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A recent ruling by the US Supreme Court regarding a potentially scandalous trade mark raises the issue of how such a case might be addressed in Australia.

Many areas of law come to mind when “freedom of speech” is mentioned, but trade mark law is probably not among them. Voltaire was never moved to exclaim, “I disapprove of what you say, but I will defend to the death your right to trade mark it”. In Australia, current limits on the registration of trade marks only concern commercial speech.

In the US, the First Amendment to the US Constitution means that things are different. The First Amendment’s protection of free speech recently was used to overturn a legislative provision in the Lanham Act, which prohibited the registration of trade marks “which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The US Supreme Court decision raises the question of how the issue would be approached in Australia.

The case involved a group called the Slants, “the world’s first and only all-Asian American dance rock band”, who applied to register their band name as a trademark.

The US Patent and Trademark Office (USPTO), noting that the word “slant” was an offensive racial epithet, refused registration on the basis of the Lanham Act’s non-disparagement clause. The Slants argued their intention was to “reclaim” the epithet and “drain its denigrating force as a derogatory term” and appealed.

The Slants’ argument, taken all the way to the US Supreme Court, was that the non-disparagement clause was an unconstitutional infringement on the right of freedom of speech (including, in this case, freedom of trade marks) guaranteed by the First Amendment. The Supreme Court agreed unanimously that the non-disparagement clause was unconstitutional and The Slants will get their trade mark (an application to register “The Slants” as a trade mark in Australia was lodged in August 2015, but withdrawn at the start of this year, so perhaps there will be no Australian tour to celebrate. However, Simon Tam from The Slants will be attending the World Congress of The International Association for the Protection of Intellectual Property in Sydney in October, so there might at least be a solo number or two if you ask nicely).

The decision also handed a win to the Washington Redskins NFL team against a 2014 decision to cancel six of the team’s trade marks on the basis that they disparaged Native Americans. In a practical sense, the decision also seems to have opened the proverbial flood gates with the USPTO receiving numerous trade mark applications for images, symbols and words that would previously have fallen foul of the Lanham Act’s “non-disparagement clause”.

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