By Samantha Ludemann | Associate

As branding strategies become edgier, intellectual property offices are increasingly called upon to balance the right to free expression against public standards of decency.

In our latest article, Samantha Ludemann, Associate at XVII Degrees, explores how Australia, New Zealand, Canada, and the United States are navigating the evolving standards for scandalous and edgy trade marks. From pop culture references to Supreme Court decisions, discover how community attitudes and freedom of expression are reshaping what’s acceptable as a registered trade mark. 

Offensive Trade Mark Use in Australia:

Under section 42(a) of the Trade Marks Act 1995 (Cth), IP Australia may refuse to register a trade mark if: 

(a) the trade mark contains or consists of scandalous matter; [1] 

The Trade Marks Manual of Practice and Procedure under section ‘30.2. Scandalous signs’ states: 

The Registrar is obliged to decide, on behalf of the ordinary person, whether a trade mark should be regarded as shameful, offensive or shocking, and therefore be rejected.   

The words and images fitting this description have changed over time, and it is quite likely in the 21st century, that words which would have caused major offence in earlier times are now acceptable as trade marks in certain markets. Similarly, words which were once innocuous may have developed quite different connotations and now be regarded as scandalous in certain circumstances. [2] 

Case Study: “ZRO FUX” and Shifting Standards

The assessment is guided by contemporary community standards rather than abstract notions of morality. A recent case illustrates how these standards continue to evolve over time. In Kristopher Preston [2024] ATMO 103, the applicant sought registration for the mark “ZRO FUX” for clothing. Although initially refused by the trade mark examiner, the decision was reversed by the Hearing Officer, Robert Wilson who stated: 

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. [3] 

The Hearing Officer concluded that the mark, though derived from a profane phrase, was not offensive to the average contemporary Australian and reflected widespread use in pop culture, especially in music and fashion. 

Community Attitudes and Advertising Standards in Australia

Community tolerance plays a crucial role in deciding whether a trade mark contains ‘scandalous matter’. Ad Standards Australia’s 2024 Community Perceptions Research found that while Australians tolerate coarse language in humour or artistic expression, they view its use in advertising as “lazy and uninspired”. The data in the following graph reveals a clear shift in Australian public attitudes toward certain scandalous words — with terms like ‘Bugger’ and ‘Crap’ now largely accepted, while others like the ‘C-word’ remain beyond the threshold of acceptability: 

Cultural differences in language tolerance were highlighted in a 2025 study reported by The Guardian [4], which found that Australians use significantly less offensive language online compared to Americans and Britons. This finding suggests that, despite Australia’s reputation for informal and colourful speech, there may be a more conservative threshold for offensive content in public discourse and digital media. 

Offensive Trade Mark Use in Canada

Canada’s approach to offensive trademarks is governed by section 9(1)(j) of the Trademarks Act, which prohibits the registration of marks that are “scandalous, obscene or immoral.” [5] This provision provides a mechanism for rejecting offensive marks, and like Australia also relies on subjective assessments of morality and public standards. The determination of what constitutes “offensive” is not based on fixed legal definitions but rather on evolving community standards. The lack of clear judicial guidance under section 9(1)(j) has led to calls for reform, particularly as societal norms shift.  

The Trademarks Examination Manual of the Canadian Intellectual Property Office, states that a mark may be considered scandalous if it offends public decency or moral sensibilities, or if it disparages a nationality. The threshold for refusal is whether the mark would offend a meaningful portion of the public. The manual references past examples, such as the rejection of “HALLELUJAH” for its perceived religious insensitivity, and a depiction of a topless dancer, to illustrate how this standard has been applied. Although most of these cases are dated, they show how the section is interpreted. [6] 

United States: Free Speech and Supreme Court Decisions 

The US legal framework for offensive trademarks has undergone a significant transformation. Historically, the Lanham Act prohibited the registration of trademarks that were considered “disparaging,” “immoral,” or “scandalous.” However, this changed following two landmark US Supreme Court decisions. In Matal v. Tam (2017), the Court invalidated the ban on disparaging marks, ruling that it constituted viewpoint discrimination and violated the First Amendment. [7] 

This was reaffirmed in Iancu v. Brunetti (2019), where the Court struck down the prohibition on “immoral or scandalous” trademarks for the same reason. The Court found that these provisions allowed the government to favour certain viewpoints over others, found to be a breach of constitutional free speech protections. [8] 

As a result, the United States Patent and Trade Mark Office (‘USPTO’) can no longer refuse trademark registration solely on the basis that a mark is offensive. These rulings opened the door for controversial trademarks such as “FUCT,” “The Slants,” and “Thunderpussy,” which had previously been denied registration. As Justice Kagan noted in Brunetti, the law’s attempt to distinguish between “immoral” and “moral” viewpoints amounted to unconstitutional viewpoint discrimination under the First Amendment. [9] 

New Zealand: Cultural Sensitivity and Māori Perspectives

New Zealand’s Trade Marks Act 2002 allows for the refusal of trade mark applications that are likely to offend a significant portion of the public, stating:  

The Commissioner must not register as a trade mark or part of a trade mark any matter…the use or registration of which would, in the opinion of the Commissioner, be likely to offend a significant section of the community, including Māori. [10] 

The Intellectual Property Office of New Zealand (IPONZ) evaluates such marks by considering the context in which the mark is used, the likely audience, and prevailing social attitudes. This approach reflects a flexible standard that adapts to cultural norms and public sentiment. [11] 

A recent case involving journalist, Patrick Gower, illustrates how this standard may be applied. Gower initially sought to register the phrase “This is the fucking news,” [12] but the application was refused due to the explicit nature of the language. However, a modified version—“ THIS IS THE F#$%ING NEWS”—was accepted, and subsequently registered. [13] This outcome suggests that while IPONZ is willing to tolerate the implication of offensive language, it draws the line at the explicit use of profanity. Gower defended the phrase as reflective of New Zealand’s informal and humorous culture, stating that “Kiwis love it,” and that it had become part of the national vernacular. [14] The case shows that context and presentation—such as the use of censorship—can influence the registrability of potentially offensive marks.  

This case underscores the importance of context in assessing whether a trade mark is offensive. Like Australia, New Zealand appears to be moving toward a more culturally responsive model—one that acknowledges evolving language norms and colloquial expression, provided the mark does not clearly breach established standards of public decency. 

A Global Shift in Trade Mark Tolerance

The regulation of offensive trade marks reflects a broader tension between freedom of expression and public decency. Australia, New Zealand, and Canada all maintain provisions that allow for the refusal of scandalous or immoral marks, relying on evolving community standards rather than fixed definitions. Recent cases in these jurisdictions demonstrate a growing tolerance for edgy branding when it aligns with cultural norms. 

These examples show how trade mark law is adapting to shifting societal values, with cultural context playing a key role in determining what is—and isn’t—acceptable. In contrast, the United States has removed offensiveness as a barrier to registration altogether, following Supreme Court rulings that struck down such restrictions as unconstitutional viewpoint discrimination. 

If you have questions about brand names or trade marks, please reach out to us at XVII Degrees. 

More Insights

References:

[1] Trade Marks Act 1995 (Cth) s 42(a) (Austl.).

[2] IP Australia. (n.d.). Scandalous signs. Australian Government. Retrieved June 3, 2025, from https://manuals.ipaustralia.gov.au/trademark/2.-scandalous-signs

[3] Australian Trade Marks Office. (2024). ZRO FUX [2024] ATMO 103. Australasian Legal Information Institute. Retrieved June 3, 2025, from https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO/2024/103.html?context=1;query=%22ZRO%20FUX%22;mask_path=au/cases/cth/ATMO

[4] Doherty, B. (2025, May 23). Americans, British swear more online than Australians. The Guardian. Retrieved June 3, 2025, from https://www.theguardian.com/australia-news/2025/may/23/americans-british-swear-more-online-than-australians

[5] Trademarks Act, R.S.C. 1985, c. T-13 (Can.).

[6] Canadian Intellectual Property Office. (n.d.). Trademarks examination manual. Innovation, Science and Economic Development Canada. Retrieved June 3, 2025, from https://manuels-manuals.opic-cipo.gc.ca/w/ic/TM-en

[7] Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744 (2017).

[8} Iancu v. Brunetti, 588 U.S. ___, 139 S. Ct. 2294 (2019).

[9] Supreme Court of the United States. (2019). Iancu v. Brunetti, 588 U.S. ___ (2019). https://www.supremecourt.gov/opinions/18pdf/18-302_e29g.pdf

[10] Trade Marks Act 2002 (NZ).

[11] Intellectual Property Office of New Zealand. (n.d.). Absolute grounds – General. Retrieved June 3, 2025, from https://www.iponz.govt.nz/get-ip/trade-marks/practice-guidelines/current/absolute-grounds-general/#jumpto-4__002e-offensive-trade-marks3

[12] New Zealand Trade Mark Application No. 1259120.

[13] New Zealand Trade Mark Application No. 1266562.

[15] Stuff. (2025, May 30). Paddy Gower: My trademark saying not offensive – Kiwis love it. Stuff. Retrieved June 3, 2025, from https://www.stuff.co.nz/nz-news/360627456/paddy-gower-my-trademark-saying-not-offensive-kiwis-love-it

Featured Image by Tim Hüfner on Unsplash

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