Discrimination As A Ground For Refusal Of Trademark Registration Vis-À-Vis The Fair And Lovely Case

Trademarks are essential in ensuring brand performance and consumer certainty. Despite this fact, there are certain grounds which when practised by brands and companies could lead to the refusal of registration of their trademarks. One such ground that has not gained much acclaim in the Indian jurisprudence is “Discrimination”.

On July 2nd, 2020, the FMCG giant Hindustan Unilever Limited (HUL) announced a rebrand that marked a revolutionary step into fighting colorism. Its popular brand “fair & lovely”, a skin-lightening product, used by Indian consumers as early as 1975 was renamed “glow & lovely”, dropping “fair” after widespread criticism. However, this was only half the battle as the current trademark regulation still allows for registration and protection of such discriminatory trademarks. Under section 9(2) of the Trademarks Act, 1999, the absolute grounds for refusal of registration are (i) marks that either deceives or confuses the public, (ii) marks that are likely to hurt religious sentiments, (iii) marks that are obscene in nature and (iv) marks that are prohibited under the Emblems and Names (Prevention of Improper Use) Act. 1950. The article provides an outline so as to determine the need for prohibiting discriminatory trademarks in the light of Article 15 of the Constitution, the grounds for its determination along with drawing inspirations from American jurisprudence.

Backdrop and Critique of the Existing grounds for refusal of a Trademark Application-

Domestic Trademark Applications:  In light of the Fair and Lovely case, what can be divulged is that factors such as discrimination and Intellectual Property Rights do not exist in separate boats. The existing trademark of Fair & Lovely was accused of gender discrimination and racial prejudice on the basis of color by Emami. HUL, in response to the marked criticism, renamed the brand altogether.

As afore-mentioned, Section 9(2) underlines the absolute grounds for refusal of a mark wherein discriminatory marks has not yet paved its way in. It is only “fair” if discrimination is added another ground for refusal of trademark considering that it is violating fundamental rights under Article 15 of the Indian Constitution. Further reliance can be placed on Article 14, specifically towards the ‘equal protection’ clause, which emphasizes on the protection of the citizens from social evils such as discrimination, which in this case would mean discrimination on the grounds of race. There is a noticeable convergence in the ideas of racism, caste and gender and on the basis of this argument, trademarks depicting stereotypical behavior towards skin color, caste and gender is violative of the vested fundamental rights. The Indian consumer base has been stereotypical towards the concept of “fair skin” which has made brands like “Fair and Lovely” thrive in the Indian market, further belittling racial equality and stigmatizing darker skin tones.

One possible counter-argument to the afore-mentioned statements would be that the trademarks would come under the purview of Article 19(1)(g) of the constitution, but by way of Article 19(1) itself, the constitution legislators have placed a restriction that the rights and liberties enshrined in the same are not absolute. They are subject to reasonable restrictions like Article 19(6), for instance. In the notable judgment of Hamdard Dawakhana v. Union of India, the Supreme Court held that in the context of advertisements, if it undertakes the form of a commercial speech, it would not come under the umbrella of freedom of speech because the proliferation of ideas on social, economic and human thought is lost.

A strike of balance must be brought up between such rights and public harmony such that intellectual properties violating equality and equal protection against social evils like discrimination are outweighed.  Hence, a pioneer step in making companies and establishments to create accountability over themselves to eradicate prevalent societal issues existent within the country would be including discrimination as a ground for registration for refusal of a trademark application.

International Trademark Applications: While the stance of adding discrimination as a ground within Indian trademark law would be a ground-breaking addition, a perpetual addition would be the application of the same in international scenarios as well. India is a signatory to the Paris Convention for the Protection of Industrial Property which presents the concept of national treatment as the primary bedrock of trademark registrations. India’s endorsement towards this principle can be visualized through Section 154 of the Indian trademarks Act that addresses the registration of trademarks by convention countries. Two provisions in the convention, Article 5(C)(3) and Article 7(2), elucidate on the refusal of trademarks on the grounds of public interest.

Although, discrimination is not abstractly placed in the grounds for refusal in the Convention, there is no reason why it cannot fall under the ambit of public interest if the Indian Trademark law is amended to include discrimination under Section 9(2). In the judgment of Ashok Kumar Pandey v. State of West Bengal, the scope of the term public interest was expounded wherein, public interest consists of an assessment of the society’s rights and liabilities.

Other international conventions also emphasize on insinuating a balance between public interest and Intellectual property placing a specific pertinence on the developing countries, encouraging them to be more conscious about the social realm subsisting in their countries. The provision within TRIPS that puts forth the same can be sought under Articles 7 and 8 of the Agreement. This means that for all the WTO members, there consists of a wide scope to refuse trademark under the purview of public interest, in addition to other grounds.

Other globally applicable international norms also come into picture when public interest comes into picture, and therefore, it becomes a necessity to refuse trademark applications in light of discrimination on the basis of race, gender et al. The European Convention of Human Rights under Article 14 enshrines prohibition of discrimination. In furtherance to this, International Convention on the Elimination of All Forms of Racial Discrimination and the principles contained in the Universal Declaration of Human Rights both envision to eradicate racial discrimination.

The International Covenant on Civil and Political Rights, 1966 propounds about the right to equality and freedom from discrimination as under Article 2(1).

International Standing and Execution-

The lack of cases in the Indian judicial fora leads to taking reference from foreign jurisprudence. In this regard, the case of Pro Football Inc. v. Blackhorse, the native Americans had filed a suit for the cancellation of the registration of “Redskin” as a mark along with 5 other marks of the same brand, stating that the mark has been disparaging to that particular sect. The party also claimed that the mark led them to be segregated from the other sects and brought them disrepute. All the marks were registered by the Washington Redskins Football team.

The resultant litigation process led the court to state that the mark was disparaging to the Native Americans and that the registrations must be removed. Further appeals by the football team, the appellate court placed an affirmation to the Trademark Trial Board of the United States Patent and Trademark Office (UPSTO). What can be inferred is that the Trademark jurisprudence of the United States considers both discriminatory and obscenity as a ground for refusal or cancellation of a mark.

Conclusion-

In light of the afore-mentioned explanation, with a marked emphasis on the Pro Football case, it can be concluded that the trademark Fair & Lovely disparages people of dark skin and racially discriminates people.

The decision of HUL to change its trademark to “Glow and Lovely” is a stepping stone in the Indian Trademark jurisprudence in favour of consumer sentiments and their Fundamental Rights. It therefore opens the door for the debate as to whether there is a violation of Article 15 and whether there is a need to bring about a change and amend Section 9(2)[1] to restrict trademarks that are discriminatory and misleading.

Lastly, a major concern still lies with the ‘Glow and Lovely’ products itself, despite a change in trademark, the product is still a fairness cream and the message that it conveys i.e., fair is lovely has been ingrained since time-immemorial in the minds of Indian consumers. Hence the implementation and actual effect of the law is doubtful. Nonetheless, prohibition of future discriminatory trademarks would be a major step in erasing ignorance and promoting true fairness.

Author: Haritha Dhinakaran, a student of Symbiosis Law School (Pune), currently doing internship  at Khurana & Khurana, Advocates and IP Attorney, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com.

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