Define Trademark Issue 2(a) – Immoral, Deceptive or Scandalous Matter

A trademark is – or includes – “immoral, deceptive, or scandalous matter”, if it is – or has something that is – “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings” and should be condemned. (from the case,In re Riverbank Canning). Per the Trademark Act, it cannot be registered.

“Immoral” means that the trademark is contrary to accepted standards of right and wrong. “Scandalous” means that it is shameful and improper vis-à-vis the rules of social conduct. Whether a trademark is immoral or scandalousis assessed in the context of whether a “substantial component of the general public” in the relevant marketplace today would perceive it to be vulgar or improper. It does not matter whether the interpretation or perception is the only one that could arise, or whether it is supposed to be humorous.

In a lawsuit, the court will likely consider evidence like dictionary definitions, media reports and other literature, to determine whether the trademark is obviously offensive. If it’s not obvious, there will be evidence as to whether there is an actual group that would be offended by the trademark’s connotations, by today’s standards, and why the group would be offended. If it’s a huge stretch In many cases, when people sue because they are offended by a trademark, it’s because they feel that the trademark builds on an existing negative reputation and/or will have a negative effect on reputation. It has to make sense why a group would be upset or negatively affected, not just because a tiny segment of people are oversensitive, for example.

A “deceptive” mark is one that is misleading (to consumers) about the nature of the brand, or the brand’s associations; i.e. whether the marks would falsely imply that the product is one thing when it is actually another, or connected to another brand when it is not. As an example, someone might sue because the trademark created a mistaken belief in a brand, but had this person known the truth, would not have purchased it or interacted with it the way they did. Another example would be if one brand was able to take advantage of another brand’s goodwill (or negatively affected the reputation of another brand) because a trademark erroneously implied that the two were connected. The court would look at what a regular person who had a reasonable knowledge of that market would think after seeing the trademark. To assess this, a court may be considering evidence about the impact the trademark is having on the second brand, and/or what kind of knowledge is considered “reasonable” for an average consumer, based on the information readily available.

So, if:
(1) members of a particular societal group would think your trademark is morally unacceptable and disparages them (“immoral”);
(2) members of a particular societal group would think your trademark is distasteful or socially unacceptable, and would disparage them; or
(3) a reasonable customer would believe something about your brand that isn’t true, based on your trademark (“deceptive”),
it will not be accepted by a registry under the Trademark Act and will therefore not be recognized as a proper trademark.