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Relevant Definition of Mark in Trade Marks Act, 1999
Mark: The term “mark” is defined under Section 2(1)(m) of the Trade Marks Act, 1999, which includes “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” This broad definition ensures that various elements of branding, such as logos, names, and other identifiers, are covered under the scope of the Act.
Understanding Brand and Branding in India
Brand: In India, a brand represents the identity of a product, service, or company. It encompasses elements such as the name, logo, tagline, design, and overall image that distinguish it from competitors.
Branding: Branding is the strategic process of creating, managing, and promoting this identity. It involves a series of actions aimed at building a distinctive and positive image in the minds of consumers.
Marks Likely to Hurt Religious Susceptibilities
Under the Trade Marks Act, 1999, Section 9(2)(b) prohibits the registration of a trademark if it “contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.” It is common in India to use names and pictures of Gods, Goddesses, or religious symbols as trademarks. Such use per se is not generally regarded as offending religious sentiments unless it is used in a context that is considered distasteful. For example, using names or devices of deities on footwear or beef products is considered offensive and is open to objection.
The Manual of Trade Marks, Practice and Procedure by the Central Government provides a list of Marks likely to hurt religious susceptibilities, interalia:
- Words “Lord Buddha”, “Shree Sai Baba”, “Sri Ramkrishna”, “Swami Vivekananda”, “the Holy Mother alias Sri Sarada Devi”, “Balaji” or their devices and the Emblems of the Ramkrishna Math and Mission or colourable imitation thereof; or
- Names and pictures of Sikh Gurus, viz. Guru Nanak, Guru Angad, Guru Amar Das, Guru Ram Das, Guru Arjun Dev, Guru Hargobind, Guru Har Raj, Guru Harkrishnan, Guru Tegh Bahadur and Guru Govind Singh;
- Name and picture of Chhatrapati Shivaji Maharaj;
- Name and/or picture of the deity of Lord Venkateswara and/or Balaji.
- Certain names and pictures of God and Goddess and also religious heads are prohibited from being registered as trademarks in terms of directions issued by the Central Government under section 23(1) of the Trade & Merchandise Marks Act, 1958. These directions continue to remain valid.
- Use of religious symbols (like OM) or names (e.g. Jesus) as trademarks is likely to undermine/offend religious value and sentiments. Names of Gods/Goddesses which are also used as personal names may be considered as personal names for registration purpose, unless accompanied by the device of such God/Goddess
- In Vishnu Cement v. B.S. Cement Private Ltd., for instance, the word “VISHNU” was granted registration in the absence of any device of Lord Vishnu, associated with the word mark, by associating the word mark with a personal name, and not a religious sentiment.
- However, such usage in relation to certain goods or services may offend the religious sentiments of certain sections of society. In these situations, such marks would fall within the ambit of marks not eligible for registration. in Amritpal Singh v. Lal Babu Priyadarshi the mark RAMAYANA was found incapable of registration. The case acted as the first instance of a blanket restriction being imposed on the registration of the name of a religious book by interpreting the provisions under Section 9(2)(b) of the Trademarks Act, 1999, stricto sensu. Interestingly, in all these cases, the courts have cited the need to prevent the monopolisation of names of gods and religious symbols and figurines, adding that these words lack enough distinctiveness and merely qualify as common words, which should not be allowed for registration.
- Religious susceptibility: The phrase “likely to hurt religious susceptibilities” in Section 9(2) of the Trade Marks Act requires clear guidelines for proper interpretation. Courts, while handling such cases, have not established specific criteria to determine what constitutes “religious susceptibilities” and what might offend them. Without these guidelines, courts have often prohibited trademarks that include the names of deities or holy books, potentially misinterpreting the law and interfering with the rights of the parties involved.
Marks Containing Scandalous or Obscene Matter
Section 9(2)(c) of the Trade Marks Act prohibits registration if the mark “comprises or contains scandalous or obscene matter.” If a mark is merely distasteful an objection under Section 9(2) (c) is unlikely to be justified whereas if it would cause outrage or would be likely significantly to undermine religious, family or social values then an objection must be raised.
The outrage must be amongst an identifiable section of the public. In order to make this assessment, the Examiner must be objective, not subjective. Objectivity means being neither out of date nor a trend setter; not setting some kind of moral standard but also not being insensitive to public opinion. The dividing line is to be drawn between the mark which amounts only to dis-taste and the mark which would justifiably cause outrage or would be the subject of justifiable censure as being likely to undermine current religious, family or social values.
Examples of marks which may considered to be objectionable under this Section –
WHITE DOVE YOU DON’T NEED WINGS TO FLY – Contrary to public policy as it would be seen as promoting drugs (White Dove is a nickname for a type of drug).
SNUFF MOVIES – Obscene and scandalous, promoting pornography and murder. This is contrary to accepted principles of morality in view of bad language.
Prohibition Under Emblems and Names (Prevention of Improper Use) Act, 1950
Section 9(2)(d) of the Trade Marks Act bars registration as a trademark if its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. Section 4(b) prohibits the registration of any trademark or design that bears any emblem or name the use of which is in contravention of Section 3 of the Act. Section 3 explicitly prohibits the improper use of certain emblems and names listed in the Schedule to the Act. Additionally, Section 8 empowers the Central Government to amend the Schedule by adding or altering the names and emblems specified therein.
Item 7 of the Schedule to the Emblems and Names (Prevention of Improper Use) Act, 1950, explicitly includes:
“Any name which may suggest or is calculated to suggest –
Patronage of the Government of India or the Government of a State
Connection with any local authorities or any corporation or body constituted by the Government under any law for the time being in force.”
The Central Government has issued specific directions to prohibit the registration of certain trademarks under Section 23(1) of the Trademarks Act, 1999. The following trademarks are therefore not registrable:
Words and Emblems Related to International and National Institutions:
- “UNITED NATIONS”, letters “UNO”, and the official Seal and Emblem of UNO.
- The British Royal Arms, The British Crown, or the Union Jack, or any colourable imitation thereof.
- Letters “I.S.O.” if applied by any person or body other than the Indian Standards Institution.
- Words “ASHOK CHAKRA” or “DHARMA CHAKRA”, or the device of Ashoka Chakra or any colourable imitation thereof.
- Words “National”, and “Panchsheel”.
- Government Property:
- The device of an arrow on the ground that is the property of the Government of India.
- Representation of the Election Symbol of any political party in India.
- Specific Letters and Abbreviations:
- Letters “N.C.L.”
- Letters “I.S.I.” if applied by any person or body other than the Indian Standards Institution.
- Letters “I.C.S.”
- Letters “N.P.L.”
- Letters “IR”
- Letters “STC”
- Names and Pictures of Religious and Cultural Figures:
- Words “Lord Buddha” or the device of Lord Buddha or any colorable imitation thereof.
- Words “Shree Sai Baba” or the device of Shree Sai Baba or any colorable imitation thereof.
- Words “Sri Ramkrishna”, “Swami Vivekananda”, “the Holy Mother alias Sri Sarada Devi”, or the devices of Sri Ramkrishna, Swami Vivekananda, the Holy Mother alias Sri Sarada Devi, and the Emblems of the Ramkrishna Math and Mission or colorable imitation thereof.
- Names and pictures of Sikh Gurus: Guru Nanak, Guru Angad, Guru Amar Das, Guru Ram Das, Guru Arjun Dev, Guru Hargobind, Guru Har Raj, Guru Har Krishnan, Guru Teg Bahadur, and Guru Govind Singh.
- Name and picture of Chhatrapati Shivaji Maharaj.
- Name and/or picture of the deity of Lord Venkateswara and/or Balaji.
The Advertising Code prescribed under the Cable Television Network Rules, 1994 (Rule 7)
7. Advertising Code. – (1) Advertising carried in the cable service shall be so designed as to conform to the laws of the country and should not offend morality, decency and religious susceptibilities of the subscribers.
(2) No advertisement shall be permitted which-
(i) derides any race, caste, colour, creed and nationality;
(ii) is against any provision of the Constitution of India.
(iii) tends to incite people to crime, cause disorder or violence, or breach of law or glorifies violence or obscenity in any way ;
(iv) presents criminality as desirable;
(v) exploits the national emblem, or any part of the Constitution or the person or personality of a national leader or a State dignitary;
(vi) in its depiction of women violates the constitutional guarantees to all citizens. In particular, no advertisement shall be permitted which projects a derogatory image of women. Women must not be portrayed in a manner that emphasises passive, submissive qualities and encourages them to play a subordinate, secondary role in the family and society. The cable operator shall ensure that the portrayal of the female form, in the programmes carried in his cable service, is tasteful and aesthetic, and is within the well-established norms of good taste and decency;
(vii) exploits social evils like dowry, child marriage.
(viii) promotes directly or indirectly production, sale or consumption of-
(A) cigarettes, tobacco products, wine, alcohol, liquor or other intoxicants; […..]
[Provided that a product that uses a brand name or logo, which is also used for cigarettes, tobacco products, wine, alcohol, liquor, or other intoxicants, may be advertised on cable services subject to the following conditions that-
(i) the story board or visual of the advertisement must depict only the product being advertised and not the prohibited products in any form or manner;
(ii) the advertisement must not make any direct or indirect reference to prohibited products;
(iii) the advertisement must not contain any nuances or phrases promoting prohibited products;
(iv) the advertisement must not use particular colours and layout or presentations associated with prohibited products;
(v) the advertisement must not use situations typical for promotion of prohibited products when advertising the other products:
Provided further that –
(i) the advertiser shall submit an application with a copy of the proposed advertisement along with a certificate by a registered Chartered Accountant that the product carrying the same name as cigarettes, tobacco products, wine, alcohol, liquor or other intoxicants is distributed n reasonable quantity and is available in a substantial number of outlets where other products of the same category are available and the proposed expenditure on such advertising thereon shall not be disproportionate to the actual sales turnover of the product:
(ii) all such advertisements found to be genuine brand extensions by the Ministry of Information and Broadcasting shall be previewed and certified by the Central Board of Film Certification as suitable for unrestricted public exhibition and are in accordance with the provisions contained in sub-clause (i) to (v) of the first proviso, prior to their telecast or transmission or retransmission
(3) No advertisement shall be permitted, the objects whereof, are wholly or mainly of a religious or political nature; advertisements must not be directed towards any religious or political end.
(3A) No advertisement shall contain references which hurt religious sentiments.
(4) The goods or services advertised shall not suffer from any defect or deficiency as mentioned in Consumer Protection Act, 1986.
(9) No advertisement which violates the Code for self-regulation in advertising, as adopted by the Advertising Standards Council of India (ASCI), Mumbai for public exhibition in India, from time to time shall be carried in the cable service.
In India, branding must be done carefully to avoid offending political or religious sentiments. The Trade Marks Act, 1999, the Emblems and Names (Prevention of Improper Use) Act, 1950, and the Cable Television Network Rules, 1994, all work together to stop the use of trademarks that could hurt religious feelings, are scandalous or obscene, or suggest a connection with the government. These laws make sure that brands do not misuse religious, political, or national symbols. To keep public trust and follow the law, brands should avoid using any elements that might be seen as offensive or misleading.