Draining Offensive Words of Their Power
Brief Facts in Matal v. Tam
- An Asian-American band wanted to register a trademark called “The Slants”. Its members consisted of Asian Americans.
- The word “slant” was considered a derogatory term, hence falling under the “disparage” clause above.
- The band members believed that using the term as their band’s name would “reclaim” the term and drain the offending word of its power.
- Due to the above provision, the US Patent and Trademarks Office (USPTO) rejected the application.
- However, the US Supreme Court held that the USPTO’s decision violated the First Amendment, i.e. speech cannot be banned on the ground that it expresses ideas that offend.
Testing for Disparaging Trademarks
The USPTO has further specified that “[t]he fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.”
|The First Amendment of the United States of America. From FreedomWorks.org.|
The First Amendment
Is there a similar law in Malaysia?
|A photo of Kuala Lumpur on a rather cloudy morning, featuring the KLCC Twin Towers.|
“A mark or part of a mark shall not be registered as a trade mark –
(b) if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;
(c) if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation;”
– Scandalous matter
– Offensive matter
– Other matters not entitled to protection by any court of law
– Matters which the Registrar thinks is, or may be, prejudicial to the interest or security of the nation
What is offensive and/or scandalous really depends on content, and the context. In a piece by Jorge Espinosa, he wrote that the pre-Supreme Court Matal v Tam position made it politically correct to register “Think Islam” but made it wrong to register “Stop the Islamisation of America”.
A really strange situation might crop up when a registered “offensive trademark” from the USA cannot be registered in Malaysia. Can the American trademark owner then take action against the Malaysian offender for, perhaps, selling goods that infringe his trademark rights?
I think that in some cases, it is possible for the applicant who wants to register a seemingly offensive trademark to explain and prove to the MyIPO Registrar that, “Hey mister, this trademark isn’t as offensive as it looks… nor is it as scandalous as you imagine…!”
An example might be in the word, “Negro”, which in America seems to be an offensive word. But if you go back to the origin of the word, it came from the Spanish language, meaning “black”. And if you apply it in that context, “black” doesn’t mean anything offensive.
Another example might be the word, “Gay”, which as a modern English colloquialism, means “homosexual”. However, the original meaning of the word “gay” meant “happy” and “joyful”. Look into the lyrics of old songs, and you’ll see references to “happy and gay”. But times change, and as one Quora opinion stated,
The use of “gay” as a synonym for “happy” is outdated. If you use it that way, you will confuse readers.
Maybe one day Malaysia will have its First Amendment. But for now we have the right of the Registrar to refuse scandalous and offensive marks. We have our Sedition Act, which somehow manages to scare applicants away from registering seditious trademarks. So for example, I suppose we won’t have a tours and travels company trying to register “Balik China” (Return To China) anytime soon. But the meaning is innocuous, isn’t it? Or is it? Think for yourself…
|A photo of Malaysia’s first Prime Minister, Tunku Abdul Rahman, on the day of Independence, shouting “Merdeka! Merdeka! Merdeka!”|
Anyway, the Malaysian Independence Day is coming soon… Selamat Merdeka! This year is rather special because it is our 60th year of independence… as Malaya. (Actually, the country Malaysia only came into being in 1963, with Singapore as one of its members… notice how neither Singapore nor Malaysia ever mentions it during their independence day celebrations?)
Have a nice weekend!
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