ADVERTISING

AND
TRADEMARK INFRINGEMENT

Guided By-
Dr. Tabrez Ahmed

GROUP-1
Sayantani Sen, Sneha Mukherjee, Swapnil Kumari, Shanta Samal, Veeyena Nayak
INTRODUCTION

 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.
ISSUES-

 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?
ISSUES BASED DISCUSSIONS
Trademark Infringement

 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.
What Types of Intellectual Property Rights may
be involved in Advertising?

 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.
These include the following:

 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.
PRODUCT DISPARAGEMENT

 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.
Cont…

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

 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.
Reckitt &Colman of India Ltd. v. MP Ramachandran & Anr (1999)

 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
Cont…

 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.
Cont…

 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.
Dabur India Ltd v Colgate Palmolive India Ltd
(2004)

 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.
TRADEMARK LAW AND COMPARATIVE ADVETISEMENT
 

 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.
COMPARATIVE ADVERTISING

 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.
Can you compare the relative qualities of
your business products and services with
those of competitors without running
afoul of trademark laws or unfair
competition laws?
Cont…

 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

Pepsi Co. Inc. v. Hindustan Coca Cola Ltd
(2001)

 Delhi High Court also dealt with

copyrights and trademark related
issues.

 Mere comparison was done and it

did not amounted to disparagement.
Interface between Comparative Advertising and
Product Disparagement-

 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.
Dabur India Ltd. v. Colgate Palmolive India Ltd. (2004)

 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
STATUTORY FRAMEWORK FOR TRADEMARK
INFRINGEMENT

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.

Cont…

 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.
Cont…

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.
Cont….

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.
CONCLUSION

 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.
CASES REFERRED

 
 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