Registration of ‘immoral or obscene marks’ under the Trademark Law is prohibited in India as per Section 9(2)(c) of the Indian Trademarks Act. Scandalous marks are ones that are likely to violate moral standards. Marks that may cause public unrest or promote criminal or other offensive behaviour also fall under this category.
Acquisition of a trademark differs from how other intellectual property, such as copyright or patents, may be legally protected. A trademark cannot be taken in its whole (by itself) since its nature prevents it. A trademark is something that only exists in relation to another economic activity. This notion stems from the history of trademark law, at least in part because it evolved as a method to identify a businessperson's goods. It was evident that a trademark would have no use or would not even have an existence in the absence of the sale of products.
One of the main aims of trademark law is to prevent consumer confusion, deception, and misunderstanding about the origin of goods. One of the most important aspects of trademark law is public protection. An immediate byproduct of prevention of confusion and protection of the public, however, is that the business people who have adopted trademarks acquire a means of protecting their goodwill. Thus, trademark law tends to protect both sellers and purchasers.
The need of ‘distinctiveness’ for a mark is a well-defined trademark registration policy. Trademark rights that lack distinctiveness, whether based on the mark's intrinsic character or developed by the owner through marketing, are prone to failure. Naturally, a trademark must be distinctive if it is to serve the function of identifying the origin of goods and thus avoid confusion, deception, or mistake. Similarly, a trademark must be recognisable, identifiable, and distinct from other marks if it is to protect purchasers from confusion over what they are purchasing.
The trademark law's distinctiveness criteria contain two themes. It allows a first user to complain to a later user on the grounds that the later user's mark is too similar to the first user's mark and so is not distinctive. The second theme is a policy opposing market dominance of common or descriptive phrases, akin to the policy against trademark ownership in its entirety. To avoid preemption of these terms and their removal from the public domain, a mark must be distinctive, especially as all competitors may require access to these words, terms, symbols, or other devices to identify their goods.
Section 9(2)(c) of the Indian Trademarks Act (TM Act) prohibits the registration of a trademark that consists of ‘scandalous or obscene matter’. Scandalous marks are ones that are likely to violate moral standards. A mark that looks to be offensive on the surface will be rejected. Marks that may cause public unrest or promote criminal or other offensive behaviour will fall under this category. The objection's application must be determined objectively and without prejudice.
An objection under Section 9(2) (c) is unlikely to be valid if a mark is just distasteful, but it must be raised if it would cause anger, public unrest, or would seriously damage religious, family, or social values. The fury must be felt by a specific segment of the people. The Examiner must be objective, not subjective, in order to make this assessment. Objectivity entails not being out of date with the current trends pertaining to what sells in the market as well; it also entails not imposing a moral norm while remaining responsive to popular opinion. A vulgar mark may not be allowed on any goods or services, and a racially insulting mark will be rejected regardless of the goods or services.
An objection will be certain where the goods or services are primarily or equally oriented at children, such as toys, games, confectionery, soft drinks, and so on, where an obscene or crude mark is concerned. There may be less need for concern with commodities designed for adults, such as alcohol and contraceptives. Each case must be decided based on its particular set of circumstances. The line must be made between a mark that merely causes distaste and a mark that would generate reasonable outrage or be the topic of legitimate condemnation for undermining present religious, family, or social norms.
Unlike the prohibition against registering surnames and geographical terms, the prohibition against registering immoral, scandalous, and similarly offensive marks is unaffected by acquisition or secondary meaning - at least not for as long as the mark is offensive. Even if an offensive mark acquires so much secondary meaning that it loses its offensiveness, it will still be prohibited, as in the case of a word that just needs to be reduced to something less than main importance. Because the only form of use that may make an offensive mark registrable is one that fundamentally changes the mark's meaning, there's a slim chance that an offensive mark will ever become registrable.
The case of Maqbool Fida Husain v. Raj Kumar Pandey is crucial in further discussing the removal of "obscenity" as a cause for the Trade Mark registration bar. The Delhi High Court in the case had held that a liberal tolerance of differing points of view has no negative consequences. It just entails more self-control. The diversity of viewpoints expressed in literature, paintings, and other visual media fosters debate. A discussion should never be shut down. Because the judgment and the theory fundamentally suggest that the beliefs, activities, or practices that are regarded wrong should not be forbidden or restrained, but should instead be conditionally accepted or tolerated through non-interference, this judgment supports the Tolerance theory.
In 2017 in the United States, a trademark registration under the Trade Mark Act, 1946 (Lanham Act) was denied in the case of Matal v. Tam because the Trade Mark – which was alleged to condemn anyone alive or dead – was deemed obscene. The United States Supreme Court in the case ruled that a Trade Mark registration that is denied on the basis of perspectives, where one opinion is prioritised over the other, is discriminatory and unconstitutional in nature. Due to the nature of the bar, this particular cause of rejection for Trade Mark registration was found to be in violation of the First Amendment's Freedom of Speech Expression. Then, in the case of Lancu v. Brunetti, the United States Supreme Court held the same position, stating that this bar is unconstitutional because the ground of obscenity is subjective and varies from person to person, and that Trade Marks that essentially challenge society's subjective notion of morality is refused registration.
Given that the legality of the content has to be determined in India, the main issue would come if legal institutions attempted to blur the line between obscenity in terms of trademark registration as a criminal crime under the Indian law and their own morality and public policy beliefs. Public morality cannot be used as a basis for prohibiting Trade Mark registration under Section 9(2)(c) since its presence demonstrates to be a breach of the Fundamental Right to Freedom of Speech and Expression and is beyond acceptable limits. The tricky part is determining these recognised norms of morality because there is no definition to refer to.