IPRS AND

ADVERTISMENTS
-Dr. P. Sree Sudha
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1.

INTRODUCTION

THE GROWING ROLE OF
ADVERTISING IN THE
MARKET ECONOMY


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Today: bussinesses beckon
customers with all types of
advertising tools
Business signs
Pamphlets, door drops
Brochures
Billboards
Radio & TV
acommunications
Telephone solicitations
Commercial text
messages
Email advertisements
Banners
Pop-ups
Rich media
advertisements
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Internet and digital technologies
Traditional role: support for good/service

Innovative digital advertising
techniques in online environment:
Expand role of advertising (receipt from
advertising often main source of income)
Potential problems because of ease and speed
with which advertising can be assembled,
reshaped and distributed worldwide

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Challenge
Advertising has become race for
unique, cutting-edge, enticing way of
...
passing on information to customers
facilitate and positively influence their
buying decisions

Difficult to keep content true to facts
Human tendency to exaggerate benefits of
product
Easy to cross thin line demarcating puffery
from misleading, deceptive or false
advertisement
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This presentation
IP issues in the process of
advertising
Protect your IPRs in
your advertising
Dangers in
violating IPRs of
others
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2.

HOW TO PROTECT YOUR
IP RIGHTS IN
ADVERTISING


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(a) What types of IPRs are
involved in advertising?

Creative content copyright
Slogans, sounds copyright/trademarks
Business names, logos, domain names
trademarks
GIs unfair competition, consumer protection,
certification marks, special laws on GIs
Graphic symbols, screen displays, graphic user
interfaces, web pages industrial design/
copyright
Software (to create digital ads, e.g. computer
generated imagery) trade secrets + copyright
and/or patent
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Advertising techniques or means of
doing business patent (not in India)
Website design copyright
Distinctive packaging trademark,
industrial design, trade dress
Persons identity publicity or privacy
rights
Databases copyright/sui generis
Unfair advertising methods unfair
competition laws, tort
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(b) How to protect your creative
advertising?



Cfr. presentation on Website
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(c) Do you own the rights in your
advertisement?


You pay freelance advertising designer to
create advertising campaign for you on the
occasion of fashion exhibition.

Year later: you want to use some text and
graphic illustrations in your catalogue...
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3.

DANGERS
IN VIOLATING THE IPRs OF
OTHERS
WHILE CREATING OR USING
ADVERTISING CONTENT


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(a) Can you use material owned
by others in your advertising?
Technocal tools and
software
Copyright works
Photographs
Freeware
Material in public domain

Cfr presentation
Website
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(b) Use of others likeness
Tennis star Sania Mirza
promoting Tata Indicom
mobile phone
Nicole Kidman is the new
face of Chanel No 5
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In many countries: name, face, image,
voice, other likeness of individual
protected by privacy and publicity rights
Right of publicity
-Persons image has
economic value
-Presumed to be result of
persons own effort
-Gives person right to
exploit own image
Right of privacy

Person has right to
protect image form
certain uses by others
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Fashion brewery sells
calendar with unknown
persons driving car with
refreshing pint in their
hands
- without permission...
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Textile company sells
catalogue with Sania
Mirza wearing its cloths
- without permission...

(ficticious example)
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(c) Can you use a competitors trademark in
your advertising?
Trademark is exclusive right
(right to exclude others from using the mark)

BUT:
No monopoly on the word, phrase, shape or color
as such
Only commercial use of the trademark for the
relevant classes of goods/services can be
restricted
Non-commercial use cannot be prevented, except
if use affects distinctiveness of trademark
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Therefore:

Use of competitors trademark in advertising is
not an infringement, so long as ...

Use is in accordance with honest practices in
industrial or commercial matters

Use does not take unfair advantage of, or is
detrimental to, the distinctive character or
reputation of the mark

India: Section 29(5) and 30 (1) Trademark Act
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How to use competitors trademark in advertising?

1. Do not alter competitors trademark,
especially if it is a logo (size, color, spelling)
trademark dilution and infringement

2. If it contains graphic elements (logo, label,
design, 3D figure) authorization
copyright

3. Be careful when using competitors trademark in
metatags, linking, framing, domain names
trademark infringement, unfair competition
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4. Key word triggering

Ficticious example:
- I search NIFT banner of other university on top of
search results
- I click on banner get directed to other university

Search engine sells keyword to business

trademark dilution and infringement
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5. Primary meaning of your advertising should be to
inform the consumer, not to discredit or unfairly
attack competitors
6. Mark competitors trademark with trademark
symbol

7. Avoid using competitors trademark in way that
suggests competitor endorses or sponsors your
advertising product
E.g. Prominently featuring logo of competitor

8. Do not take unfair advantage of reputation of
competitors to promote your own business

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(d) Comparative advertising

Coca-Cola tastes better than Pepsi
Cadillac Seville outperforms BMW 540 in
slalom course
= Direct (competitor named)

NIFT has the best postgraduate programmes
for the textile, garment and allied industries
We manufacture the nicest sarees in India
= Indirect (competitor not named)

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Can you compare qualities of
your products with those of
competitors?
Some countries:
Truthful comparisons are
informational for
competition
Beneficial to competition
Some countries:
Only allowed if specific
requirements fulfilled
Some countries:
Forbidden
Some countries:
Forbidden for
certain products
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Cable&Wireless PLC v British
Telecommunications (UK, 1998)
Telephone company compares prices
of its telephone service with those
of competitor
Accurate and not intended to mislead
the public
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Reckitt & Colman of India Ltd.
v. Kiwi T.T.K. Ltd. (India)
Advertisement on electronic media
shows a bottle of KIWI which does
not drip as against another bottle
described as OTHERS which drips and
is shown as Brand X.

Brand X looks similar to the plaintiffs
Cherry Blossom. There is a red blob on
Brand X which represents CHERRY
and appears on plaintiffs product also.


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Court:

Comparative advertisement permissible but
should not to be intended to disparage or
defame the competitors product.

Kiwi ad disparaging to Reckit & Colmans
product and does not hinder freedom of
speech

Kiwi restrained from advertising its
products in a disparaging manner.
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Hindustan Lever v. Colgate
Palmolive (India)
Hindustan Lever introduced new toothpaste called
New Pepsodent, claiming to be 102% better than
the leading toothpaste.

Advertisement showed New Pepsodent superior in
killing germs than any other toothpaste.

Lip movement in the ad indicated Colgate as the
other toothpaste referred, although voice muted.
Also, same jingle as used in the Colgate ad is
played.
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Court:

Direct reference about inferiority need
not be shown reference amounted to
disparagement

Ad likely to leave doubt in minds of
viewers that Pepsodent was being
compared with Colgate.

Injunction
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Comparative advertising in India
In principle allowed:
Tradesman entitled to declare his goods to be
the best in the world
Can also say that his goods are better than his
competitors
Can even compare advantages if his goods over
products of competitor

HOWEVER
Cannot, while saying that his goods are better
than his competitors, say that his competitors
goods are bad.
Slander/defamation is not permissible.
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(e) Sensitive products
Special controls or prohibitions on advertising

Medicines
Tobacco
Food
Toys
Pornography
Credits
Slimming products
Casino games
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(f) Advertising and children
E.g. Glamorize violence in advertising
directed to children

E.g. Use of children in advertising
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(g) Marketing practices
Direct marketing: via mail, fax,
door-to-door, email, sms,
Unsolicited emails (spam)
Free gifts, discounts

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4.

CONCLUSION


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Create yourself, rather than using
others creations

Be sure you own rights in your ad

Clear your advertising compaign (in
India and abroad)

Comparative advertising can mislead
consumers + unfairly discredit
competitors
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Do not use competitors mark in such way
that it harms competitor in unfair way

Your claims must be true and accurate


No comparisons that are likely to cause
confusion
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