Why go scandalous?

First and foremost the effectiveness of a trademark rests on whether it can distinguish your goods or services from that of your competitors. Having an edge to your trademark is undoubtedly one of the primary avenues for achieving the end point of financial success. But the question remains, how far would you go to distinguish your services from that of your competitors?

An effective way to distinguish your mark?

In London, an English coffee chain recently applied for the registration of F*ckCoffee as their trademark. Of course the ‘F’ word was funny when you were in year 8 but let’s face it, it is still funny now. Arguably, the goal of this coffee chain was firstly to distinguish itself from the various coffee chains that serve brown liquid (which may or may not be properly classed as coffee) that dominate England to the disgust of the more ‘coffee conscience’ Australian’s that reside in London. Secondly, branding your coffee chain F*ckCoffee is an explicit, albeit not so subtle attempt to attract publicity. Much of the publicity came off the back of a twitter blow-up following a tweet in which the company posted the comical trademark rejection letter from the English Intellectual Property Office.

Is it worth the rejection?

For lack of a better pun, the explicit use of f*ckcoffee ‘missed the mark’ of being appropriate to the public at large as it was ordered by lawyers, following from public complaints, to be taken down. The reasoning behind this is that it explicitly contained the work f*ck! Although this was not allowed by the English legislation, the attempt at registration was not only beneficial in publicity terms but such a rejection provides guidance regarding what can and cannot be registered. After all, the clothing label French Connection successfully registered “FCUK” in both Australia and England.

The “take away”: How does a scandalous trademark operate in Australia?

The Australian Trade Marks Act has very similar guidelines to the English act. Generally offensive sounding marks will be invalid under the Australian act. However, clever (or not so clever) word play can be and indeed has been registered under the Trade Marks Act. For example, ‘nucking futs’ has been successfully registered for a brand of bar snacks, again illustrating the timeless comedic value of the “F” word. Although largely unskilled word play was at work here it is undoubtedly ‘ok’ to push the barrier in regards to scandalous trademarks. Notably, in the ‘nuking futs’ case, successful arguments were based on the notion that the F word is not offensive as it once was and that the nuckin futs product was not meant to be mass marketed.

So whether it is a publicity stunt or whether you’re trying to push the boundaries of registration, a scandalous mark may be worth it. In essence it all comes down to whether you and your company handle a little rejection for the possibility of commercial gain.

Let us know what you think about scandalous trademarks by tagging us @lawpath and/or #lawpath.

Find out more about trademarks here, and about IP Australia’s Trademark Facelift.

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Dominic Woolrych

Dominic is the CEO of LawPath, dedicating his days to making legal easier, faster and more accessible to businesses. Dominic is a recognised thought-leader in Australian legal disruption, and was recognised as a winner of the 2015 Australian Legal Innovation Index.