In recent weeks following global Black Lives Matter protests, announcements have been made around the world to retire a number of trade marks with longstanding use. In Australia, these include REDSKINS and CHICOS for confectionery, and COON for cheese. The owners of these brands have acknowledged their divisiveness and will rebrand these products. Reasons stated for these decisions include to treat people with respect, and to reflect current attitudes and perspectives. These are trade marks that no longer spark joy, either for their owners or consumers, and they should not remain in use.

Accentuate the positive

Trade marks that are worth registering and worth maintaining are trade marks that consumers regard with a positive attitude. This has long been recognised. In the 1950s, a judge of the High Court in one of Australian’s leading trade mark law cases described a trade mark’s purpose as being “capable of inducing a generally favourable inclination in the subconscious thought”. That is, in current parlance, to spark joy. The trade mark in question in that case was TUB HAPPY for clothing. If a trade mark is not fulfilling a positive purpose its use in the marketplace should be reassessed.

For a trade mark to trend favourably, consumers should want to embrace it, to identify with it, and feel comfortable aligning themselves with it. Values are often a factor, considered consciously or not, in a choice of brand. The meaning of a mark can evolve over time and prevailing attitudes can change. It is important to respond appropriately as changes occur and to conduct periodic reviews of a trade mark portfolio to ensure each mark is worth maintaining.

Goodwill

A trade mark used well overtime should accrue goodwill. However, an existing name can be corrupted. In the case of REDSKINS and CHICOS confectionery, these are trade marks whose continued use risks compromising any goodwill acquired in the marketplace. These marks were registered in the 1980s. The Macquarie Dictionary, used as a reference by the Australian Trade Marks Office, lists “redskins” as a derogatory, racist, and dated colloquial noun for a Native American. There is no listing for “chicos” in this dictionary, but this word is understood to be a derogatory term for people of Latin-American descent. The registration for COON cheese goes back even further, to the 1960s. The word “coon” is listed in the Macquarie Dictionary as a derogatory and racist term for a member of a dark-skinned people, as an Indigenous Australian or an African American. It is also a surname. The brand name is said on the owner’s website to be in recognition of the work of an American named Edward Willian Coon who patented a ripening process used in the manufacture of the cheese that bears his name. Regardless of the origins of these brand names, their current meanings detract from the owner’s brand message. A trade mark’s meaning, like language, is not static. Changes in consumers’ response to a brand name should be acknowledged and addressed appropriately to maintain goodwill.

In considering the impact of a trade mark, it is the consumer’s perspective that should always prevail over the intentions of the owner. A brand owner can take steps to educate and direct the meaning of a trade mark, including its origin and heritage, but how a trade mark functions is ultimately always dependent on how it is received by the public.

The Australian Trade Marks Act contains provisions directed to preventing racial slurs or epithets being entered or maintained on the Australian Trade Marks Register on the basis that they are considered “scandalous”. Other categories of scandalous marks include those relating to sexism, and marks that are irreligious or profane, or that promote illegality. The risk of offence is not limited to Australians only. It extends to overseas communities as well. These provisions, however, are not commonly utilised. Action by the Registrar to refuse registration has been scarce. Any corrections to the Register are far more likely to be driven by the market than by litigation.

Portfolio reviews

The trade marks REDSKINS, CHICOS, and COON discussed here are just three examples in Australia of brands that are being revised in response to recent events. There are more, including examples from overseas, in particular the United States. A good trade mark does not cause offence. Trade marks should be monitored for their risk to cause offence, but more importantly for their ability to connect favourably with consumers. Rather than considering a trade mark in the context of cancel culture, a better approach may be to focus on positives, and follow the principles articulated by Marie Kondo for tidying by assessing whether each trade mark in your portfolio sparks joy.

Adams Pluck can assist with reviewing your trade mark portfolio. We recommend your portfolio be reviewed periodically to ensure each registration you maintain contributes positively to your business, protects your marks as used in the marketplace, and covers the goods and services provided by you. If you would like to conduct a Spring-clean check of your portfolio, please contact us for a confidential consultation.