In the United States, cases challenging decisions of the United States Patent and Trademark Office’s refusing applications for the registration of disparaging marks have dominated trademark news for over 25 years, culminating in the decision from the Supreme Court of the United States in Matal v. Tam, in a case concerning the rock band “The Slants”. In Canada, by contrast, there are few cases offering up even a hint of how this issue would play out in Canadian courts.

Section 9(1)(j) of the Canadian Trade-marks Act prohibits the adoption of “any scandalous, obscene or immoral word or device”. A significant difference between the American and Canadian statutes on this issue is that in Canada, adoption of a mark contrary to S. 9(1)(j) is prohibited, as well as its registration, whereas in the United States only the registration of a disparaging mark is prohibited.

Whether the prohibition of a scandalous prohibited mark under S. 9(1)(j) would pass constitutional muster is a completely untested question, although the issue would be somewhat different than in the United States, because adoption of a mark is also prohibited, so it would not be an issue of trademark registrations as speech, but of the use of trademarks as speech.

Among the reasons why this provision is almost entirely untested in Canada is that Canadian Intellectual Property Office Examiners do not appear to issue refusals on this basis very often. The Trademarks Examination Manual points to only one case where such a refusal was issued, namely application serial No. 409,882 for the registration of the design below:

Although it appears that objections have been raised for expletives, such as “fuck” and “bastard” in some cases, there are registrations in Canada for many slurs, including “ESKIMO”, “REDSKINS” and “FAG”. It does not appear that Examiners are receiving guidance, nor is there any judicial guidance, about how to issue refusals based on Section 9(1)(j).