“Scandal is gossip made tedious by morality.”- O Wilde
In crafting Valley of Mother of God Gin, the founders of Foxglove Spirits, Malcolm Roberts and Shelly Perry, drew inspiration from the lush forests and fields surrounding their Ontario farm property. They did not, however, anticipate the wildfire of legal obstacles that combusted when they filed to register a trademark application to protect their brand.
The Controversy
Foxglove applied to the Canadian Intellectual Property Office (CIPO) in 2018 to register the trademark VALLEY OF MOTHER OF GOD in connection with various alcoholic beverages. The term “Valley of Mother of God” references an area near the farm where Roberts and Perry grew the apples, black walnuts, juniper, and other raw ingredients distilled into their award-winning gins. Co-founder Malcolm Roberts, owner of an ad agency, wanted a brand name that was evocative and memorable (even if a mouthful). But the company was stymied by certain arcane provisions of Canadian trademark law. It took six years, through peaks and yes, valleys, before CIPO saw the light.
Trademarks, whether registered or unregistered, by definition indicate the source of goods. Registering a trademark is generally the way to go because it grants the owner enhanced rights and stronger enforcement tools under the Trademarks Act of Canada (the “Act”). Being prudent owners of a new brand, Foxglove filed an application with CIPO on October 5, 2018.
CIPO took their time (as is their wont) in reviewing the filing.[1] When the response finally arrived from CIPO it was terse. CIPO concluded that the trademark was prohibited because it was considered “scandalous, obscene, or immoral” – they did not specify which – making it per se un-registerable under sections 9(1)(j) of the Act. To make matters more puzzling, no evidence, reasoning, case law or other information was offered in support of this conclusion, rendering it difficult for Foxglove to respond.
The Law, Comparatively
Community standards and cultural norms move fairly rapidly these days, but when it comes to risqué trademarks in Canada, not so much. The case of Hallelujah Trade Mark[2] involved a refusal of a trademark application containing the word “HALLELUJAH” in relation to women’s clothing. The refusal was based on the “overwhelming religious significance” of the word, which, the Court reasoned, would offend the accepted mores of the time (being the mid-1970s). This case still stands for the proposition that Canadian trademarks containing any religious references are generally considered inappropriate for registration.
This quintessentially Canadian, politeness approach dates back eight decades. In a nutshell:
…it is the duty of the Registrar (and it is my hope that he will always fearlessly exercise it) to consider not merely the general taste of the time, but also the susceptibilities of persons, by no means few in number, who still may be regarded as old fashioned and, if he is of the opinion that the feelings or susceptibilities of such people will be offended, he will properly consider refusal of the registration.[3]
The upsetting term in the case above was OOMPHIES, which, as we all know is slang for sex appeal – if you live in 1946.
Culture and norms are evolving, and religious terms and images have become more common in advertising and branding. Trademark law has moved, albeit gradually, with the times. In Drolet v Stiftung Gralsbotchaft,[4] the disputed trademarks included religious words and symbols, such as the menorah. This time the Court found that the trademarks were not scandalous, obscene, or immoral, even if they might offend certain groups.
Europeans are less…prudish. In Constantin Film Produktion GmbH v European Union Intellectual Property Office (EUIPO),[5] the European Court of Justice clarified that “accepted principles of morality” should be interpreted in context, reflecting a society’s fundamental moral values and standards, which are subject to change. The assessment of a trademark’s moral acceptability must consider the social context, including cultural, religious, and philosophical diversity, and should be based on the perspective of reasonable persons with average sensitivity and tolerance.
Current American jurisprudence, it will come as no surprise, leans into the protection of free speech. Iancu v Brunetti,[6] overturned the past prohibition against registering trademarks – in the case FUCT (a cutesy acronym for “Friends U Can’t Trust”) – deemed “immoral or scandalous.” The U.S. Supreme Court ruled that this prohibition was unconstitutional for violating free speech, being overly broad and covered many ideas far beyond the initial issue of $%%#@ words. The Court held that this provision in the law violated the rights of applicants to free expression. By contrast, the mark FCUK (for “French Connection United Kingdom”), has long been accepted in Canada and the US, where sensitivities apparently do not extend to the dyslexic.
It is interesting to note that the First Amendment in the US does not protect mocking ex-Presidents via TMs as SCOTUS recently said in blocking a TRUMP TOO SMALL (an apparent body-parts reference) trademark application[7], a few weeks before conferring on that same erstwhile president the bigly power of absolute immunity for crimes.
The (Winning) Arguments to CIPO
Getting back to VALLEY OF MOTHER OF GOD, Foxglove submitted[8] that, when determining whether a trademark is “scandalous, obscene or immoral,” CIPO must find that it would offend the feelings or sensibilities of a “not insignificant segment” of the public. For lawyers who crave certainty, the Trademarks Examination Manual, provides only minimal guidance to divine the meanings of these terms:
- Scandalous: A word or design is considered scandalous if it is offensive to public or individual propriety or morality or is a slur on nationality and generally regarded as offensive. It is generally defined as causing widespread outrage or indignation.
- Obscene: A word is considered obscene if it violates accepted language inhibitions or is regarded as taboo in polite usage. It is generally defined as offensive or disgusting by accepted standards of morality or decency or offensive to the senses.
- Immoral: A word or design is considered immoral if it conflicts with generally or traditionally held moral principles and is defined as not conforming to accepted moral standards.
Trademarks which have a racist tone are probably verboten in Canada, while in the US the band the SLANTS successfully petitioned all the way to the Supreme Court[9] for protection of their band name, notwithstanding its anti-Asian provenance.
With these rather fuzzy criteria in mind, the applicant argued that its trademark was neither obscene nor immoral, leaving only the potential for it to be considered scandalous. We contended that the Trademark would not offend the feelings or sensibilities of the general public and that offending certain individuals does not meet the threshold required.
CIPO was not swayed however, and issued a second refusal, denying the application anew. The responding examiner, again offered no real evidence, unless you count the Oxford Dictionary. CIPO noted, citing the Oxford Dictionary, that the definition of “Mother of God” in relation to the Christian Church is defined, helpfully, as “a name given to the Virgin Mary (as mother of the divine Christ).” He argued that, from the perspective of “the average Canadian of average education in English and/or French,” the first impression of the trademark would be considered scandalous, obscene, or immoral.
In our next submissions to CIPO, we did what they failed to do: marshalling actual evidence in support. This involved an affidavit highlighting the applicant’s extensive marketing efforts including through the Liquor Control Board of Ontario (the “LCBO”), the largest purveyor of booze in the country. With over 10 million annual customer visitors to the LCBO and nearly 7 million social media and traditional media impressions of the Trademark, the VALLEY OF MOTHER OF GOD brand was exposed to a broad audience, with nary a complaint. For good measure, we included affidavits of religious leaders, attesting to their opinion that the trademark was not scandalous and in fact welcomed (alcohol and religion having a long and successful relationship, after all).
Conclusion
While Canadian jurisprudence has yet to tackle trademarks on free speech grounds, U.S. law may pave the way. For now, when it comes to the meaning of scandalous trademarks, CIPO’s approach echoes the infamous dictum of SCOTUS Justice Potter Stewart, who said of obscene pornography: “I know it when I see it.” In other words, it’s a highly subjective standard, even if it should be interpreted based on constantly shifting community sensibilities.
Post script: Registration was granted on September 3, 2024, nearly 6 years from the date of filing. To which we say, respectfully, hallelujah[10] (and cheers)!
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About the Authors
Paul Bain is actively involved in the protection and enforcement of the rights of creators, writers, artists, photographers, film and TV producers and musicians. Paul can be reached at 416-646-8364 or PBain@dickinsonwright.com. To read his full bio, please click here.
Alexandria Chun is an attorney in Dickinson Wright’s Toronto Office. She can be reached at AChun@dickinsonwright.com. To access her biography, click here.
Special thanks to Summer Associate Ciara J. Halloran for contributing to this article.
[1] Processing times in CIPO average 3 years and longer, whereas in the US it is 8 to12 months on average.
[2] Hallelujah Trade Mark, (1976) RPC 605 [Hallelujah].
[3] La Marquise Footwear Inc. Re. (1946), 64 R.P.C. 27
[4] Drolet v Stiftung Gralsbotchaft, 2009 FC 17, 2009 CF 17.
[5] Constantin Film Produktion GmbH v European Union Intellectual Property Office (EUIPO), Case C 240/18 P (27 February 2020).
[6] Iancu v Brunetti, 139 S. Ct. 2294 (2019) [Iancu].
[7] 22-704 Vidal v. Elster (06/13/2024)
[8] Full disclosure: Dickinson Wright LLP, and the writer, were trademark agents and counsel to the applicant
[9] Matal v. Tam, 582 U.S. 218 (2017)
[10] With due deference to whatever belief system, or norms, you attorn, mutatis mutandis.
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