advertising and trademark infringement

ADVERTISING AND TRADEMARK INFRINGEMENT : 

ADVERTISING AND TRADEMARK INFRINGEMENT Sayantani Sen, Sneha Mukherjee, Swapnil Kumari, Shanta Samal (Students of KIIT Law School 2008-13)

Slide 2: 

Advertisement passes on relevant information to customers so as to facilitate and positively influence their buying 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 without extra efforts. In this way, they infringe the trademarks of others and advertising is one of the mode through which trademark is infringed.

Slide 3: 

How 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?

Slide 5: 

Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner. Infringement may occur when one party uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services.

Slide 6: 

Just like the elements of a good product or service, the elements of a good advertisement are likely to be imitated or copied by others. So one or more types of IP rights come into play in creating content for an advertisement.

Slide 7: 

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. • Business names, logos, product names, domain names and other signs used in advertising, may be protected as trademarks; • Geographical indications may be protected by laws against unfair competition, consumer protection laws, laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin.

Slide 8: 

According to Black’s Law Dictionary the word ‘disparage’ means to connect unequally; or dishonor (something or someone) by comparison; or to unjustly discredit or detract from the reputation of (another’s property, product or business); or a false and injurious statement that discredits or detracts from the reputation of another’s property, or business.

Slide 9: 

When that comparison is false or misleading, however, the advertising crosses the line into a type of false advertising called product disparagement. An act on the part of the third party could constitute product disparagement e.g. a newspaper article criticizes a particular good and in process disparages it.

Slide 10: 

The Delhi High Court held that statements made by manufacturers claiming their product to be the best or puffing up their goods will not give a cause of action for disparagement. However, any statements that portrays competitors’ similar goods in bad light while simultaneously promoting the manufacturers own goods is not permitted and will be tantamount to disparagement. The Delhi High Court granted an injunction against the defendants for the disparaging contents of the advertisement.

Slide 11: 

While holding that the advertisement was made with the intent to disparage and derogate the plaintiff’s product, the Calcutta High Court laid down five principles in aiding the grant of injunctions in such matters, stating that: 1. A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue 2. He can also say that my goods are better than his competitors’, even though such statement is untrue

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3. For the purpose of saying that his goods are the best in the world or his goods are better than his competitors’ he can even compare the advantages of his goods over the goods of others 4. He 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 to grant an order of injunction restraining repetition of such defamation.

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The Delhi High Court used the second factor as the determining one. If the manner of the commercial is ridiculing or condemning the product of the consumer then it amounts to disparagement. HELD- there was no disparagement also went onto hold, without precedent, that Pepsi’s advertising slogan was copyrightable. As mere use of the trademark protected Pepsi logo and parody of the slogan does not give rise to ipso facto infringement.

Slide 14: 

Trade rivalries between two consumer durables companies led to a TV advertisement. Praising the defendant's product while criticizing that of the rival. Dabur, with the help of a famous actor showed consumers the abrasive characteristics of the plaintiff's tooth powder, describing the defendant's product as 16 times less abrasive. HELD-The court granted an injunction and held that visual media has an immediate effect on the viewers' minds, particularly when a well-known actor is endorsing a product.

Slide 15: 

If an advertiser uses a competitors trademark to make a comparison between his goods and those of his competitor, and in the process disparages them. Then such an act on the part of the advertiser would not only invoke issues related to trademark infringement and product disparagement but would also invoke issues related to comparative advertising.

Slide 16: 

Comparative Advertising is the term used to describe advertisements where the goods or services of one trader are compared with the goods and services of another trader. Comparative advertising benefits the consumer as it usually compares the price, value, quality or other merits of different products, thereby enhancing the awareness of the consumer.

Slide 18: 

comparative advertising is allowed to the extent: A trader is entitled to compare his goods with the goods of another trader and to establish superiority of his goods over that of others, but while doing so he can’t say that the goods of his competitor is inferior, bad, or undesirable. In case he makes any such statement it would be an act constituting Product disparagement. EXAMPLE: Coca Cola and Pepsi case

Slide 19: 

Delhi High Court also dealt with copyrights and trademark related issues. Mere comparison was done and it did not amounted to disparagement.

Slide 20: 

The advocates of comparative advertising often argue that trade rivalries and economic battles should remain confined to market place; however the courts have been reluctant to accept this proposition.

Slide 21: 

The courts have condemned acts of ‘generic disparagement’ where an advertiser may not disparage the goods or services of a particular proprietor, but the class of goods or services as a whole. Delhi High Court found that although the advertisement of the defendant made a reference to class the of goods only, namely ‘red tooth powder’ and did not specially referred to the plaintiff’s product, still the plaintiff would be entitled an injunction against the defendant as the plaintiff held 85% of the share of the market in that product

Slide 22: 

MRTP Act, 1984 Section 36A(x) provided a basis upon which a claim could be made against disparagement of goods. Trade Marks Act, 1999 S. 29(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.

Slide 23: 

At the same S. 30(1) of the Act makes comparative advertising 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 registered trademark by any person for the purpose of identifying goods or services as those of the proprietor provided the use- (a) is in accordance with honest practice in industrial or commercial matters, and (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trademark.

Slide 24: 

TRIPs Agreement- Art. 16 talks of exclusive right of owner and to prevent infringement of such right, TRIPs mandates the judicial authorities to take prompt and effective measures.

Slide 25: 

Other Statutes- Product disparagement amounts to defamation also. Provisions regarding defamation are there in Indian Penal Code(s.499) and Law of Torts. Passing off is also an infringement under common law.

Slide 26: 

Section 29 (8) and Section 30(1) of the Trademarks Act, are adequate to address issues related to trademark infringement, made in the grab of comparative advertising. comparative advertising is permissible, but comparative advertising leading to product disparagement is not permissible. No doubt that comparative advertising is beneficial as it increases consumer awareness and therefore, it should be allowed. It enables an advertiser to establish its brand in the market by stating his superiority over the established brands but, at the same there have to be regulation to check abuses.

Slide 27: 

Pepsi Co Inc. v. Hindustan coca cola, 2001 PTC 699 (Del) Reckitt & Colman of India ltd v. M.P. Ramachandran & Anr, 1999 PTC (19) 741 (Cal) Dabur India Ltd. v. Colgate Palmolive India Ltd. (2004 (29) PTC 401 (Del)) Reckitt & Colman of India ltd v. Kiwi TTK 1996