Offensive Branding That Can Make Your Trademark Fail

ByMarkport

“Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public…”
Article 6quinquies (B) iii, Paris Convention for the Protection of Industrial Property

Why this matters

Every company hopes to catch the attention of the consuming public. Sometimes marketers do this by coming up with clever, shocking, or funny brands that create a big buzz in the market. However, not all brands may protected as trademarks. There are legal limits. For examples, if your brand name, logo, or slogan is likely offend a significant segment of society, it could be refused trademark registration on the grounds of public order or morality.

This rule isn’t just local. It’s part of an international framework Australia is a signatory to. The goal is clear: to stop trademarks that could mislead consumers, offend communities, or disrupt public order.

For small businesses and emerging brands, this has serious implications.

What Australian Law Says About Scandalous Trade Marks

Under section 42(a) of the Trade Marks Act 1995 (Cth):

“The Registrar must reject an application for the registration of a trade mark if the trade mark contains or consists of scandalous matter.”

This gives the Registrar clear authority to refuse trade marks that offend accepted standards of decency in Australia. However, interpretation of “scandalous” is not rigid. It evolves alongside social norms.

There have been relatively few decisions under this section, but two examples help explain how it works:

“Look Good Feel Good = Root Good” (2003)

Filed for cosmetics and sexual hygiene products, this mark was crude but not shocking. The Delegate noted that community language had become more robust, and despite being suggestive, the mark did not breach section 42(a).

“Pommiebasher” (2011)

Filed for clothing and beverages, this mark was challenged as potentially offensive to English people. The Delegate concluded it was colloquial and humorous, not hateful or scandalous. The mark was approved, though still open to opposition.

The Delegate also noted that morality, as a legal ground, had been removed from Australian law in 1955. What matters today is whether a mark offends public sensibilities, considering the context of the goods or services it’s used for.

Examples of potentially scandalous marks fall into categories such as:

  • Racial slurs or profanities
  • Vulgar or sexually explicit references
  • Religious mockery
  • Promotion of illegal behaviour

That said, each application is judged on its own facts. A word or phrase may be acceptable for adult-themed products, but not for something like infant clothing.

How these rules affect your brand

  1. Legal Refusals Are Built Into the System
    IP offices, including IP Australia, have legal grounds to refuse marks that contain offensive language, slurs, or content seen as immoral. It’s not about censorship. It’s about aligning with public standards.
  2. Controversy Can Undermine Credibility
    What seems edgy or bold in a marketing brainstorm may not land well with regulators or your customers. A rejected application can delay your launch and cost you credibility with partners, funders or clients.
  3. Harder to Defend and Enforce
    Even if approved, a mark deemed offensive may be harder to enforce in court or public opinion. Why fight to protect a name that hurts your brand every time it’s mentioned?
  4. Limits on Global Protection
    What’s acceptable in one country may be blocked in another. Using scandalous elements in your branding can stop you expanding internationally.

Real World Examples: When Trade Marks Cross the Line

Eskimo Pie

Why it was offensive: The word “Eskimo” is considered derogatory by many Inuit and Yupik people. It was seen as a colonial term, not one the communities used for themselves.
What happened: In 2020, the brand was rebranded to Edy’s Pie by Dreyer’s Grand Ice Cream, acknowledging the term’s harm and aligning with modern values.

Cadbury Moro

Why it raised concerns: While not the subject of formal legal action, “Moro” has potential to offend, particularly in the Philippines, where it refers to Muslim ethnic groups in Mindanao. Using it as a chocolate bar name could be seen as trivialising a complex cultural and historical identity.
What happened: In Ireland, the bar was rebranded to Boost in 2015. While no explicit link to offensiveness was stated, the rebrand avoided any unintended connotations in global markets.

Allen’s Chicos

Why it might offend: “Chico” is a Spanish term meaning “boy,” but its use to describe brown coloured lollies can carry racial overtones. Critics argue it racialises confectionery in ways that feel outdated or insensitive.
What happened: Nestlé quietly removed Chicos from shelves in 2020 as part of a broader shift toward more inclusive branding, though no formal ban or legal case occurred.

Filipinos (Chocolate Biscuits)

Why it caused offence: This Spanish snack brand used the word “Filipinos” to market chocolate-coated biscuits. The term refers directly to the people of the Philippines, which critics said was both exploitative and potentially racist, especially considering the product’s colouring (dark outside, white inside).

What happened: The Philippines’ Intellectual Property Office refused registration of the mark under section 123.1 of the Intellectual Property Code of the Philippines (R.A. 8293). In the appeal decision, the Office found that:

“The Appellant’s use of FILIPINOS will result to a false suggestion that the products covered by this mark are connected with the Filipino people. Similarly, it will be contrary to public order or morality that such identity of the Filipino people will be exclusively appropriated by a person, much more a foreign entity.”
Director General, IPOPHL, Decision No. AP BOT 04-2019-000005

It was also found to be geographically misleading:

“A person who would encounter the Appellant’s products would have the impression that these goods came from the Philippines or are produced or manufactured… by the Filipino people.”
Decision No. AP BOT 04-2019-000005, p. 4

Outcome: The mark was officially refused. Although the product continues to be sold in other markets, it was removed from shelves in the Philippines following the ruling.

What we recommend

At Markport, we help businesses build strong, distinctive brands that won’t trigger objections or oppositions:

  • We review proposed trade marks for risks tied to public order or morality objections before you apply.
  • We help with creative naming and design that’s bold but smart, so you avoid wasted applications and bad press.
  • If your mark is challenged, we’ll support you with responses and appeals, or guide a brand reset that keeps your core identity intact.

A trade mark should be a long-term asset. That means it must pass legal tests and public scrutiny. Let’s make sure your brand is remembered for the right reasons.

Having trouble with you trademark application? Contact us here: https://markport.com.au/contact-us/

Useful Links:
IP Australia, Trade Marks Manual of Practice and Procedure – Scandalous Signs.
Available at: https://manuals.ipaustralia.gov.au/trademark/2.-scandalous-signs
Galletas Artiach, S.A. v Director of Bureau of Trademarks, Appeal No. 04-2019-0005, Office of the Director General, 22 February 2019.
Available at: https://onlineservices.ipophil.gov.ph/ipcaselibrary/ipcasepdf/AP_BOT_04-2019-000005_Decision.pdf