amendment free speech rights.

Julie MacDonell, a Toronto-based entertainment and trademarks lawyer, says she would like to see a similar argument made about s. 9(1)(j) of Canada’s federal Trade-marks Act, which prevents the registration of “scandalous, obscene or immoral” marks. But she acknowledges there are practical barriers to such a move, which would be based on the freedom of expression guarantees in s. 2(b) of the Canadian Charter of Rights and Freedoms.

“We have a situation where it’s difficult to imagine a similar case coming forward in the Canadian context. You need a client or a law firm with really deep pockets to push it forward and set a standard,” says MacDonell, the founder of IP and business law boutique The Trademark Group. “A watchdog group like the Canadian Civil Liberties Association could also do it, but it’s probably not the most pressing civil liberties issue in Canada at the moment.

“Until then, we’re kind of lost in an abyss, because there is hardly any case law on the issue, and the cases that do exist are not really relevant to today’s standards,” she adds.

The unanimous judgment of the U.S. top court’s eight-judge panel went in favour of the Asian-American band the Slants, a band whose frontman Simon Tam claimed was named in an attempt to reclaim a once derogatory term. 

The group was originally denied a trademark because an official in the U.S. Patent and Trademark Office deemed its name disparaging to those of Asian descent. But the Slants decided to take the government to court, claiming the rejection violated its constitutional rights. 

In his decision, Justice Samuel Alito, writing for the court, agreed and struck down the provision: “It offends a bedrock First Amendment principle: Speech may not be banned on the basis of the ground that it expresses ideas that offend,” he wrote.

Peter Henein, a partner at Cassels Brock & Blackwell LLP in Toronto, says that U.S. Supreme Court decisions, while obviously not binding on Canadian courts, can still prove influential on this side of the border. 

“Trademark law and intellectual property more broadly is an area where many of the concepts are similar in both countries,” he says. “The proposition that trademark law is not the proper venue for moral determinations makes a lot of sense to me, and I think the language and reasoning of the court followed in the Slants case would certainly be of assistance if and when our courts have to deal with the same question.”

Philip Lapin, Ottawa-based head of the trademark practice group at intellectual property firm Smart & Biggar, says that the offensiveness of a trademark comes up relatively rarely in his practice. However, he says the lack of a strong body of jurisprudence means applicants are often at the mercy of a trademark examiner’s individual biases when it does, leading to potentially inconsistent results.

For example, he points to the rejection by the Canadian Trademarks Office of a drinks company’s attempt to register the term “Lucky Bastard” for use on its line of distilled spirits, including vodka. That was in spite of a previous ruling in favour of another alcohol business, which succeeded in registering the “Fat Bastard” trademark for use on its wine products.  

“Many of these words provoke a visceral reaction in an examiner. Whether it’s appropriate or not, it can be hard to convince them to change their mind, especially with the dearth of case law you can point to discussing the issue,” Lapin says. “When you get an objection, you often feel that a different examiner with a different background may not have objected.”

MacDonell has acted for a number of artists in the entertainment industry who have seen their trademarks rejected at first instance, including heavy metal band God Helmet.

“There was no way to anticipate the office would cite obscenity in respect of that filing,” she says.

“It’s very difficult to advise clients in Canada as to what’s likely to be considered offensive. You’re grasping at straws to identify some sort of standard,” MacDonell adds. “The word ‘ass’ has been accepted widely by examiners for trademark filing, but other words aren’t. It all feels very arbitrary, which also makes it very frustrating.”

She also laments the lack of any sort of internal review process for unsuccessful applicants, short of the expensive and time-consuming option of a court challenge.

In 2015, she wrote to the CIPO, using various pop culture references to urge its reconsideration of a rejected application for the mark “Bitch Stick.”

Lapin says the guidance the Canadian Intellectual Property Office gives to its examiners on the application of s. 9(1)(j) only adds to the confusion about which marks will be acceptable for registration.

He says the definitions of the key prohibitions suggest a majority of Canadians would have to be offended by the mark.

“It’s not internally consistent,” Lapin says. “It’s very unclear what the standard is, and how objective it should be.” LT

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