Lately, a number of brands and brand owners have received renewed criticism for their trademarks that have racist or derogatory roots. While many brands are finally changing their names due to negative consumer perception, we are reminded again of the contentious relationship between offensive marks and freedom of expression.
Section 12 (1)(e) of the Trademarks Act states that a mark is registrable if it is not a sign or combination of signs whose adoption is prohibited by section 9 or section 10. In turn, ssection 9 (1)(j) states that “no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for ... any scandalous, obscene or immoral word or device.”
According to the Trademarks Examination Manual, a scandalous trademark is something that is offensive to a societal or individual sense of propriety or morality, or which is a slur on nationality and generally regarded as offensive. It is something that causes general outrage or indignation.
The United States used to have a similar prohibition known as the disparagement clause (Lanham Act, 15 USC s. 1052(a)), but it was declared unconstitutional in Matal v. Tam, 137 S. Ct. 1744 because of its impact on freedom of expression. Tam wanted to call his band “The Slants”, and in doing so “take back” a word that had previously been used against people of Asian descent. After his win in the US Supreme Court, Tam explained that people should be free to use offensive names in part because they help stimulate discussion around racism.
Despite Tam’s initial motivations, there is no denying that there have been negative consequences of the Matal v Tam decision. In the United States, anyone is now able to use offensive marks, not only those who are trying to “take back” offensive words. For example, prior to Matal v Tam, the Washington Redskins football team had been denied registration of its trademarks because they violated the Lanham Act’s disparagement clause.
When the Court recognized Tam’s right to “take back” a racial slur, it also handed every other American organization and individual the same opportunity to use racial slurs and derogatory images as trademarks. The Washington Redskins were suddenly free to register their name and logo. Shortly after, in Iancu v Brunetti, 139 S. Ct. 2294, the Court struck down the remaining restrictions in the Lanham Act that prohibited the registration of immoral or scandalous marks.
In Canada, freedom of expression arguments have yet to be argued in the trademarks context at the Supreme Court of Canada. That’s not to say that the argument hasn’t been put forward. In Cardinal v. Cleveland Indians Baseball Co. Limited Partnership, 2016 ONSC 6929, Douglas Cardinal sought an injunction against Rogers. The Cleveland Indians were about to play in what was then the Rogers Centre, and the injunction aimed to (1) prevent Rogers from broadcasting the Cleveland Indians logo, (2) to prevent the team from wearing their regular jerseys, and (3) to have announcers refer to the team only as “The Cleveland Team”. However, because the injunction was brought only hours before the game, the court ruled that the balance of convenience fell in Rogers’ favour. Still, the court did conclude that the relevance of freedom of expression, a defence brought forward by Rogers, constituted a serious issue to be tried.
One can only hope that when \ freedom of expression arguments are argued fully in Canada, the courts will see what has happened in the United States as a cautionary tale. Taking a strong position against the registration of scandalous marks is more important than protecting companies’ rights to use offensive language and images. Nobody should be subjected to blatant discrimination every time they flip on the television or walk down a grocery store aisle.
This blog was written by Rachel Marcus. Rachel is going into her third year at Osgoode Hall Law School. She is an IP Innovation Clinic Fellow and part of the IP Intensive Program.