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Disparity in international trade mark laws

DLS academic Dr Vicki Huang's study tests Australian trade mark regulations.

A Deakin Law School researcher has tested how the Australian Trade Marks Office (ATMO) responds to attempts to register a racist slur, following a high-profile case in the United States.

Deakin Law School’s Dr Vicki Huang’s research relates to the case of American band “The Slants”, formed in 2006 by Asian-American singer and guitarist Simon Tam.

Tam has been since involved in a protracted legal battle over trade marking the band name, which was originally rejected on the grounds of it being a “highly disparaging reference to people of Asian descent”.

“Tam has said that he chose the named ‘The Slants’ to re-claim this derogatory slur against East Asians,” Dr Huang said.

The issue culminated in a US Supreme Court decision in June of 2017 (Matal v Tam), with all Justices affirming the disparagement provision was unconstitutional in that it violated Tam’s right to free speech.

Dr Huang’s Australian application for “The Slants” was later rejected by the ATMO on the grounds that it “would offend a section of the community and it is scandalous”.

She said the outcome showed the contrast between US and Australian approaches to the rights of applicants in trade mark cases, and freedom of speech provisions.

“The conservative outlook of the ATMO indicates a more paternalistic approach to the expression of racist marks in public discourse,” she said.

“In contrast to the US disparagement clause, the Australian version is couched in terms of what is ‘scandalous’, and the Australian Trade Mark Examiner’s Manual expressly discourages examiners from setting new standards or engaging in any sort of appearance of social activism.

“Given that standard, it’s not surprising that the Australian application for ‘The Slants’ was rejected – in Australia, unlike the US, there’s no express provision in the constitution that protects freedom of expression.”

Dr Huang said the unintended consequences of Tam’s cases had emboldened other US applicants looking to register controversial and disparaging marks, and adversely impacted a major argument of Native American groups protesting the National Football League’s Washington Redskins trade mark.

“What is ‘fair’ isn’t always consistent with what is morally right,” she said.

“The ‘slur-appropriation as a form of self-empowerment’ rhetoric fails to acknowledge critical social facts – that not all minorities face inequity in an equal way and that self-appropriation is critically different from appropriation of a slur by a non-affected group.

“The decision allowed Tam to register ‘The Slants’, but it also empowered any other people looking to register a disparaging mark, and since the Tam decision there’s been a flurry of applications for racist trade marks in the US.

“It also effectively neutered the efforts by some Native Americans to de-register NFL-owned racist trade marks such as ‘Redskins’ on disparagement grounds, leaving these groups legally disenfranchised.”

Dr Huang said the impact of the Tam case would be felt in trade mark law for years to come, particularly given the changing dynamics of minority social activism around the world.

“As trade marks, media and ideas of social activism begin to cross borders, it will be interesting to continue to observe the long-term impact of the Tam case in the US, Australia and other jurisdictions,” she said.

Dr Huang’s full findings “Comparative Analysis of US and Australian Trade Mark Applications for The Slants” have now been published in the European Intellectual Property Review journal.

She has also been invited to present an analysis of Matal v Tam case and its ramifications at the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP) conference next month in Helsinki, Finland.

This article was originally published on Deakin Media. 

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