Trademark law and combatting Cultural appropriation

After a wave of backlash faced by Kim Kardashian and Disney for cultural appropriation, the debate over Trademark law and cultural appropriation awakened. The IP community and the activists stand divided on the issue. While trademark is meant for a dual function of identifying and distinguishing from others, public interest and community sentiments have also been taken into consideration in trademark law. In the last post, we discussed the difficulties of recognizing and protecting “ cultural assets. ” In this post, we will discuss the remedies and options available under the Indian trademark law to the affected community/group to protect their heritage and cultural assets in case a juggernaut does end up trademarking an aspect of it.

Action by the Trade Marks Office

As we already know, once an application to register a trademark is submitted, the same is examined by an Examiner to scrutinize the possibility of registering a trademark for the subject of your application. At this stage, if a trademark is found to be offensive to a section of the public, it is hit by the Absolute Grounds of Refusal of the Trade Marks Act, 1999. This Section states that a mark will not be registrable if it hurts the ‘religious susceptibilities’ of a group of people. However, this can be interpreted broadly to include aspects of cultural appropriation and the Examiner’s opinion is vital in this scenario.

Action by the Affected Community

The trademark law allows a few options to the affected community/class of people to protect their heritage and culture from the monopoly of the trademark law.

  1. Collective mark:

One option to prevent cultural appropriation vide trademarks is for the community to protect their significant cultural expressions and assets as collective marks. Collective marks are owned by groups and they do not need any products to be associated with. In this scenario, the collective mark could be used by the members of the affected community to be identified and associated with the trademark exclusively. However, to anticipate and trademark every culture and asset is not the most realistic approach.

  1. Opposition Proceedings:

If the trademarks that seem to be offensive to the community is allowed to be advertised after examination, then the affected community can oppose the trademark within 4 months after it is advertised in the journal. This allows them to present their grievances and prevent registration of the mark on grounds that it is cultural appropriation of the community. The opposition proceedings are then decided based on merit.

  1. Cancellation proceedings:

If a mark that is considered to be culturally appropriating is wrongfully registered, the affected community that is aggrieved may apply to the Registrar or the IPAB to rectify the Register and cancel the impugned trademark. One of the vital requisites for initiating cancellation is that the person applying must be a “person aggrieved” by the registration. The grounds of such cancellation could also be that the trademark falsely suggests an association of the goods/services to the community and thus wrongly remaining in the Register.

  1. Filing a suit:

While the above options only preclude the registration of the mark that is said to be culturally appropriating, the use of the trademark is not exactly fully curtailed. For the affected groups that hold either a registration of the said trademark/collective mark (as suggested in point 1), the best remedy is to file a suit for trademark infringement. The suit can be filed on the grounds of “likelihood of confusion/deception,” “dilution of the trademark”. While the former requires possibility of confusion/deception in the minds of the consumer, the latter requires blurring or tarnishing which is a better bet in such cases. If the trademark is registered as a collective mark as discussed above, the infringement proceedings are a good option. However, even if the trademark is not registered by the affected community due to practical reasons, the common law remedy of passing off can still be availed though the same entails a few conditions like proving willful misrepresentation leading to actual confusion.

The trademarks law apparently provides multiple tools to combat cultural appropriation but at a premium. Communities that fall prey to cultural appropriation cannot always afford the costs of the remedies available under the trademark law. Every option mentioned herein above requires a considerable amount of time and energy which many might find difficult to sustain. The IP regime, be it in India or world-wide appears to still be inadequate in providing specific and appropriate policies to protect cultures and prevent cultural appropriation and we have a long way to go before this lacuna in law is filled.

What are your thoughts on this? Let us know in the comments below with #askselvams