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ARTICLE · 08 FEBRUARY 2016

Offensive Trademarks: Can They Be Registered In Canada And The US?

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Can you register an offensive trademark in Canada? A recent U.S. decision concerning "disparaging" trademarks has led some Canadian practitioners to question if the result would be similar in Canada.

CanadaIntellectual Property
Philip Lapin
Philip Lapin
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Can you register an offensive trademark in Canada? A recent U.S. decision concerning "disparaging" trademarks has led some Canadian practitioners to question if the result would be similar in Canada.

The U.S. Court of Appeals for t­­he Federal Circuit recently issued a split decision, In re Simon Shiao Tam, holding that the bar on registration of "disparaging" marks under section 2(a) of the Lanham Act is unconstitutional and violates the First Amendment.

Canada has a prohibition against the adoption of "scandalous, obscene or immoral" marks, arguably similar to the US provision. The In re Simon Shiao Tam decision raises an interesting question as to how Canadian courts would respond to arguments that the prohibition against such offensive marks is unlawful.

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