Part I- An Empirical Analysis of ‘Scandalous’ and ‘Obscene’ Trade Marks in India

It’s with great pleasure that we bring to our readers this 2 part guest post by Prof. M P Ram Mohan, Aditya Gupta, and Vijay V Venkitesh, that dives into the question of what marks are considered scandalous and obscene in India. Long term readers will know that the absence of data-driven studies in the Indian IP landscape is something that has often been lamented on the blog (here). In that light, it is wonderful to see this study that uses data to show an ambiguous standard being utilised by the Indian Trade Mark registry, further detailed out in their paper here. In Part I of the post, the authors set the context of their study by explaining the dataset created by using different examination reports, responses to the objections, oppositions and eventual grants. The authors then showcase the trend of prosecution by the Indian Trade Mark Registry of the marks objected under the above provision, in this part. Part II of their post will focus on empirical evidence to highlight the inconsistencies of the Trade Mark Registry.

Prof. M P Ram Mohan is a Professor in the Strategy Area at the Indian Institute of Management Ahmedabad. 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. Vijay V Venkitesh is a data scientist and Research Associate at IIMA. His primary focus is on trademark law and the intersection of finance and social networks. Interested readers can also refer to their previous post on the blog here.

(Disclaimer: As may be obvious, due to the subject matter, potentially offensive text may be present in the blogpost).

Part I- An Empirical Analysis of ‘Scandalous’ and ‘Obscene’ Trade Marks in India

By Prof. M P Ram Mohan, Aditya Gupta, and Vijay V Venkitesh

What defines scandal? What renders something obscene? A condom painted with your national flag, or a racial slur as a brand’s identity? These real-life cases have challenged the boundaries of trademark law and public morality. How do laws incorporate and foster a community’s moral compass while creating space for its progressive development? These questions have sparked endless debate and disagreement. In everyday conversations, the line between the prurient and the decorous often blurs into an “I know it when I see it” standard.

In a previous post, the authors highlighted an absolute lack of judicial, academic, and administrative engagement with the meanings of ‘scandalous’ and ‘obscene’ in the context of trademark law. Given this absence of clear guidelines, it is likely that the Indian Trade Marks Registry could be applying a similar ambiguous standard when enforcing the prohibition against scandalous or obscene content as stated in Section 9(2)(c) of the Trade Marks Act, 1999.

An examination of a purposive sample revealed the vague and inconsistent nature of the standards used by the Trade Marks Registry. Building on this premise, the authors a novel dataset comprising of 1.6 million trademark applications filed across five years. The dataset was then leveraged to empirically examine the administration of Section 9(2)(c) by the Trade Marks Registry. The results from the authors’ analysis and the evidence of ambiguities in administration of the provision have been discussed in a recent study. This post summarises the findings of the authors’ research. 

Open Data in Trademark Research

Bulk datasets, like the one created by the authors, play a crucial role in enabling comprehensive, data-driven research. These datasets serve as the backbone of a comprehensive review of trademark administration systems, enabling the examination of trends, predictability and potential biases in the application of trademark provisions. The availability of these trends in other jurisdictions, such as the United States of America, Canada and Australia, have enabled the examination of issues such as trademark congestion, the impact of legal representation on registration success, and the effects of policy changes on trademark applications. This helps in transparency in the trademark registration process, allowing for public scrutiny and accountability.

Authors’ Dataset

In 2015, The Office of the Controller General of Patents, Designs and Trade Marks (CGPTDM) in India completed the digitisation of their trade mark records. All the details of trade mark applications, including their prosecution history and current status, have been made available to the general public, free of cost, through IP India’s website, www.ipindia.gov.in. However, this digitised data has not been converted to bulk datasets, severely limiting empirical scholarship on the functioning and efficacy of trademark systems in India.

Recognising this critical void, the authors created a novel dataset by downloading and collecting details about examination reports from the internet. This exercise was conducted between October and December 2023, and data about 1.6 million applications filed between June 2018 and July 2022 were collected. The database was then auto-coded to identify examination reports that contained the terms, ‘9(2)(c),’ ‘scandalous,’ ‘obscene’ or any combination of these terms. This effort revealed that between July 2018 and July 2022, 140 applications were objected to under the mandate of Section 9(2)(c). Further details were hand-coded to identify the goods description, filing office, proprietor’s name, etc.

Descriptive Statistics

For the sake of general context, it should be noted that the number of trademark applications filed each year has been steadily increasing. In the year 2000-01, 84,275 applications were filed for registration. This number increased to 466,580 in 2022-23, effectively quintupling over the course of 22 years. The rate of applications has effectively been increasing at the rate of 8.66% annually.

Coming to the dataset relevant for the present study, among the 140 applications that received an objection, only 125 applicants filed responses to the objections raised in the Examination Report. Amongst the 125, 30 applications remain objected, and one has been withdrawn. In due time, the 30 applications currently under objections would either be Withdrawn, Refused or Accepted. Of the remaining 95 applications, 47 were Refused, while 38 were Accepted. Amongst the 38 Accepted applications, 10 are open for Opposition, 3 have been Opposed, and 25 have been Registered. The following figure explains the progression of applications which received an objection under Section 9(2)(c).

Studying the trends for the use and administration of Section 9(2)(c) across temporal distributions presents the issue of dealing with the overall increase in the number of absolute applications filed each year. As discussed previously, the number of trademark applications filed each year has been increasing at the rate of 8.66% annually. The following figure redresses this issue and examines the number of objections issued, waived and sustained in intervals of 100,000 applications. 

The next figure compares two percentages for each class: the percentage of total applications filed and the percentage of applications that received an objection under Section 9(2)(c). The first percentage is calculated by dividing the number of applications in a class by the total number of applications. The second percentage is calculated by dividing the number of objections mentioning Section 9(2)(c) in a particular class by the total number of such objections. We find unevenly high rates of objections for certain trademark classes: Class 25 (Clothing and footwear) and Class 3 (Perfumes and cosmetics). While the potential reasons for these trends need to be explored in further detail, it can be argued that since the examination within Section 9(2)(c) warrants a subjective enquiry, taking into account the goods in reference to which the subject mark is applied, it is possible that the scrutiny applied in reference to these classes is more stringent when in comparison with other classes.

The proportion of total objections issued by each office and the absolute number of applications submitted for prosecution before that office reveals that while other offices behave consistently, the Chennai office has issued a comparatively lesser number of morality-based objections.

This part of the post introduced the reader to the author’s dataset along with their previous study on the subject. It also provides some general statistics which help in setting the framework and providing the context for the study. In the next part, the authors provide empirical evidence to highlight the inconsistencies in the administration of Section 9(2)(c) by the Trade Marks Registry.