Discussing the historical foundation of the absolute ground of refusing scandalous marks and its implementation by the Indian Trademark Registry, we are pleased to bring to you this guest post by Prof. M P Ram Mohan and Aditya Gupta. In this post, the authors highlight the historical justification behind the drafting of the provision prohibiting the registration of scandalous and obscene marks and undertake a purposive sampling of the actions taken by the Trademarks Registry against applications for such marks. Prof. M P Ram Mohan is a Professor in the Strategy Area at the Indian Institute of Management Ahmedabad and Aditya Gupta is a lawyer by training and is presently working on issues that fall at the intersection of IP law, freedom of expression, and business strategy. Those who are interested in reading more about this issue can access this paper by the authors, titled “‘Scandalous’ and ‘Obscene’ Trademark Law: Determining the scope of morality-based proscriptions in Indian Law and our other posts on the concoction of IP and morality/ obscenity, including those by Justice Gautam S. Patel and Prof. Basheer.
(Disclaimer: As may be obvious, due to the subject matter, potentially offensive text may be present in the blogpost).
Scandal and Obscene Trademarks: Determining Immoral Trademarks in Indian Law
By Prof. M P Ram Mohan and Aditya Gupta
The study and justification for trademark law are often couched in the language of economic efficiencies and its internal logic is articulated to promote informational efficiencies in the market. However, despite focusing on its economic and informational relevance, trademark law often intersects with moral considerations and impulses. The value accorded to ‘good faith’ within the statutory language and judicial interpretation of the Trade Marks Act 1999 is one of the many possible examples of how moral precepts intersect with trademark law.
This intersection is nowhere more apparent than moral exclusions from the subject matter of trademark law. These exclusions first appeared in 1875 with the UK’s Trade Mark Registration Act, which prohibited the registration of scandalous designs. Since 1875, these exclusions have entrenched themselves in global agreements like the Paris Convention and the TRIPS Agreement. These exclusions have now become universal and appear in the domestic legislations of 163 out of the 164 member states of the WTO.
However, the international instruments that empower WTO member states to legislate such exclusions do not provide any guidance on their language and subject matter. The statutory languages of domestic trademark statutes reflect this discretion, with each state giving effect to their moral standards. These proscriptions and their language transition from overt references to morality, chastity, and spiritual values to employing broader, judgment-neutral terms like ‘obscene’ and ‘scandalous.’
Since 2019, these exclusions have amassed a renewed academic and administrative interest. A potential reason for the newfound interest is the US Supreme Court’s ruling in the case of Iancu v. Brunetti. The decision dealt with an application to register the mark ‘FUCT.’ Citing Section 2(a), which prohibited the registration of scandalous and immoral marks, the USPTO and the TTAB denied registration to the mark. When the case reached the US Supreme Court, the majority expressed their concern that the provision allows the USPTO to discriminate against speech based on the ideas or opinions it conveys. Such a prohibition could potentially be used to discriminate against speech based on the ideas or opinions it conveys, and was therefore violative of the First Amendment jurisprudence.
Similar disputes have arisen within the EU, and the indeterminacy of these provisions led the EUIPO to constitute a specific project to prepare a Common Practice document, identifying the general principles for assessing the morality-based exclusions in EU trademark law.
How Indian Trademark Law Regulates Morality in Trademark Law
Unlike the US or the EU, the Indian provision, which deals with morality-based proscriptions, suffers from a unique disability. Since its implementation in 1940, there has been a lack of judicial and academic engagement regarding its scope and meaning. Section 9(2)(c) of the Trade Marks Act, 1999 prohibits registration of any mark if it comprises or contains scandalous or obscene matter. This prohibition first appeared in the Indian Trade Mark Law in 1940 as Section 8, which prohibited the registration of scandalous marks and any marks contrary to morality. Much like the entire Act of 1940, the provision was essentially a reproduction of the UK Trade Marks Act, 1938.
The Act of 1940 was replaced by the Act of 1958, which consolidated various laws relating to trademark regulation. The Act of 1958 resulted from a comprehensive review of Indian trademark laws conducted by a committee chaired by Justice Ayyangar. The Committee submitted its report in 1955, pointing out that the relevant English law, on which Section 11 in the Act of 1940 was modelled, had faced some judicial criticism (Page 35, 36). He suggested that Indian law should move away from English law and towards Australian trademark law, which, at the time, did not reference morality and only proscribed the registration of scandalous marks.
Interestingly enough, the Ayyangar Committee did not suggest using the term ‘obscene’ and rather used the terms “morality” (S. 8(b) and “scandalous marks (S. 8(c)). After the Committee’s report was submitted, the bill was referred for consultations within the business community and then to a Joint Parliamentary Committee. The JPC report on the bill, accompanied by meticulous evidence of its discussions, did not propose using the word ‘obscene’ either. Therefore, the legislative origin, interpretation, and scope of the term ‘obscene’ remained mysterious when the Act of 1958 was enacted. The situation is exacerbated by the absence of any significant Indian judicial decisions since 1940 that have provided a substantive interpretation of the exclusion.
Apart from judicial guidance, even the administrative guidance about the provision suffers from doctrinal inconsistency and incoherence. For example, the Draft Trade Marks Manual, which encapsulates the procedures and practices of the Trademark Registry in reference to the Trade Marks Act, 1999, defines scandalous marks as marks likely to offend accepted principles of morality (Page 59-61). This suggestion remains patently incorrect. As suggested by Justice Ayyangar, the current statutory language embodied in Section 9(2)(c) was adopted from Australian law. The interpretation of the term ‘scandalous’ in Australia is an objective examination and remains completely divorced from morality concerns. This position can be verified from various sources. The Australian Trade Marks Office, the Committee responsible for drafting the relevant provision in Australian law, and reports dealing with the Australian trademark law, all agree that matters of morality are inappropriate for the bureaucracy to determine and that the use of the term ‘scandalous’ relieves the registrar from the consideration of morality. Therefore, the Indian Trade Marks Manual’s explicit reference to morality in determining whether a mark is “scandalous” or not, is contrary to the legislative origin of the bar against scandalous marks and can lead to overbroad regulation.
While the manual elaborates on the term ‘scandalous,’ it remains silent on the definition of ‘obscene.’ The manual asserts a categorical prohibition on marks featuring vulgarity or racial connotations. However, it suggests that marks with obscene content may be permissible in specific contexts. Such a suggestion suffers from patent illegality. Once an objective assessment determining the ‘obscene’ nature of the mark has been confirmed, the Registrar is bound to reject the mark. And thus it would be against the scheme of the law to carve such an exception for obscene marks even after the objective assessment. Further, legal precedents make a crucial distinction between obscenity and vulgarity. The prevailing judicial standpoint emphasizes an intolerance for obscenity while allowing for potential tolerance of vulgarity in specific situations. These jurisprudential guidelines also remain absent from the manual.
Learnings from a Purposive Sample
The incoherence extends to the conduct of the Trade Marks Registry. A purposive sampling of actions of the Trade Marks Registry shows that there is no cohesive pattern in the administration of the provision:
Combined Section 9(2)(c) and Section 11 objections: In some cases, the Registry opposes trademark applications, alleging obscene or scandalous content, while simultaneously asserting the existence of identical or similar marks on the Registry, creating a paradox of objection and acceptance. This paradox is the most robust evidence of an incoherent provision application. Such combined objections were issued by the Registry in reference to the marks DICKS (Appl. No. 5285293), SEX DRIVE (1994465), and SANSKARI SEX (4344760).
Applications that overcame an objection under Section 9(2)(c): After the examination report is provided in a trademark prosecution, the next step is for the applicant to submit a reply to the report. In instances where a Section 9(2)(c) objection was raised, several responses did not address the specific objection. Despite the absence of a direct response, the Registry proceeded to waive the objection. For example, in reference to the mark BOOBS & BUDS (5335706), the applicant replied by submitting that the objection is “not sustainable and may thus kindly be waived.” The objection was waived. The Registry has accepted similar incoherent responses in reference to marks BIG BOOBS (4981217) and NANGA PUNGA (4138993).
Applications for potentially Scandalous or Obscene marks that never received a Section 9(2)(c) objections: While certain marks faced objections under Section 9(2)(c), interestingly, marks identical or closely resembling them did not encounter similar objections. For example, while the mark BAKCHODI CORNER received an objection under Section 9(2)(c), the marks BOB BAAP OF BAKCHOD, AIB ALL INDIA BAKCHOD, and TOH SHURU KARTE HAIN BINA KISI BAKCHODI KE did not receive any objections. Similar treatment can be seen in reference to the mark BIG BOOBS, BEACH BITCH, SEX-O-PLEASE, NO SEX PLEASE, SANSKARI SEX and AS-SEX. While many marks containing the constituent term, BOOBS, BITCH, and SEX faced Section 9(2)(c) objections, these particular applications proceeded without any objections.
The issue of morality in IP law may spark more academic interest than judicial review. As Prof. Farley notes, “The regulation of morality in trademark law generates more law review articles than cases.” However, in India the limited academic and judicial engagement with the provision has created a problematic lacunae. Trademarks can be powerful means of expressing political speech, however, should commercial speech be subjected to an arbitrary interpretation of morality? Further inquiry should not only assess guidelines for administering the Indian provision and its constitutionality but should also examine morality’s broader role in commercial imagery and contemporary expectations from trademark law.
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- Source: https://spicyip.com/2024/01/scandal-and-obscene-trademarks-determining-immoral-trademarks-in-indian-law.html
