Opinion | The legal pitfalls of using offensive brand names
4 min read . Updated: 09 Apr 2019, 05:04 PM ISTGiven the morality aspects of trademark laws, it is best for businesses not to court scandals
Some parents end up regretting the names they picked for their children. The same perhaps applies to corporations and brands. For example, Unilever’s Golden Gaytime ice-cream lolly, innocently christened in the 1950s, became the subject of a misplaced social media backlash in Indonesia. In Britain, jam maker Robertson’s discontinued its golliwog logo after 91 years as the children’s doll is today viewed as racist. Then, there are unfortunate instances of a brand name implying a slur in another language. For instance, Mazda, on launching its Laputa car, was shocked to discover that the name, borrowed from Gulliver’s Travels, was slang for “prostitute" in Spanish.
In trademark jurisprudence, brands considered distasteful draw attention to a tricky issue: the denial of registration for contravening public morals. For example, the British clothing retailer French Connection conceived of its cheeky FCUK logo while separating faxes from its Hong Kong and UK offices (FCHK versus FCUK). During the noughties, T-shirts sporting the coincidental lookalike cuss word became ubiquitous among teenagers, horrifying parents and teachers. Hearing a challenge against the mark’s registration, a tribunal ruled that “FCUK", in itself, was not objectionable, and was unconvinced that the British public found it “significantly offensive". In contrast, Paki Logistics (a German packing and freight company) lost a battle in the European Union General Court to register its unintentionally racist name. In Switzerland, the Federal Court denied registration to Buddha Bar on moral grounds.
In the US, some noteworthy cases have occurred in recent years. In 2014, the US Patent and Trademark Office (USPTO) cancelled the trademark registration of the Washington Redskins, an American football team, finding the name offensive towards Native Americans. However, an appellate court vacated the decision last year in the light of a subsequent US Supreme Court decision (Matal vs Tam). The case had arisen after a rock band, comprising Chinese-Americans, was denied registration for its name, The Slants (a racial slur the band wished to “reclaim"). The court held that the statutory provision—prohibiting the disparagement of persons, institutions and beliefs—that had been cited to deny registration was contrary to the US constitution’s First Amendment, which protects free speech. Justice Anthony Kennedy observed that, barring certain narrow situations, “It is a fundamental principle of the First Amendment that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys." In January 2019, the USPTO rejected a trade mark application for FUCT, a streetwear clothing line, under a statutory provision proscribing “immoral" or “scandalous" marks. The case is headed to the US Supreme Court.
Is an Indian precedent looming?
As Prof. Frederick Schauer notes, US First Amendment jurisprudence is a “recalcitrant outlier" to the rest of the world, where courts tend to be more sensitive towards community morals and sentiments. Contrasting the Paki-Buddha Bar precedents with the Matal vs Tam case affirms this. In India, courts are yet to hear a significant case on such a matter, but one may be in the offing.
Records from the website of the Trade Marks Registry show that French Connection applied to register FCUK in India in March 1998 (No. 793780). The registry advertised the application (a prerequisite before registration) belatedly in 2006. Sarabjit Singh Lamba, claiming trademark law as his “hobby", opposed the application for being “scandalous and obscene". In response, French Connection argued that its mark was internationally famous, had been granted registration “in almost all English-speaking countries" and was not similar “to any four-letter slang word".
Incredibly, the simple process of submitting representations in connection with the case stretched for more than a decade, notwithstanding pleas from French Connection for an expedited hearing. The most recent submission appears to be a letter, dated 14 March 2019, repeating this plea.
As the Trade Marks Registry drags its feet, its counterpart, the patent office, recently set an interesting precedent, rejecting a patent application for a vibrator for “obscenity and moral deprivation". Should French Connection’s application fail, it could still protect the mark using the tort of passing off—which, in theory, protects the goodwill attached to the mark rather than the mark itself. However, courts may not be very sympathetic. In the UK, before obtaining trade mark registration, French Connection had sued the registrant of Fcuk.com for passing off. The High Court of Justice rejected the claim, finding it “unpalatable in the extreme".
Ultimately, amid falling sales of French Connection, youth sentiment may be the brand name’s harshest judge. The early millennials who patronised the brand have now aged considerably and tend to prefer more sober clothing. Some of FCUK’s messaging may also be considered misogynistic in the #MeToo era.
Thus, perhaps the lesson for businesses is to steer clear of fads and choose inoffensive brand names reflecting durable, traditional values. Like Patanjali hair oil, Aashirvaad Atta, Navratna talcum powder. Who could go wrong with those?
Arpan Banerjee is an assistant professor at Jindal Global Law School.