Advertising and Trademark Infringement

8/7/2019 Advertising and Trademark Infringement

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GROUP-1

Sayantani Sen, Sneha Mukherjee, Swapnil Kumari, Shanta Samal, Veeyena Naya

Guided By-Dr. Tabrez Ahmed


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` Advertisement passes on relevant information tocustomers so as to facilitate and positively influence theirbuying decisions.

` natural human tendency is to exaggerate the benefits of a

product or service beyond mere puffery ` There are people who use others trademark to use its

market reputation to enhance its own business withoutextra efforts.

` In this way, they infringe the trademarks of others andadvertising is one of the mode through which trademark isinfringed.

INT RODUC TI O N


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` H ow and when a trademark is infringed?

` Product Disparagement

` Comparative advertising and trademark law

` Statutory framework for trademark

infringement` Whether remedies can be claimed for trademark

infringement through advertising?

ISS UE S -


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ISS UE S BAS ED D IS CU SSI O NS


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` Trademark infringement is a violation of theexclusive rights attaching to a trademark without the

authorization of the trademark owner.

` Infringement may occur when one party uses atrademark which is identical or confusingly similarto a trademark owned by another party, in relation toproducts or services which are identical or similar to theproducts or services.

T rademark I nfringement


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` J ust like the elements of a good product or service,

the elements of a good advertisement are likely tobe imitated or copied by others.

` So one or more types of IP rights come into play in

creating content for an advertisement.

W hat T ypes of I ntellectual P roperty R ights may b e involved in A dvertising?


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` Creative content, such as written material, photographs, art,graphics, the layout of an advertisement, music and videos, may be protected by copyright.

` Advertising slogans and sounds may be protected, under

circumstances, by copyright and/or by trademark law.` B usiness names, logos, product names, domain names and

other signs used in advertising, may be protected astrademarks;

` G eographical indications may be protected by laws againstunfair competition, consumer protection laws, laws for theprotection of certification marks or special laws for theprotection of geographical indications or appellations of origin.

T hese include the following:


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` According to B lacks Law D ictionary the word disparagemeans

` to connect unequally ; or dishonor (something orsomeone) by comparison;

` or to unjustly discredit or detract from the reputationof (anothers property, product or business);

` or a false and injurious statement that discredits ordetracts from the reputation of anothers property, orbusiness.

PRODUC T D IS P A R A GEME NT


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` When that comparison is false or misleading, however,the advertising crosses the line into a type of falseadvertising called product disparagement.

` An act on the part of the third party could constituteproduct disparagement

e.g. a newspaper article criticizes a particular good and inprocess disparages it.

Cont


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` The Delhi H igh Court held that statements made by manufacturers claiming their product to be the bestor puffing up their goods will not give a cause of action for disparagement.

` H owever, any statements that portrays competitorssimilar goods in bad light while simultaneously promoting the manufacturers own goods is notpermitted and will be tantamount to disparagement.

` The Delhi H igh Court granted an injunction againstthe defendants for the disparaging contents of theadvertisement.

Reckitt & Colman of India Ltd. v Kiwi TTK (1996)


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` While holding that the advertisement was madewith the intent to disparage and derogate theplaintiffs product, the Calcutta H igh Court laiddown five principles in aiding the grant of

injunctions in such matters, stating that:

` 1. A tradesman is entitled to declare his goodsto be best in the world, even though thedeclaration is untrue

` 2 . H e can also say that my goods are better thanhis competitors, even though such statementis untrue

Reck itt l f I i t . . MP Ramachandran & Anr (1 )


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` 3 . For the purpose of saying that his goods are thebest in the world or his goods are better than hiscompetitors he can even compare the advantages of his goods over the goods of others

` 4. H e defames his competitors and their goods ,which is not permissible

` 5. if an action lies for recovery of damages for

defamation , then the Court is also competent togrant an order of injunction restraining repetition of such defamation.

Cont


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` The Delhi H igh Court used the second factor as thedetermining one.

`

If the manner of the commercial is ridiculing or

condemning the product of the consumer then itamounts to disparagement.

` H E LD - there was no disparagement also went onto hold,

without precedent, that Pepsis advertising slogan wascopyrightable. As mere use of the trademark protectedPepsi logo and parody of the slogan does not give rise toipso facto infringement.

Cont


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` Trade rivalries between two consumer durablescompanies led to a TV advertisement.

` Praising the defendant's product whilecriticizing that of the rival.

` Dabur, with the help of a famous actor showedconsumers the abrasive characteristics of theplaintiff's tooth powder, describing thedefendant's product as 16 times less abrasive.

` H E LD- The court granted an injunction andheld that visual media has an immediate effecton the viewers' minds, particularly when a well -known actor is endorsing a product.

D abur I nd ia t d lg a t e P a l mo li e I nd ia t d (2004)


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` If an advertiser uses a competitors trademark tomake a comparison between his goods and thoseof his competitor, and in the process disparagesthem.

` Then such an act on the part of the advertiser

would not only invoke issues related totrademark infringement and productdisparagement but would also invoke issuesrelated to comparative advertising.

T R A DEM A RK LA W AN D COMP A R ATIV E A D V E TIS EME NT


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` Comparative Advertising is the term used todescribe advertisements where the goods or

services of one trader are compared with the goodsand services of another trader.

` Comparative advertising benefits the consumer as

it usually compares the price, value, quality orother merits of different products, thereby enhancing the awareness of the consumer.

COMP A R ATIV E A D V ER TISIN G


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Can you compare the relative qualities of your b usiness products and services with

those of competitors without running afoul of trademark laws or unfair competition laws?


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` comparative advertising is allowed to the extent:

A trader is entitled to compare his goods with the goodsof another trader and to establish superiority of hisgoods over that of others, but while doing so he cant say that the goods of his competitor is inferior, bad, orundesirable.

In case he makes any such statement it would be an actconstituting P roduct disparagement.

EX A MP LE : Coca Cola and Pepsi case

Cont


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` Delhi H igh Court also dealt withcopyrights and trademark relatedissues.

` Mere comparison was done and itdid not amounted to disparagement.

P eps i o . I nc . . Hi ndus t an oca o l a t d (2001)


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` The advocates of comparative advertising often

argue that trade rivalries and economic battlesshould remain confined to market place; howeverthe courts have been reluctant to accept thisproposition.

I nterface b etween C omparative A dvertising and P roduct D isparagement -


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` The courts have condemned acts of generic disparagement where anadvertiser may not disparage the goods orservices of a particular proprietor, but theclass of goods or services as a whole.

` Delhi H igh Court found that although theadvertisement of the defendant made areference to class the of goods only,namely red tooth powder and did notspecially referred to the plaintiffs product,still the plaintiff would be entitled aninjunction against the defendant as theplaintiff held 8 5% of the share of themarket in that product

D abur I nd ia t d . . o lg a t e P a l mo li e I nd ia t d . (2004)


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MR T P A ct, 198 4` S ection 36 A ( x ) provided a basis upon which a claim

could be made against disparagement of goods.

T rade M arks A ct, 1999` S . 2 9 ( 8 ) A registered trademark is infringed by any

advertising of that trademark if such advertising -` (a) takes unfair advantage of and is contrary to

honest practices in industrial and commercial matters;or` (b) is detrimental to its distinctive character ; or` (c) is against the reputation of the trademark.

STAT U T ORY F R A ME W ORK F OR T R A DEM A RK INF R IN GEME NT


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` At the same S . 3 0( 1) of the Act makes comparativeadvertising an exception to product disparagement .

` S.30 (1) of Trademarks Act, 1999- nothing in s. 29 shall

be construed as preventing the use of a registeredtrademark by any person for the purpose of identifyinggoods or services as those of the proprietor provided theuse -

` (a) is in accordance with honest practice in industrialor commercial matters, and

` (b) is not such as to take unfair advantage of or bedetrimental to the distinctive character or repute of thetrademark.

Cont


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T R I P s A greement -A rt. 16 talks of exclusive right of owner and toprevent infringement of such right, TRIPs mandatesthe judicial authorities to take prompt and effectivemeasures.

C ont


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O ther S tatutes -Product disparagement amounts to defamation

also. Provisions regarding defamation are there inI ndian P enal Code ( s. 4 99 ) and Law of T orts .P assing off is also an infringement undercommon law.

C ont.


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` Section 29 (8) and Section 30(1 ) of the Trademarks Act, areadequate to address issues related to trademark infringement, made in the grab of comparative advertising.

` comparative advertising is permissible, but comparativeadvertising leading to product disparagement is notpermissible.

` No doubt that comparative advertising is beneficial as itincreases consumer awareness and therefore, it should beallowed.

` It enables an advertiser to establish its brand in the marketby stating his superiority over the established brands but,at the same there have to be regulation to check abuses.

CO N C LU SI O N


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` P epsi Co Inc. v. Hindustan coca cola, 2001 PTC 699 (Del)

` R eckitt & Colman of India ltd v. M. P . R amachandran & Anr, 1999 PTC (19 ) 74 1 (Cal)

` Dabur India Ltd. v. Colgate P almolive India Ltd. (200 4

(29 ) PTC 4 01 (Del))

` R eckitt & Colman of India ltd v. Kiwi TTK 1996

C AS E S RE F ERRED

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Advertising and Trademark Infringement