Trademark infringement and Comparative Advertising

Comparative advertising is nothing but a kind of advertising where you compare your product or
service of that of another's product or service, usually to show how good is your product or
service is when compared with that of another. This kind of practice is usually done to show how
better your product is in regard to price, durability or other character. This is done to increase the
profits of the business by increasing the visibility in the market.

The question which evolve here is whether is it morally or legally right to increase your visibility
or popularity by degrading another image in the market.

For this, one side always argues there is no wrong doing that rather it promotes healthy
competition in the market. It never creates any confusion in the market therefore is not against
any trademark right and also it creates a positive atmosphere in the world of advertising and on
the contrary the other hand argues that, this kind of practice hamper the growth of other
competitor's good and service. The major objective of such kind of practice is to just gain unfair
profit at the cost of competitor's goodwill.

But if we talk about in the legal perspective then it is actually no wrong because the ultimate
objective of a trademark is to distinguish one's product or service with that of another, strictly
speaking, that's what comparative advertisement do, they distinguish one's product or service
which that of another.

But what we need to understand is that there is a difference between claiming your product good
and claiming your product is best than that of others.

In Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd.1

It was held by the court that there should be a thin line between puffery and disparagement and
the person shouldn't cross this thin line and therefore as per the facts of the case, dettol was held
liable for crossing that thin line by comparing their product with lifeboy.

In India, Section 29(8) of Trademark Act 1999, talks about when an act of advertising is done to
take unfair advantages from others good and services or if it is detrimental it the very distinct

1
2008 (38) PTC 139 (Del.)
character if the other mark and also is against the goodwill, then it can be said that such act will
not be permitted and will be considered as an infringement.

But Section 30(1) of Trademark Act 1999 justify the comparative advertising and says that any
person can use other person's registered trademark provided it should be done in a bona fide
intent and for the purpose of identifying good and services and also should not hamper the
competitor's goodwill.

Advertising Standards Council of India has specified the certain norms or guidelines which
should be kept in mind while promoting their goods through ads in its Code of Conduct, 1985.
The guidelines states as follows:

 The producer must only make honest representation in the ads;

 The ads must not be offensive in any way to the general public;
 Ads must not be used for the promotions of products, hazardous or harmful to society or
to individuals particularly minors, to a degree unacceptable to society at large;
 Ads must not in any way hamper competition

Under U.S. law, use of a competitor’s trademark in accurate and non-deceptive comparative
advertising is legal and does not constitute trademark infringement. In fact, truthful comparative
advertisements – even those that display a competitor’s trademark, are considered to be
informational for consumers and beneficial to competition, provided that the competitor’s mark
is accurately depicted.2

The FTC and the National Advertising Division of the Council of Better Business Bureaus, Inc.
(NAD), govern the laws of comparative advertising in the United States including the treatment
of comparative advertising claims. FTC stated that comparative advertising could benefit
consumers and encourages comparative advertising, provided that the comparisons are “clearly
identified, truthful, and non-deceptive” 3

2
“Ours Works Better”: Use Of A Competitor’s Trademark In Advertising Joy J. Wildes and Brooke Erdos Singer
3
J. E. Villafranco, “Devoted to Intellectual Property Litigation & Enforcement”, Woltens Kluwer Law & Business,
Aspen Publishers, Vol. 16, No. 1,
In the last, it can be said that indeed comparative advertising can be regarded as one of the best
way to make your product or service to stand out from the rest of the products and service but
also this fact cannot be ignored that this process can also lead to unhealthy competitions.
Companies should use this feature for the benefits of the consumer i.e. to help them to
distinguish between the products and which product is suitable to them, and for their own
benefits. They shouldn't throw negative light on others product or trademark as the main aim of
comparative advertising is the welfare of consumers and nothing else.

2010, http://www.kelleydrye.com/publications/articles/1335/_res/id=Files/index=0/Villafranco_Law%20of%20Com
parative%20Advertising%20in%20the%20US_010210.pdf, viewed 2 September 2011.