The point where intellectual property and obscenity intersect: Analysis of Section 9(2)(c) of Trademarks Act, 1999 in context of the Myntra case – Part 2

The point where intellectual property and obscenity intersect: Analysis of Section 9(2)(c) of Trademarks Act, 1999 in context of the Myntra case – Part 2

Part-1 of the article can be accessed here.

Section 9(2)(c) of the Trade Marks Act, 1999 read with the Indecent Representation of Women (Prohibition) Act, 1986

The fourth point of conundrum that arises is, in Myntra’ case, the 1999 Act has to be read with the Indecent Representation of Women (Prohibition) Act, 1986 (“1986 Act”) due to a lack of definition for “scandalous or obscene matter” in the 1999 Act. The 1986 Act is applicable in the Myntra case by virtue of Sections 2(a), (b), (d), and (e) which essentially talk about the use of labels on packaging material. Section 2(c) of the 1986 Act defines “Indecent Representation of Women” as “the depiction in any manner of the figure of a woman, her form or body or any part thereof in such a way as to have the effect of being indecent, or derogatory to, or denigrating, women, or is likely to deprave, corrupt or injure the public morality or morals.” In the present Myntra’s case, as already previously argued, may seem to be indecent only after an unnecessary over-analysis of the Logo. In the case of B. Sanjay Kumar Kumar v. State of A.P., the accused persons had taken obscene photographs of the victim girl and validly charged under the 1986 Act. Further, in the case of Mr. R. Basu v. National Capital Territory Of Delhi, although the applicability of the 1986 Act was not outrightly denied, it was accepted as a possibility to be applied because it was evident from the facts of the case that the films played on the T.V. Channel were prima facie obscene and indecent in nature as it involved nude women, heavy love-making scenes and vulgar language. The aforementioned two cases make a strong point that to apply the 1986 Act, a prima facie case of indecent representation of women has to be made which, in Myntra’s case, seems to be absent because, at a prima facie glance, the alphabet “M” does not represent the legs of a woman. Thus, the 1986 Act is rendered inapplicable.

The fifth point of conundrum that may possibly arise is that of the Devlin-Hart Debate which argues whether laws should regulate morals as the latter are highly subjective from person to person. However, considering the fact that the Indian Law does regulate morals of the status quo, an analysis of the Devlin-Hart Debate in the Myntra case would be futile.

International Jurisprudence on bar of Trade Mark Registration on the ground of Obscenity.

In the case of Matal v. Tam of 2017, a Trade Mark registration under the Trade Mark Act, 1946 (“Lanham Act”) was denied because the Trade Mark – that was said to criticize anyone living or dead – was considered to be obscene. However, the U.S. Supreme Court held that such a Trade Mark registration, that is refused on grounds of viewpoints wherein one viewpoint is considered over the other, then such a bar on Trade Mark registration is discriminatory and unconstitutional in nature. Due to such nature of the bar, this particular ground of refusal for Trade Mark registration was held to be violative of the Freedom of Speech Expression under the First Amendment of the U.S. Constitution. Then, in 2019, in the case of Lancu v. Brunetti, the same viewpoint was held by the U.S. Supreme Court wherein the Court went on to observe that this bar is unconstitutional because the ground of obscenity is subjective and varies from person to person wherein those Trade Marks are refused for registration that essentially challenge the society’s subjective notion of morality. Further, in a 2020 case of Constantin Film Produktion GmbH v. European Union Intellectual Property Office, an European Court held that the title of a popular German movie “Fack Ju Göhte” (intentional misspelling of “f**k you, Goethe”) was not perceived as morally unacceptable by the German-speaking public at large. It observed that to examine whether a sign, in respect of a Trade Mark, is contrary to accepted principles of morality, a full-fledged examination of all elements specific to that case is required as to how the general public is likely to perceive the sign in the current times. Such examination must be based on the contemporary social consensus and the standards that exist in that particular day and age from the viewpoint of a common person rather than that of a sensitive person.

To the contrary position of the U.S. and the E.U., a ruling by an Israeli Court in the case of Sex Style v. Abutbul must also be considered. In this particular case, the Plaintiff was a producer of pornographic content. He sued the Defendant for copyright infringement. The Israeli Court held that although the Plaintiff’s content is covered under Copyright Protection, the same would not be extended to the Plaintiff because his content is immoral and violative of Israel’s Penal Code. Further, a Canadian Court, in the case of R v. Yang, observed that an illustration and an indication that disrespects a certain segment of the society, whether intended or not, must neither be practiced nor be condoned. Similarly, a Canadian Court upheld the views of R v. Yang in the case of Cardinal v. Cleveland Indians Baseball Company Limited Partnership and observed that the Logo and the name “Indian” may be capable of harming indigenous persons as these persons have found the name and the Logo to be offensive in nature.

Applying the aforementioned cases especially the Matal case and Constantin Film case, we comprehend that in Myntra’s case, the Logo was not perceived as morally unacceptable by the Indian society, but it was only a single complainant that had a problem regarding the Logo..

Even if the Indian public was offended at large, public morality must not be a ground for a bar on Trade Mark registration under Section 9(2)(c) because the existence of the same proves to be a violation of Fundamental Right to Freedom of Speech and Expression and is beyond reasonable restrictions. The reason why it violates Free Speech has already been proved through the U.S. case of Matal v. Tam as one viewpoint cannot be considered over the other due to the existence of subjectivity of viewpoints. Further, the reason why such bar is beyond reasonable restrictions is because such reasonable restrictions must be based on objective considerations unlike that of “obscenity” which is based on subjective considerations. Furthering this argument, the Supreme Court, in the Directorate General of Doordarshan case, held that: “[T]he purposeful omission of the definition of obscenity has led to attack of Section 292 of the Indian penal Code as being too vague to qualify as a penal provision.” This essentially means that due to the purposeful omission of a definition for obscenity by the Indian Legislature, there exists a high probability of the “arbitrary use” of this provision as it grants broad discretionary regulatory powers. This is because “obscenity” will be subject to variable interpretation which, in turn, leads to a variable application of “reasonable restrictions.” However, in reality, the application of reasonable restrictions must have a certain definite degree of uniformity and objectivity – to ensure effective and efficient delivery of justice – that appears to be devoid while adjudicating on matters related to “obscenity.”

Furthering the aforementioned argument for removal of “obscenity” as a ground for bar on Trade Mark registration, the case of Maqbool Fida Husain v. Raj Kumar Pandey & Ors. holds of paramount importance as the Delhi High Court held that: “A liberal tolerance of a different point of view causes no damage. It means only a greater self-restraint. Diversity in expression of views whether in writings, paintings or visual media encourages debate. A debate should never be shut out.” This judgment supports the Tolerance theory because the judgment and the theory essentially argue that the opinions, actions, or practices that are considered wrong, must not be prohibited or constrained but should either be conditionally accepted or tolerated through non-interference. The judgment also supports the Market Place of Ideas theory because the judgment and the theory argue that if one kind of speech is disfavoured, then Free Speech is placed at a disadvantage. If in an alternate scenario where such disfavouring was not done, the individuals would be in an inclusive place to freely and responsibly express themselves and determine their individuality in the society. Therefore, taking the support of the aforementioned judgment and theories, “obscenity” must be removed as a ground wherein failure to do the same acts contrary to the aforementioned judgment and theories because “obscenity”, as a ground for bar on Trade Mark registration, leads to an encroachment on Free Speech that should, in reality, as observed in the Cleveland Indians case, be subjected to discussion and debate in the society rather than in Courts. In finality, when we analyse the Proposed Trademark Manual for Comments, it states that: “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 will be appropriate.” It is pertinent to note that an objection would still not be appropriate even if it undermines family or social values because as earlier argued, such supposed “undermining” must be subjected to discussion and debate in the society.

Conclusion

Myntra’s case is a peculiar one because at a prima facie level, the Logo “M” is merely an alphabet in the English language. However, it is only upon over-scrutiny of the Logo that it might be perceived as a woman spreading her legs. The problem lies in the fact that even if it is a woman spreading her legs, it must not necessarily be associated to a sexual gesture as such default association indicates the existence of a misguided ideology. Further, even if the spreading of legs was “nudity” and for a sexual purpose, it must not necessarily be muddled with “obscenity” because of the progressing dynamics of the Indian society where, in today’s times, nudity is gaining acceptance as an art in India and must not be tied to sex.

As mentioned in the Proposed Trademark Manual for Comments, in the assessment of a Trade Mark, the Examiner is mandated to be objective and not subjective. However, the same being enforced is not possible as of now because this Manual is only a draft, and thus, it is of quintessence importance to comprehend that a Logo redesign and fresh filing of Myntra’s Trade Mark just gives leeway for new, subjective objections like that of “scandalous or obscene matter” to come in which, in turn, proves to be counter-productive to Myntra or other brands which would have to increase expenditure on rebranding, paying of damages, rebuilding damaged goodwill, and other relevant factors.

Revision of Myntra’s Logo seems to be an unnecessary step because the nature of the complaint that has been raised seems hypersensitive. The very damage control methodology adopted by Myntra displays their attitude in the public as fault-based which, in turn, gives an impression that they have wronged society. However, had Myntra taken a breather and a step back wherein they carefully consider the implications surrounding this controversy, the possibility that this complaint is a gross overreaction would have emerged.

The Myntra controversy arose at the heart of our discussion: lack of definition for “obscene and scandalous matter” under Section 9(2)(c) due to the Legislature’s failure to provide a definition for the same. As previously argued, due to the lack of such a definition, there will be varying degrees of interpretation for “obscene and scandalous mater” given by the Indian Courts. Even if a standard definition was provided by the Indian Legislature, it would be contrary to the idea of Free Speech, Reasonable Restrictions, Tolerance Theory and Market Place Ideas Theory as argued earlier. Thus, removal of “obscene and scandalous matter” as a ground for bar on Trade Mark registration under the 1999 Act seems to be an appropriate solution. Apart from that, another possible solution that Myntra could have adopted and other brands, if faced with similar situations, may adopt in future, would be to explain the craftsmanship that had gone behind their Logo in a manner similar to that of PepsiCo who had given a detailed breakdown of their Logo and the social considerations that went behind it.


This is the part-II of article authored by Pushpit Singh, student at Symbiosis Law School, Hyderabad.

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