Law Relating to Obscenity in Trademarks

The Trade Marks Act, 1999

Section 9(2)(c) of the Trade Mark Act, 1999 prohibits the registration of marks that indicate or contain lewd or scandalous material. There shall be nothing incompatible with the moral standards of society. Considering cultural standards that prohibit the use, indication, or depiction of anything offensive or scandalous when selecting a mark is essential.

The trademark at issue in Ghazillian’s Trademark Application consisted of the two words “Tiny Penis” in class 25 for apparel, footwear, and headwear. The Registrar denied registration on the grounds that the mark violated prevailing moral standards.

The Draft Manual of Trade Marks

The Draft Manual of Trade Marks states the following:

• The manual defines “Scandalous marks” as those marks which are “likely to offend the accepted principles of morality”.
• A mark that is deemed prima facie to be obscene shall be refused.
• What falls within this category of marks shall be marked which could by their very nature induce public disorder, or incite criminal or other offensive behavior
• If a mark may be categorized as being merely “distasteful” then an objection u/s 9(2) (c) cannot be sustained. However, if the mark is deemed to be such that it would be deleterious to religious, family, or social values then an objection and subsequent refusal is probable.
• The outrage which may result from the usage of the mark must emanate from an identifiable section of the general populace of the country.

A mark that is deemed vulgar or racially insensitive shall not be tolerated regardless of the target audience of the goods/services which bear the trademark. However, when it comes to prospective scandalous marks, the objection to the trademark may depend on the target audience. For e.g., a mark that may be deemed scandalous will certainly face objection if it is placed on goods/services aimed toward children. However, the same mark may not be objected to if the goods/services are aimed at adults. Objections should be raised against explicit full frontal nudes and offensive (scandalous) back views.

Examples of marks that may consider objectionable under this Section –

• WHITE DOVE YOU DON’T NEED WINGS TO FLY[1]

This mark shall be contrary to public policy since the words “White Dove” are a euphemism for a drug and as such the use of this trademark would be construed as a promotion of drug use which is contrary to law and the public policy of the nation.

• SNUFF MOVIES

The Mark contains terms that hint toward pornography and as such the usage of the mark will be contrary to the public policy of India.

TESTS OF OBSCENITY

1. Hicklin Test (superseded by contemporary standards test) – The Hicklin’s test in order to determine whether a work is obscene or not proposed the interpretation of the work by isolating the alleged obscene parts of the work, severing them from the work as a whole and interpreting them in an isolated manner and determining what effect the isolated passages may have on the weakest readers such as children. Hicklin’s Test does not give comprehensive results by failing to consider a holistic perspective.
2. Test of Contemporary Standards

The test of contemporary standards states that the work must be interpreted as a whole and that the alleged obscene parts are not severable. They must be read in the overall context of the work. The standard for judging obscenity shall be that of a reasonable, prudent member of society.

JUDICIAL PRONOUNCEMENTS

• Samaresh Bose v. Amal Mitra[2] An impartial evaluation of any book, story, or article may lead a puritanical and conservative judge to declare it to be obscene. If another judge were to judge the same book objectively and from a different point of view, he or she might not find it to be obscene.
• Aveek Sarkar v. State of West Bengal[3] A photograph of a nude or semi-naked woman cannot be deemed offensive in and of itself unless it has the potential to elicit strong emotions or make explicit sexual desires clear. Depending on the specific position and setting in which the nude or semi-naked lady is shown, the image should be suggestive of a depraved mentality and intended to arouse sexual excitement in those who are likely to view it. Only sex-related items that have a propensity to excite amorous thoughts can be considered obscene, although obscenity must be assessed from the perspective of the typical person by using current social norms.
• S Rangarajan v. P Jagjivan Ram[4] The court ruled that the criteria to be used to evaluate a movie for obscenity should be from the perspective of a sensible, reasonable member of society rather than a hypersensitive human. Even if the issue involves movies, testing obscenity is the main component.

However, despite all these regulations and the vigilance of the Trade Mark Registry, certain questionable trademarks do slip through. Here is a recent example of the same:

The trademark which has been quoted is a recent one as can be ascertained by the date. The screenshot has been taken from the Trade Marks Journal. The trademark includes the word “bust” which is another word for breasts and conveniently includes a graphic image of women’s breasts in the device mark. Such a mark though may seem to be scandalous at first. However, it may as well be categorized as being merely distasteful if the remarks in the Draft Manual of Trade Marks are taken into consideration.

CONCLUSION

There is a grey area with respect to obscenity in the realm of trademark law. While there exist statutory provisions, their interpretation or application has still not been determined. There is a need for further academic research and expansion of judicial pronouncements in this area. A release of clarifications and guidelines by the CGPDTM may also help in this matter.

BY- UDAY ANAND

SYMBIOSIS LAW SCHOOL PUNE

2ND YEAR

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[1] Office of Controller General Patents, Designs & Trade Marks, Ministry of Commerce & Industries, Government of India, The Draft Manual of Trade Marks Practice and Procedure.

[2] Samaresh Bose v. Amal Mitra, [1985 SCC (4) 289]

[3] Aveek Sarkar v. State of West Bengal, [2005 (2) CHN 694]

[4] S Rangarajan v. P Jagjivan Ram, (1989) 2 SCC 574