Responding to Objections under Section 9(2)(c) of the Trademark Act

Responding to Objections under Section 9(2)(c) of the Trademark Act, 1999

The Trademark Act, 1999 sets out absolute grounds for refusal of trademarks under Section 9, including Section 9(2)(c), which prohibits the registration of trademarks containing scandalous or obscene matter. When faced with objections under this section, applicants must provide convincing responses to overcome the refusal of registration.

In this blog, we’ll cover the strategies for responding to objections under Section 9(2)(c), provide draft statements to be used in responses, discuss relevant court rulings, and present examples of trademarks that might face such objections. Additionally, we will provide SEO-focused elements to enhance your online visibility.

Understanding Section 9(2)(c) of the Trademark Act, 1999

Section 9(2)(c) of the Trademark Act, 1999 stipulates that trademarks shall not be registered if they contain scandalous or obscene matter. This section ensures that trademarks offending public decency, morality, or those that could be shocking to a significant section of society, are not permitted registration.

When a trademark application faces an objection under this section, it is typically on the grounds that the mark is inappropriate or offensive to the public. The applicant must show that the mark does not violate public decency standards or argue that it has acquired distinctiveness and should not be deemed scandalous in context.

Common Grounds for Objections under Section 9(2)(c)

The following are common grounds for objections under Section 9(2)(c):

1. Use of profane language – Marks that contain vulgar or offensive words may be considered scandalous.

2. Offensive symbols or imagery – Marks using images that can shock or offend a section of society.

3. Sexually explicit content – Marks involving adult content may be seen as obscene.

4. Hate speech or derogatory content – Any mark promoting hate or discrimination.

5. Inappropriate cultural references – Symbols, words, or images disrespectful of certain cultural, ethnic, or religious groups.

How to Respond to Objections under Section 9(2)(c)

When responding to objections under Section 9(2)(c), an applicant must provide a logical and legal defence to demonstrate that the trademark in question does not violate public decency or is not scandalous. Below are strategies for responding:

1. Arguing for Contextual Interpretation

Sometimes, what may seem offensive in isolation may not be so when viewed in the proper commercial or societal context. The applicant can argue that the mark must be interpreted in light of the product or service offered, where it does not offend the public.

Draft Response:

“The trademark in question, when viewed in the context of the goods/services for which it is applied, does not contain scandalous or obscene matter. The use of the term/image is common in the relevant industry and does not violate public decency.”

Supporting Case:

In Tata Tea Ltd. v. Akash Arora, the court highlighted that trademark objections should be considered within the commercial context.

2. Claim of Acquired Distinctiveness

If the trademark has been in use for a substantial period, the applicant can argue that the mark has acquired distinctiveness and is not perceived as scandalous by the relevant section of the public.

Draft Response:

“The trademark has been in continuous use for [number of years] in connection with [goods/services], and no objections have been raised by consumers or regulators. The mark has acquired distinctiveness and is not viewed as scandalous by the public.”

Supporting Case:

The Supreme Court of India in the case of Amritdhara Pharmacy v. Satya Deo recognized the acquired distinctiveness of a trademark over time.

3. Rebutting with Cultural Relevance

Some marks may be considered offensive in one culture but may not have the same meaning in another cultural or regional context. The applicant can argue that the mark is widely accepted in the cultural milieu in which it operates.

Draft Response:

“The trademark reflects a common expression in [specific culture/region] and is not considered offensive in that context. It does not violate local cultural norms or public decency.”

Supporting Case:

In Khoday Distilleries Ltd. v. The Scotch Whisky Association, the court recognized the significance of cultural context in evaluating trademark objections.

4. Arguing Non-Deceptive Nature of the Mark

Marks that are objected to under Section 9(2)(c) for being obscene can be defended by showing that they do not mislead the public in terms of quality, nature, or substance of the product or service.

Draft Response:

“The trademark does not deceive the public concerning the quality or nature of the goods/services offered. It does not contain material that could be construed as obscene.”

Supporting Case:

The court in Gillette India Ltd. v. Reckitt Benckiser held that trademarks should not be misleading but need to be interpreted in a non-objectionable context.

5. Demonstrating Social Acceptance

In cases where the public has shown no objection to the use of the mark over a period, the applicant can argue that the mark is accepted by the relevant consumers, and it does not offend any section of society.

Draft Response:

“The mark has been used in the market for a significant period and has been accepted without any objections from the public, competitors, or regulators. This demonstrates that the mark does not offend public decency.”

Supporting Case:

The Bombay High Court in ITC Limited v. Nestle India allowed a trademark objection to be overturned when public use and acceptance were demonstrated.

10 Examples of Trademarks Facing Section 9(2)(c) Objections

Here are 10 examples of trademarks that may face objections under Section 9(2)(c) and how to respond to such objections:

1. "Hell's Kitchen" for a restaurant brand

Ground for objection: Scandalous use of the word "Hell."

Response: The phrase is commonly used in the culinary industry and refers to a stressful cooking environment, not a scandalous or obscene context.

2. "XXX Sports" for a sports gear company

Ground for objection: The term "XXX" may imply adult content.

Response: In the sports industry, "XXX" refers to a size designation, which is not offensive in context.

3. "Bad Ass Coffee" for a coffee shop

Ground for objection: Use of the word "Ass" is considered obscene.

Response: "Bad Ass" is a colloquial term used to describe something strong or impressive. It has been socially accepted and is used in a playful manner.

4. "Bomb Squad" for a security company

Ground for objection: Potential promotion of violence or terrorism.

Response: The term is used in a security context, denoting expertise in defusing dangerous situations, which is not scandalous or obscene.

5. "Crazy Bitch" for a fashion brand

Ground for objection: Offensive language.

Response: The phrase has been adopted by fashion as an empowering term and is used in a non-offensive, colloquial context.

6. "Devil's Advocate" for a legal consultancy

Ground for objection: The term "Devil" may be seen as scandalous.

Response: The phrase "Devil's Advocate" is a well-known legal metaphor and is not intended to be offensive or obscene.

7. "Hot Chick" for a fast-food chain

Ground for objection: The term "Chick" may be offensive.

Response: The phrase is used in a playful context referring to chicken dishes and is not offensive in the food industry.

8. "High Times" for a magazine

Ground for objection: The term may promote drug use.

Response: The phrase "High Times" is commonly used in reference to alternative lifestyles and does not promote illegal activities.

9. "Satan’s Ride" for a motorcycle company

Ground for objection: Reference to "Satan" could be offensive.

Response: The name is a common metaphor in motorcycle culture, not intended to be obscene.

10. "Funky Bastard" for a music band

Ground for objection: Use of the term "Bastard" may be seen as offensive.

Response: The phrase is often used in the music industry in a playful or rebellious context, which is not offensive.

Conclusion

Overcoming objections under Section 9(2)(c) of the Trademark Act, 1999 requires a well-thought-out defense. By presenting arguments around context, acquired distinctiveness, and cultural acceptance, applicants can successfully rebut claims of scandalous or obscene matter. Citing relevant case law and showing how the mark is interpreted within the relevant industry or societal norms are crucial strategies.