MacCormick Fellow Seminar: Dr Carys Craig
From Elisabeth Barlow
Article 6quinquies of the Paris Convention, incorporated into TRIPS by Article 15(2), allows member states to deny registration to trademarks when they are “contrary to morality or public order.” Many nations have provisions in their domestic trademark legislation that prohibit the registration and/or the commercial use of “immoral” trademarks. While such exclusions are permissible under the international intellectual property regime, questions remain as to whether they violate traders’ freedom of expression. High profile U.S. cases regarding the WASHINGTON REDSKINS, THE SLANTS and FUCT trademarks have found the US Lanham Act’s s. 2(a) proscriptions on the registration of disparaging, immoral and obscene marks to be unconstitutional restrictions on free speech.
In what circumstances, and subject to what conditions, should the registration and commercial use of offensive marks be prohibited? With a view to the Canadian context, we argue in favour of the constitutionality of the immoral marks prohibition when employed to target racial slurs and culturally offensive trademarks. In Canada, an indigenous activist recently sought to enjoin a US baseball team’s use of the CLEVELAND INDIANS name and CHIEF WAHOO logo. The trademark system can and should be harnessed to prevent the proliferation of such marks, which offend against fundamental values of equality and non-discrimination. A distinction must be drawn, on this rationale, between offensive marks (REDSKINS, INDIANS, BLACKHAWKS) and identity-affirming re-appropriations of discriminatory slurs (THE SLANTS, DYKES ON BIKES). Whether the prohibition of an “immoral” mark is constitutionally—or normatively—justifiable therefore demands a contextual analysis of the trademark as used, taking into account the relationships between the commercial indicia (as speech), the applicant (as speaker), and the public (as audience). Fortunately, attention to the communicative function and shifting meaning of trademark symbols in the allocation or denial of rights is already an essential feature of how our trademark system works.