The “CHUTIYARAM” trademark controversy has recently made headlines and with the Registry playing limbo, let’s take a deep dive into the absolute grounds of refusal as envisaged in the Trade Marks Act.
Here’s a quick summary of all that has happened:
- In March 2025, a trademark application for the word “CHUTIYARAM” under Class 30 was accepted & advertised by an Examiner stating that the applied mark is for a combination of two arbitrary words “Chuti” and “Ram”. The order also observed that none had appeared for the applicant despite 4 hearings being assigned for the same.
- 2 weeks after its acceptance, the Registry withdrew the acceptance citing an error on their behalf and stated that the applied mark would be subject to objections under Section 9 & 11 of the Trade Marks Act.
- The applicant in its response stated that this withdrawal was not based on any legal justification but due to undue media interference.
- It further went on to state that the applied mark consists of two distinct words “Chutiya” (derived from “Chutti”, meaning a sacred hair lock) and “Ram” (a revered religious name associated with Lord Rama) and that the term “CHUTIYARAM” in its entirety, conveys a deeply spiritual and cultural essence.
- The matter is ready for a Show Cause Hearing.
This application may test the confines of Sections 9(2)(b) & (c) of the Trade Marks Act that have been reproduced below for quick reference:
a mark shall not be registered as a trade mark if –
“(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”
Analysis in terms of Section 9(2)(b) –
While it can be very difficult to ascertain whether something hurts the religious susceptibilities of any class or section, the word “likely” proves to be a vital addition. A bare reading suggests that mere likeliness of causing hurt to the religious susceptibilities of any class or section may be enough to render the application liable for refusal.
The Draft Manual of Trade Marks, Practice and Procedure by the Central Government published on 10th March 2015, states that:
“It is a common trade practice in India to use names and pictures of Gods and Goddesses or religious symbols as trademark. Accordingly such use per se is not regarded by the public as offending religious sentiments of class or section of public. However, such use in relation to certain goods may offend the religious sentiments of the people. For example, use of names / device of deities or religious heads on footwear will be considered distasteful and will be open to objection.”
It further goes on to state that:
“Certain names and pictures of Gods, Goddesses 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.”
This includes: Words / Device / Colourable imitation of (i) Lord Buddha, (ii) Shree Sai Baba, (iii) Sri Ramkrishna, (iv) Swami Vivekananda, (v) The Holy Mother alias Sri Sarada Devi, (vi) the 10 Sikh Gurus, (vii) Name and Picture of Lord Venkateshwara and/or Balaji; and (viii) Name and Picture of Chhatrapati Shivaji Maharaj.
A similar situation arose in Sri Meenakshi Tamil Nadu Appln. [1976 IPLR 144], wherein a trade mark consisting of the picture of Goddess Meenakshi registered for fertilizers and manure mixtures was expunged on the ground inter alia that it offended against S.11(d) of the 1958 Act i.e. similar to S.9(2)(b) of the current act.
Analysis in terms of Section 9(2)(c) –
It is pertinent to note at this juncture that The Draft Manual of Trade Marks, Practice and Procedure states on page 60 that
“Scandalous marks are those likely to offend accepted principles of morality. A mark which on its face appears to be offensive shall be refused. In this category will fall marks which could induce public disorder, or incite the criminal or other offensive behaviour.”
This can be seen as a provision parallel to:
(i) USA’s Lanham Act, 15 USC 1052(a) which states that
“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or …”
(ii) The UK Trade Marks Act, Section 3(3)(a) which states that
“A trade mark shall not be registered if it is contrary to public policy or to accepted principles of morality.”
There are plenty of judgements that can be analysed to understand the law relating to scandalous matter and obscenity which are spread across the domain of copyright, trademarks and design law. For the purposes of this analysis, I shall only consider judgements pertaining to trademark law, as that would be most relevant.
The Applicant Mr. Erik Brunetti, applied for a trade mark “FUCT”, which was rejected on the grounds of being considered “immoral and scandalous”, following which,he brought a First Amendment challenge to the “immoral and scandalous” bar in the Federal Circuit, which invalidated the provision.
The Supreme Court placed reliance on Matal v. Tam, another landmark trademark case wherein the Lanham Act’s provision placing a bar on registration of marks that would be “disparaging” to any person, was declared unconstitutional. The essence of both the Tam & Brunetti judgements being that the respective bars by the Lanham Act are “viewpoint-based” and hence violate the First Amendment.
The Applicant Mr. Ghazilian applied for a trade mark “TINY PENIS” under Class 25 in respect of various articles of clothing which was rejected by an order passed by Ms. Janet Fowell. This order was appealed and consequently, landed before Mr. Simon Thorley Q.C. who also rejected the application albeit citing different reasoning.
Mr. Thorley Q.C., relied on the concept of “right-thinking members of the public” as mentioned in Masterman’s Design Application [1991] RPC 89 (A design case seeking registration of a doll that mimicked male genitalia) and stated that
“A right-thinking member may himself or herself not be outraged but will be able, objectively, to assess whether or not the mark in question is calculated to cause the “outrage” or “censure” that I have referred to amongst a relevant section of the public. This is the function of the Hearing Officer. The matter must be approached objectively. It does not matter whether the Hearing Officer finds the mark personally unacceptable. (Para 31)
Placing myself in the shoes of the “right-thinking” member of the public in the way I have indicated above, I have concluded that this trade mark would cause greater offence than mere distaste to a significant section of the public. The offence resides in the fact that an accepted social and family value is likely to be significantly undermined. This value lies in the belief that the correct anatomical terms for parts of the genitalia should be reserved for serious use and should not be debased by use as a smutty trade mark for clothing. (Para 49)”
While Mr. Thorley Q.C. prefers to rely on the Masterman case deeming Ms. Fowell’s reliance on Mr. Myall’s approach in the Hallelujah case [1976] R.P.C. 605 (relying on the La Marquise case [1946] 64 R.P.C. 27) overly cautious, it still warrants a discussion:
In the Hallelujah case, two tests were contrived to determine whether a mark would be “contrary to morality”
(i) The generally accepted mores of the time would have to be offended i.e. for something to be considered immoral, it has to go against what the people in that time period would consider to be so.
(ii) The registration should be likely to offend persons who might be in a minority in the community yet be substantial in number i.e. the registrar must also consider the susceptibilities of persons, by no means few in number, who still may be regarded as old-fashioned and, if he is of opinion that the feelings or susceptibilities of such people will be offended, he will properly consider refusal of the registration.
It is on the basis of these tests that Ms. Fowell stated
“I consider that use of the ordinary dictionary words TINY PENIS, when used in a proper descriptive context, are not words that would, or should, cause offence to the vast majority of persons in the UK. But the applicant seeks to use these words not in an ordinary descriptive context, but as a means of differentiating products in the course of trade. Consequently, these words could appear on signs in shop windows, on advertisement boards in public places and on labels on clothing and accessories. I can only think that such a phrase has been chosen purely as a means to appeal to only a proportion of the purchasing public, namely the market segment identified for the goods on offer. However, bearing in mind that the goods applied for are items which could be on display in public places for all members of the general public to view, I consider that the trade mark will cause offence to a substantial proportion of the purchasing public who will, without any choice, be exposed to the words TINY PENIS out of context.”
While I have not come across a clear cut trade mark judgement dealing with the interpretation of Section 9(2)(c), here are a few things to note:
(i) Myntra changed its logo back in 2021 following a police complaint alleging that its logo was offensive towards women.
(ii) As alleged in the “CHUTIYARAM” Applicant’s Written Submissions to the Registry, a few trademarks stand registered despite the possibility of being considered obscene or scandalous as envisaged in by S.9(2)(c):
BOOB – 2434248
LAUDA – 3986929
DICK’S – 1501760
LODA – 4869200
PUSSY IN BOOTS – 2056246
In all probability, the applied mark may be refused on the basis of Section 9(2)(b) alone. However, it will be interesting to see what becomes of objections relating to Section 9(2)(c).
About Author: The author Siddhant Sanghvi is an Advocate & Registered Trade Mark Attorney
