The surprising legal rules about brand trademarks of sweary phrases

Journalist Paddy Gower's attempts to trademark his brand have highlighted what is still considered offensive in New Zealand when it comes to trademarks. But should a government agency be the arbiter of what might offend?

In March 2024, Gower applied to trademark the name of his news entity "This Is The F...ing News".

The application stalled at the Intellectual Property Office of New Zealand (IPONZ), likely because the Trade Marks Act 2002 doesn't allow people to register trademarks which are "likely to offend a significant section of the community".

"THIS IS THE F#$%ING NEWS" however, was apparently okay. Gower applied for that mark in June last year and it was registered in December. He now has exclusive rights to use this phrase for specified goods and services.

A changing definition

New Zealand law first prohibited the registration of "scandalous" marks in 1889. The language used in the trademark statute has been "likely to offend" since 2002.

The current rules cover swear words, as in Gower's case, but also hate speech and material which is culturally offensive.

IPONZ's current guidance says a "distinction should be drawn between marks that are offensive and marks that would be considered by some to be in poor taste".

Offensive trademarks are said to be those that would create "justifiable censure or outrage".

But the standards of offensiveness can and do change.

In 1999, Red Bull applied to register "BULLSHIT". Registration was rejected on the basis that it contained scandalous matter and was contrary to morality (under the wording in the older law).

Perhaps Red Bull wouldn't face the same difficulty if it tried again today. There is now a registration for "Shit You Should Care About". It appears that the word shit is not considered one that's "likely to offend a significant section of the community" anymore.

From a review of the register, it seems reasonable to conclude that IPONZ thinks that certain swear words do remain likely to offend, though. Several applications have been abandoned, including for "THE F...ING GOOD BOOK" and "no f...s given".

Whether a mark is offensive is supposed to be determined objectively from the perspective of the "right-thinking" member of the public. But outcomes can appear inconsistent and perhaps arbitrary - why is "F#$%ING" ok, but the proper spelling not?

Limits on freedom of expression?

Some applicants may also decry that their freedom of expression is being curtailed by a refusal to register.

The common justification for protecting freedom of expression is that we should have an open marketplace of ideas, where both good and bad ideas are shared with the public.

New Zealand is not alone in considering these issues.

In the United States, for example, Simon Tam was refused registration for "THE SLANTS" (the name of his rock band) because the law at the time prohibited registration of marks which may be disparaging.

Slant is considered a racist term by some and Tam had wanted to reclaim the slur as an anti-racist statement.

In another case, designer Erik Brunetti was refused registration of "FUCT" for clothing, because the law said that immoral or scandalous marks couldn't be registered.

Both marks have since been registered for reasons related to the fact that the US Constitution's First Amendment allows for the right to freedom of speech.

The US trademarks register now contains a pending application for "NAZI KAZI" and a pending application for a symbol described as "roughly resembling a swastika", as well as two pending applications for marks containing the word "N*....".

These marks may not ever be registered, but the barriers against their registration aren't what they once were.

Limiting offence or limiting rights?

New Zealand obviously has a different constitutional context than the US, but there are similarities in the underlying question about what is, and isn't offensive - and the role of the government in determining the rules.

One big difference between the US cases and those in New Zealand, however, is that New Zealand's Bill of Rights allows for limits on rights, if those limits are reasonable, set out in law (like the Trade Marks Act) and justifiable in a free and democratic society.

So, is there a compelling justification for the prohibition on registering offensive marks?

One argument for the prohibition is to protect the public from exposure to these kinds of marks. However, the denial of registration doesn't prevent the marks from being used in the marketplace.

Refusal means that an applicant misses out on the benefits of a formal trademark registration (such as being able to sue others for trademark infringement).

But there's nothing stopping a person using an unregistered mark. And, refusing registration may actually free up the mark for more people to use it as it doesn't belong to just one person or business.

Perhaps a more compelling argument for prohibition is that registration should be refused to avoid giving an official (governmental) seal of approval to offensive marks.

This may be a very high bar, but it seems important that a registrar consider the likelihood of deep offence, even if the standard is not often reached.

Putting justifications for any bar aside, it remains hard to draw a line as to what is and isn't okay. It seems in relation to "THIS IS THE F#$%ING NEWS", that line is razor thin.

* Alexandra Allen-Franks is a senior lecturer at the University of Auckland, Rob Batty is an associate professor at the University of Auckland.

- This story was first published by The Conversation