Deceptive, Scandalous and Prohibited Marks

In one line

Four marks the law will not put on the register whatever the applicant proves: the deceptive, the religiously offensive, the obscene, and the ones another statute forbids.

In the wording a student can write in an exam: section 9(2) provides that a mark shall not be registered if (a) it is of such nature as to deceive the public or cause confusion; (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (c) it comprises or contains scandalous or obscene matter; (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

Why these are different from section 9(1)

Section 9(1) protects the register and the trade. Its objection is that the sign will not work as a mark, or that other traders need it. Both objections yield to proof that the sign has come to mean one trader, which is why the proviso exists.

Section 9(2) protects the public. Its objection is not that the mark fails to distinguish but that it should not be used at all. Proof of use cannot answer it, and the proviso does not reach sub-section (2). A deceptive mark that everybody recognises is more deceptive, not less.

Clause (a): deceptive or confusing

"Of such nature as to deceive the public or cause confusion."

Note what the clause is about. It is the nature of the mark itself, not a conflict with another trader's mark. A conflict is a relative ground under section 11, and by section 11(5) only the proprietor of the earlier mark may raise the well known and passing off grounds. Clause (a) is available to anybody and to the Registrar.

The commonest kinds.

Deception as to geographical origin. SWISS for watches made in Ludhiana; DARJEELING for tea from Assam.

Deception as to the nature or composition of the goods. PURE SILK for a polyester scarf; a mark suggesting a medicinal ingredient the goods do not contain.

Deception as to quality or approval. A mark that suggests government approval or a standard the goods have not met.

Deception as to a connection. A mark that suggests the goods come from, or are licensed by, somebody they do not.

And a mark deceptive on its face may be saved by a limitation. The Registrar may accept subject to a limitation restricting the goods to those actually of that origin or composition, under section 18(4). That is a condition within section 28(2), and section 30(2)(b) then protects a defendant who uses the mark outside it.

The Khoday case is a worked illustration of the same idea after registration. Facts. In Khoday Distilleries Ltd. v. The Scotch Whisky Association, 2007 SCC OnLine Mad 1102, Khoday had registered PETER SCOT for whisky in 1971 claiming user from 1968; the Scotch Whisky Association applied in 1986 to rectify the register, saying the mark was neither distinctive nor capable of distinguishing and that the element SCOT was likely to deceive or cause confusion by suggesting Scotch whisky. Held. The Madras High Court upheld the removal: the reputation of Scotch whisky was established on affidavit and was not controverted, so in the absence of evidence to the contrary the deceptive element was made out, and the plea of acquiescence failed. Why it matters here. It shows the geographical deception objection carried through to rectification, and it shows what happens to a party that files no evidence.