What did the ASA have to say?

A press ad featured in The Sunday Times Culture magazine was the subject of a UK  Advertising Standards Agency (“ASA”) ruling published earlier this month. The ad stated, “Dawn French is a huge t**t” and included a picture of comedian Dawn French as well as text stating “BACK DUE TO PHENOMENAL DEMAND.” The ad was subject to two complaints which alleged that the ad was likely to cause serious or widespread offence.  In defence it was argued the title was humorous and any offence was only aimed at Dawn French herself. The ASA investigated the ad under CAP Code rule 4.1 (Harm and offence) which states that ads “must not contain anything that was likely to cause serious or widespread offence”. The ad was assessed only in the context of its appearance in the paper i.e. the relevant medium only and taking into account the likely audience.

While the ASA considered that the word “t**t” had the potential to cause offence to audiences, they also acknowledged that the word featured in the title of Dawn French’s upcoming 2023 live tour and that this was the context in which the word featured in the ad.

The ASA also considered that, as most readers would be aware of Dawn French and her style of comedy, “the use of the word would be understood by readers to be self-deprecating and tongue in cheek, and it was not, for example, used in a sexual context.” Furthermore, as the word “t**t” written in full without an asterisk in the ad was in line with the editorial style of The Sunday Times and “reflected similar use of language in the editorial sections of the newspaper”, the ASA concluded that while the ad may have been considered distasteful by some, it was not likely to cause serious or widespread offence to its audience and was, therefore, not in breach of the Code. Click here to view the full decision.

What about registering potentially offensive trade marks?

It is worth noting that just because the name of a show or product are adjudged not to be problematic from an advertising law perspective, it doesn’t mean it won’t be problematic from a trade mark law perspective.

One of the grounds for refusing registrations for a trade mark in the UK is morality as is also the case for European Union Trade marks (EUTMs). Note also UK trade mark law has, over the years, successfully been amended via EU Directives transposed into English law and aimed at approximating EU countries’ laws relating to trade marks, although query how the position will start to diverge in this post Brexit world.

As such, under s.3(3)(a) of the Trade Marks Act 1994 “a trade mark shall not be registered if it is … contrary to public policy or accepted principles of morality”.

As per the UK trade mark registry’s manual of practice, they do not consider their role to be an “arbiter of morals”. The bar is quite high and use of the trade mark in question would need to “cause not just offence but outrage for an identifiable sector of the public” (either a high degree of outrage amongst a small identifiable groups or a lesser degree amongst a larger section of the public) “e.g. strongly offensive language (swear words) or maybe a mark which includes the misuse of religious symbols”.

The nature of goods and services is also part of the equation e.g. the registry considers ‘SCREW YOU’ would be problematic for most goods and services but not goods sold to adults via sex shops.

Similarly, an attempt to register 'TINY PENIS' for clothing was rejected back in the early 2000s.

Takeaways

The premise of the ASA’s rule on harm and offence is, as stated in the preface is that marketers must be mindful of the “prevailing standards in society” as well as context of where a marketing communication is likely to appear in order to minimise the risk of causing harm or serious or widespread offence. As such it is always worth documenting this assessment and the basis for such a decision in the event a challenge is raised. In our experience, being able to share clear evidence and acting quickly in the face of a potential ASA complaint gives the best chance of defending one.

Similarly with trade marks, making a thorough assessment of what arguments can be made to refute any morality challenges will be time well spent. It would be interesting to see if the TINY PENIS decision would go the same way in 2023. Certainly, in recent years, we have seen objections to and attempts to revoke trade marks perceived to relate to swear words refused, which potentially suggests a move towards a more liberal position.

It is also interesting that we are starting to see more swearing in society. Note for example an article in the FT back in October last year “In praise of swearing” which documented all the public swearing taking place in the political sphere and those commentating on it (albeit in times where a lettuce survives longer than a Prime Minister you can see why swearing might have been felt more justifiable than normal).

The Committees of Advertising Practice (“CAP”) issued new guidance in August 2022 titled “how to avoid the ASA cursing a blue streak” aimed at clarifying when swearing or allusions to swearing in ads is acceptable. The new guidance is reflected in the ASA’s decision here as it emphasises the importance of context in assessing when swearing is appropriate and in compliance with the Code. For information on this and other recent advertising trends covering the “social” side of ESG, you can view our recent article on the topic here.

One final key point to leave you with - whilst a dated case now having been decided in 2001 there is nevertheless an interesting paragraph from the TINY PENIS case comparing advertising rules with trade mark law which is still relevant to note. Essentially, because ads can be targeted at particular audiences, whereas a registered trade mark in theory can be used in any medium in any public place, the considerations and decisions in an advertising context e.g. this positive outcome relating to the Dawn French show are unlikely to be of much assistance in assessing the potential response from the UK trade mark registry on registrability of the same advertising line/product, service or show name as a trade mark:

"This does not mean that an adjudication by the Advertising Standards Authority that a particular complaint is not to be upheld means that an equivalent trade mark should be registered or vice versa. Different considerations may apply. A trade mark can be used in any medium in any public place. An advertisement may be limited to a particular medium at a particular time and directed to a particular audience. I therefore do not believe that any great assistance is likely to be obtained from adjudications of the Advertising Standards Authority and certainly I do not see that any assistance can be obtained in reaching a decision in this case “ (paragraph 38).