IPA patent 5.3.2.6-scandalous-matter — IP Australia Patent Manual of Practice and Procedure – 5.3.2.6 Scandalous matter

Also in this Chapter: 5.3.2.1 Title of the application 5.3.2.2 Abstracts 5.3.2.3 Requirements for Text, Pagination, Formulas, Equations, Drawings, Graphics, and Photographs 5.3.2.4 Substitute pages to comply with formalities 5.3.2.5 Requirements for amino acid and nucleotide sequences ​​​​​​​ Key Legislation:​​​​​​​ Patents Regulations: Schedule 3 (superseded) Formal requirements for documents to be filed- for applications before 24 th February 2019 Non-legislative Instruments: Formalities Determination 2019 (Superseded) -for applications filed after 24 th February 2019 and before 1 July 2022 Formalities Determination 2022 for applications filed after 1 July 2022​​​​​​​ Related Chapters: Trade Marks Office Manual of Practice Procedure 30.2. Scandalous signs ​​​​​​​ ​​​​​​​ On this page Overview Examination practice Case law . Overview It is a formal requirement that a complete application must not contain or consist of scandalous matter. However, in practice we rarely need to consider this requirement. Examination practice There have been no administrative or judicial decisions considering the term ‘scandalous matter’ under Australian patents legislation. Therefore, in practice, examiners are not expected to consider the requirement of ‘scandalous matter’ except in in extreme examples.​​​​​​​ Case law The only guidance for the term ‘scandalous matter’ is under Australian and United Kingdom trade marks legislation. These decisions have not arrived at clear guidelines for determining whether a trade mark is scandalous. However, they have stated and applied the following principles: the ordinary meaning of the word ‘scandalous’ is intended by the legislation ( Cosmetic, Toiletry and Fragrances Association Foundation v Fanni Barns (2003) ATMO 10). The word includes matter that is disgraceful to reputation, shameful or shocking, and defamatory or libellous. It goes beyond merely giving offence; The Registrar of Trade Marks must consider the general taste of the time as well as the susceptibilities of persons who may still be regarded as old fashioned ( La Marquise Footwear Inc’s Application [1947] 64 RPC 27 at page 30); and The standard is how the ordinary person would react to the trade mark ( Ellis & Co's Trade Mark (1904) 21 RPC 617).