Continuing the discussion based on empirical data around the absolute ground of refusing to register the mark for being obscene or scandalous, in Part II of their post Prof. M P Ram Mohan, Aditya Gupta, and Vijay V Venkitesh highlight the inconsistencies in the administration of Section 9(2)(c) objections by the Trade Marks Registry using empirical evidence. 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. Those who are interested in reading more about this, can refer to this study by the authors titled “An Empirical Analysis of ‘Scandalous’ and ‘Obscene’ Trade Marks in India”.
(Disclaimer: As may be obvious, due to the subject matter, potentially offensive text may be present in the blogpost).
Part II- An Empirical Analysis of ‘Scandalous’ and ‘Obscene’ Trade Marks in India
By Prof. M P Ram Mohan, Aditya Gupta, and Vijay V Venkitesh
To highlight and underline how Registry applies the bar against scandalous and obscene marks, we rely on the foundational work of a previous study conducted by the authors. Employing a purposive sample, the authors demonstrated how the ideal interpretation of Section 9(2)(c), does not find reference in its administration. Building on these initial insights, the present study presents a comprehensive, data-driven analysis of how morality-based trademark objections are administered. A review of the authors’ dataset comprising of the 140 examination reports and their corresponding prosecution records reveal that there are no identifiable trends in the Registry’s use of Section 9(2)(c), and that there are no consistent strategies which can be employed by an applicant to navigate the bar against scandalous and obscene marks.
To demonstrate the findings from the dataset, the authors have adopted the methodology proposed by Beebe and Fromer, on morality-based proscriptions in American Trademark Law. In their study, which was also filed as an Amicus Brief before the United States Supreme Court, provide evidence of the inconsistency in the administration of Section 2(a) of the American Trademark Act, which prohibits the use of ‘immoral’ and ‘scandalous’ marks. They provide three classes of evidence, which have been translated in the Indian context by the present study.
When Morality Clashes with Similarity
In examining the examination reports that identify objections under Section 9(2)(c), the present study underlines a paradoxical trend. In 32 objections, the Trade Marks Registry has used Section 9(2)(c) along with Section 11.
Absolute grounds, covered by S. 9, pertain to inherent qualities of a mark that may render it objectionable. Relative grounds for refusal, governed by Section 11, are attracted when the potential registration of the mark could lead to confusion in the marketplace and encroach upon the rights of other proprietors. When these two sections are cited together in an examination report, it creates a logical incoherency. How can a mark be both scandalous/obscene, while at the same time being similar to an existing, registered trademark?
For instance, in March 2019, an application for registration of the mark CHOR BAZAR (Application No. 4134601) was filed in reference to services related to hotels and resorts (Class 43). The mark was objected to under Section 9(2)(c). However, the Examiner suggested that the mark was confusingly similar to the mark CHOR BIZARRE (Application No. 2048839) which was already registered. Interestingly, when the cited mark, CHOR BIZARRE, was examined in 2012, no objections under S. 9(2)(c) were raised.
A similar treatment can be witnessed in reference to the mark DICKS applied in reference to beverage and food essentials (Application No. 5285293, Class 30). Using the concomitant objections under Section 9(2)(c) and Section 11, the Examiner suggested that the applied for mark was similar to the mark DEEKS (Application No. 4188451), which was already existing on the Register. The applications for the two marks were submitted with only a 25-month interval, and the application for DEEKS was passed without any objection under S. 9(2)(c).
In addition to the marks discussed earlier, there are another 30 instances within the 49-month period examined in this study where Section 9(2)(c) has been invoked alongside Section 11.
Applications that Overcame an Objection Under S. 9(2)(c)
Out of 140 applications that received objections under S. 9(2)(c), 38 applications (27%) managed to overcome the objection, while 47 applications were refused. The criteria used by the Registrar to evaluate responses to S. 9(2)(c) objections remain vague. This issue is compounded by the summary nature of the Registrar’s orders, which lack any explanations for their decisions.
A striking example of this ambiguity is the case of KISS MARY, applied for registration in cosmetics (Application No. 4901606, Class 3). The mark was initially objected to under S. 9(2)(c). However, in her response, the applicant did not provide any submissions regarding the morality-based objections. She mischaracterized the objection, and only provided her defence in reference to an objection under Section 11, which was not even cited in the Examination Report. In spite of this, the application was accepted and advertised in the Trade Marks Journal.
Many applicants attempt to overcome S. 9(2)(c) objections by invoking the distinctive character of their mark. However, this strategy yields inconsistent results. For example, in March 2019, when an objection under S. 9(2)(c) was raised for the mark NUDES (Application No. 4116164), the applicant claimed that the mark was a coined and invented term which has no reference to the services offered under the mark. The mark was accepted by the Registrar and was published in the Trade Marks Journal. However, when the same response, appealing to the inherent and acquired distinctives of the mark was claimed for three marks, FUCK CHARDONNAY’ (Application No. 4158615), ‘FUCK MERLOT’ (Application No. 4158636) and ‘FUCK CABERNET’ (Application No. 4158869) in reference to alcoholic preparations, the Registrar refused to waive the objections. The final order held that, “the content of the mark being “FUCK” means have sexual intercourse with (someone). I found this content of mark scandalous. The applicant failed to overcome the objections under section 9(2) (c) raised in the examination report, hence, refused.”
The Phantom Objection: When Potentially Scandalous Marks Slip Through
In our final exploration of the application of morality-based restrictions by Indian Trademarks Registry, we uncover perhaps the most perplexing trend: potentially scandalous or obscene marks that never received an objection under Section 9(2)(c) of the Trade Marks Act, 1999. There are several instances portraying this case:
- The NAKED Paradox: NAKED AND RAW COFFEE FACE WASH (Application No. 3992781) was objected to under S. 9(2)(c). However, applications for NAKED & RAW COFFEE FACE SCRUB (Application No. 3992780) and NAKED & RAW COFFEE BODY SCRUB (Application No. 3992779), which were filed on the same date as the application for NAKED AND RAW COFFEE FACE WASH faced no such objections. Interestingly enough, all three marks were applied by the same proprietor in the same class. One gets an objection, while the others proceed unhindered.
- The HASH Conundrum: Two similar marks, HASH (Application No. 4432682) and HASH LIGHTS (Application No. 5053495), were applied before the same office within a 16-month interval. The former did not receive any morality-based objections, while the latter did.
- The CHOR Confusion: CHOR BAZAR was objected to under S. 9(2)(c). While it is unclear why the mark was objected under Section 9(2)(c), the only possible reason can be the use of the word CHOR which means thief. However, similar marks, in the same class, with the constituent word CHOR have previously proceeded without any objections: MAAKHAN CHOR (Application No. 2896645), BIRYANI CHOR (Application No. 3046361), and KAAMCHOR (Application No. 3485330).
Conclusion
By creating a novel dataset and analysing the administration of Section 9(2)(c), it is clear that the present study has uncovered a system fraught with inconsistencies and complexities. While morality-based restrictions can potentially serve an important purpose, their application must be carefully balanced against the rights of free expression and the potential of trademarks to convey important social messages. It is imperative that the administration of the provision be supplanted with clear definitional standards, and the magnitude of discretion enjoyed by the Trade Marks Examiners be circumscribed.
The authors agree the intersection of legal regulation and moral standards creates inherent ambiguities, but as the idiom goes, “for without clarity, precision and consistency, the law has no predictability.” The empirical evidence examined by the present study points to the conclusion that there is little to no predictability in the application of Section 9(2)(c).