Trademarks Act not meant to protect Canadian sensibilities

Intellectual Property /
John Simpson
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By Tony Poland, LegalMatters Staff • The purpose of a trademark is to identify the source of goods and services while providing legal protection for a brand, not to protect people’s sensibilities, says Toronto intellectual property lawyer John Simpson.

Simpson, principal of IP and new media law boutique Shift Law Professional Corporation, says if governments want to restrict the use of commercial profanity they should use something other than trademark legislation.

“The purpose of legislation is to cure a mischief,” he tells LegalMattersCanada.ca. “If the concern is the use of profanity in the marketplace, I would argue the Trademarks Act is not the place to address that. You could introduce advertising regulations to restrict the use of offensive terms.

“The fundamental purposes of trademark legislation are to protect the value of commercial brands and to protect consumers from confusion in the marketplace.  It is not about protecting the public’s sensibilities. ”

Appeal of CIPO decision

Simpson says those hoping to get protection for slogans or brand names that test the limits of profanity are often thwarted at the trademarks office. He says that his firm is acting on an appeal of the Canadian Intellectual Property Office’s (CIPO) refusal of an application to register  FOQ U as a trademark.

CIPO’s refusal states, “It is respectfully submitted that the trademark ‘FOQ U’ is the phonetic equivalent of, or so nearly resembles ‘f–k you’ phonetically that it is likely to be mistaken for this phrase. The trademark is thus considered to be prohibited by paragraph 9(1)(j) of the Trademarks Act in that it consists of, or so nearly resembles as to be likely to be mistaken for a scandalous, obscene or immoral word or device. Therefore … the trademark is not registrable.”

Simpson says this client faces the same issue shared by anyone seeking protection for deliberately provocative trademarks.

“These decisions are made by an individual examiner,” he explains. “It is an extremely subjective determination and, in my opinion, it is perhaps too much to ask of individual trademark examiners to decide whether something offends the sensibility of the average Canadian.”

He says trademark applications being rejected because of a “scandalous, obscene or immoral word” are not uncommon. In fact, it is an issue that trademark offices around the world are dealing with, says Simpson.

Ukraine State Border Guard slogan

He points to a recent decision by the European Union Intellectual Property Office which rejected a request by Ukraine’s State Border Guard to register the slogan “Russian warship, go f–k yourself” as a trademark.

According to a news report the application was first rejected in July 2022 because it was “contrary to accepted principles of morality.” That decision was upheld on appeal several months later because of “vulgar language with an insulting sexual connotation.”

In the United States, Asian-American rock band The Slants had to take their battle to register their name to the Supreme Court before finding success.

The U.S. Patent and Trademark Office had rejected the band’s application, claiming the name was disparaging to Asians.

Frontman Simon Tam told NPR they wanted to reclaim what is often considered a slur.

“We grew up and the notion of having slanted eyes was always considered a negative thing,” he said. “Kids would pull their eyes back in a slant-eyed gesture to make fun of us … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.”

Lighthearted play on words

Fashion retail group French Connection Limited successfully registered FCUK (French Connection United Kingdom) arguing the term was simply a lighthearted play on words.

Simpson says trademark legislation worldwide includes provisions in some form to prevent obscene or offensive language from being used in trademarks.

“The origins go a long way back to a much more prudish society when there were policy reasons not to let commercial traders register offensive trademarks,” he says. “Provisions such as these need to be reassessed. Not just how they are applied but their existence and usefulness.

“The question that needs to be asked is whether anyone is really being harmed. We live in a culture where there is a popular TV show called Schitt’s Creek and a Hollywood movie called Meet the Fockers,” Simpson adds. “Just because names such as these and FOQ U sound like a certain expression, that doesn’t mean it is going to be offensive to the public at large. These determinations need to be made in a very culturally specific context.”

He says barring people from registering potentially offensive names or slogans doesn’t prevent them from being used.

‘Stop you from calling your product f–k you’

“I can have a monopoly on a trademark that has f–k you in it,” says Simpson. “That doesn’t have any bearing on my ability to say f-you with my product. I can do that without a registration. All it means is if I get a registration, I can stop you from calling your product f–k you.

“In some sense, allowing parties to register the term f-you is potentially going to limit the usage of that term,” he adds.

When it comes to legislation protecting public sensibilities, a trademark office is “the wrong place for this type of law to exist,” Simpson says.

He says the time has come to remove provisions like this from trademark legislation since they are difficult to apply and don’t serve the purpose of trademark legislation in any case.

“People will continue to push the envelope so it will be interesting to see what happens in the coming years,” Simpson says. “I would not be surprised if the provisions in legislation get less restrictive or are just dropped. Or, at the very least, come with much clearer guidance on how they are to be applied in a predictable way.”