Scandalous or Just Cheeky? Getting Trade Marks Registered

Scandalous or Just Cheeky? Getting Trade Marks Registered

“How do I protect my brand name?” and “Can I register a trade mark if the name is a bit rude?” are questions that come up in our office from time to time.

In a world where brands fight for attention, a slightly naughty or provocative name can feel like marketing gold – until it runs into section 42(a) of the Trade Marks Act 1995 (Cth). That section says a trade mark must be refused if it “contains or consists of scandalous matter”.​

But what actually counts as “scandalous” in Australia?

This is one area where the law appears to have moved with the times.

Once‑shocking religious or moral references may now be tolerated, while language that vilifies particular groups or glorifies violence is taken far more seriously.

Here we look at how the “scandalous” rule works, why it exists, how it’s been interpreted over the years, and what brand owners – from Melbourne craft distilleries to Sydney sex toy start‑ups – should keep in mind if they want to be edgy and still get registered.

The scandalous rule – what it is and why it exists

The starting point is simple enough: section 42(a) requires IP Australia to reject a mark that “contains or consists of scandalous matter”.

The Trade Marks Manual leans on dictionary definitions: “disgraceful to reputation; shameful or shocking” and “offensive to a sense of decency or shocking to the moral feelings of the community”. The Trade Mark Examiner’s job is to stand in for the “ordinary person” and decide whether the mark would, by today’s standards, cross that line.​

The Trade Marks Office Manual makes three simple but important points. First, community standards change over time. Words or images that would have scandalised earlier generations may now be seen as acceptable in some markets, and the reverse is also true – terms that once seemed harmless can acquire new, problematic meanings.

Second, the Registrar is not meant to be either a moral trendsetter or a museum piece. They should not lag so far behind community attitudes that their decisions feel out of touch, but they also shouldn’t leap ahead and approve marks that a lot of people would still find grossly offensive.

Third, the test is not whether the most easily offended person in Australia might complain. The question is whether a not‑insignificant slice of the public would feel genuine disgrace, shock or outrage, rather than just mild annoyance or disapproval.

It’s a deliberately high bar. The law isn’t there to save the public from bad jokes, tasteless puns or slightly rude wordplay. Its job is to stop the Trade Marks Register turning into a billboard for things like gross profanity, blatant racial abuse, attacks on religious groups and other material that most people would see as well beyond acceptable limits.

Changing with the times

Older UK decisions on marks like Hallelujah and Quaker for commercial goods placed real weight on religious sensibilities, but even then the courts warned against acting as censors or moral arbiters. Australian practice has evolved in the same direction.

A trade mark can be in bad taste and still be registrable. The scandalous element must be obvious and up‑front, not buried as a vague possibility.​

The guidance now makes two important points about how “scandalous” is assessed. First, purely sentimental objections are not enough on their own; it is not enough that some people strongly dislike or emotionally object to a mark.

Second, only a proportion of Australians need to be offended for a mark to be seen as scandalous, but the ordinary person is not assumed to have either a paper‑thin skin or a bullet‑proof one. The assessment sits somewhere in the middle, reflecting how a typical member of the public is likely to react.

IP Australia’s trade mark guidelines devote a whole section to “scandalous” signs and give some practical markers for where the line sits.

On obscene and coarse language, strong swear words – and very close phonetic look‑alikes like “FUK M”, “FUCT” or “F⮍CK” – will usually be seen as going too far, unless they are heavily softened by humour or very inventive spelling, such as a clearly tongue‑in‑cheek version like “DR PHUQ”. The idea is that if the ordinary person instantly hears or sees the full swear word, it is more likely to be a problem than if the reference is subtle and playful.

By contrast, less common expressions and double entendres are much less likely to offend a large part of the community, especially if they are cleverly disguised or stylised in a logo or device. The guidelines even acknowledge that advertising can shift public tolerance over time – the word “BUGGER” is a good example, going from shock value to mainstream acceptance in some contexts after a famous TV campaign.

Marks that appear to condone or promote violence, racism or terrorism are treated far more seriously. Since September 2001, there has been particular sensitivity around references that normalise or glorify these themes. A textbook example is “SNUFF” for movie production services, which was flagged because it directly pointed to “snuff movies”, where people are actually murdered on film.

Religious subject matter is handled with special care. Trade marks that clearly show contempt for sacred figures or beliefs – such as a profane slogan used alongside an image of a religious leader – are likely to be refused. Vague hints, gentle satire or mild irreverence are not enough on their own; the offensive element has to be obvious and direct before a scandalous‑matter objection is raised.

Crucially, IP Australia’s guidance stresses that the likely market for the goods must be taken into account. A mildly rude phrase on adults‑only party products or surf wear may be tolerable, because the audience expects a bit of cheek. Put the same words on children’s clothing, toys or family products and the assessment changes very quickly. The same mark can move from “poor taste but registrable” to “scandalous and refused” simply because the target market is different.

What got through and what didn’t

Some recent and older cases help bring this to life.

Refusals

1. KUNT (clothing) – rejected because it was too close to the strongest four‑letter English swear word, despite arguments that it could be pronounced differently.​
2. absofuckinglutely / absofcukinglutely (clothing) – refused; the profanity was obvious even with creative spelling, and the marks were held to be scandalous rather than merely in bad taste.​

Acceptances (cheeky but registrable)

LOOK GOOD. FEEL GOOD. ROOT GOOD. (cosmetics) – allowed. Risqué and arguably crude, but not enough to shock the ordinary consumer.

POMMIEBASHER (clothing) – allowed. Colourful and arguably offensive slang, but treated as colloquial rather than hateful.​

ZRO FUX (clothing) – allowed. The sentiment may upset the more delicate, but in context it was seen as poor taste, not scandalous.​

And then there is PINGERS. In Re Volstead Pty Ltd ATMO 164, the brand PINGERS was sought for spirits.

Some consumers are blissfully unaware of the drug slang; others – parents, police, teachers, health workers – know very well that “pinger” is a term for MDMA. The Delegate accepted that many people would recognise the drug reference and might find it distasteful, but held that the mark did not cross the line into scandalous matter. The use of PINGERS for spirits was not, in itself, seen as promoting or endorsing drug use, and did not cause the sort of disgrace, shock or outrage that section 42(a) is aimed at.

Sex toys, edgy brands and context

Many clients ask: “If my brand is a bit rude – especially for something like lingerie, adult products or sex toys – can I still register it?”.

The answer is “sometimes, yes”, but the context really counts.

However, there are still clear limits.

If a brand name is graphically explicit, degrading, violent or clearly abusive, it is much more likely to be treated as scandalous, and that risk is even higher when the products themselves are sexual or very intimate in nature.

There is a big difference between a cheeky name or one that most people would see as demeaning.

Where and how the mark appears also matters.

A word used quietly on an adults‑only website, where customers know they are in a “grown‑up” space, will be viewed differently from the same word splashed across bright packaging in a family‑friendly chemist or supermarket.

The more visible the mark is to a general audience – including kids – the tighter the boundaries tend to be.

How Sharon Givoni Consulting can help

Sharon Givoni Consulting works with businesses who want brand names that stand out – without being thrown out. For trade marks that flirt with the line between cheeky and scandalous, the team can:

• “Road‑test” your proposed trade mark
• Assess how IP Australia is likely to view your mark under section 42(a), using current case law and the Trade Marks Manual guidance.​\
• Advise on tweaks (spelling, wording, descriptors) that keep the brand personality while reducing risk.
• File and manage your trade mark applications
• Prepare and file applications in Australia and overseas.
• Respond to IP Australia objections, including scandalous‑matter and “use contrary to law” issues, with clear submissions.
• Help align edgy branding with broader strategy
• Make sure any “edgy” mark also makes sense from an intellectual property strategy perspective – including future expansion, licensing and international filings.
• Work with your marketing and creative teams so the legal and brand angles are pulling in the same direction.
• If you’re wondering “Can I protect this brand name?” or “Is this too risky to file as a trade mark?”, the team can help you find the sweet spot between boring and banned.

---

Please note the above article is general in nature and does not constitute legal advice.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.