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Comparative Advertisement: A Tool For Trademark Infringement In India

Good advertising does not just circulate information. It penetrates the public mind with desires and belief.” – Leo Burnett
 
The advertisement refers to marketing communication that helps in promoting a brand, product, or service. It is an effective tool for reaching out to potential customers and grab their attention. ‘Comparative Advertisement’ is the term used for the advertisement that compares the advertiser’s goods and services with that of competitor’s. The objective of comparative advertising is threefold i.e. creating awareness amongst the masses by honest comparison, promoting the brand, and increasing the sales in the market. These advertisements are designed for comparing the value, quality, price, advantages, etc. of their product with that of competitors for influencing consumer behavior while having a notion that their product is better than or as good as the competitors.

Comparative advertising is permissible as it is considered to be under the ambit of commercial speech which is protected under Article 19(1) (a) of the Constitution of India as it allows the free flow of information and public awareness.[1]Freedom of speech and expression does not grant blanket protection, it condemns the act of defaming or disparaging any brand or product[2]. The advertiser can use the element of “Puffery” to claim for their product that can be true or false for instance the advertiser can claim that their product is the best in the Country. The advertiser cannot make an advertisement that is deceptive in nature and is disparaging to the competitor’s brand or product.

Trademark Law And Comparing Advertisement

Trademark is a mark or a symbol that distinguishes the goods of one product from the other of similar nature. It allows the customer to distinguish the products and to determine the source of origin. A trademark owner has an exclusive right to use his trademark and also has a right to protect his trademark from getting infringed. In the era of globalization, it is important to have an identity and maintaining a reputation of a brand. The trademark grants an identity to a brand and it has all the right to safeguard it. The advertisement should not indulge in competitor’s product disparagement but if it does then the advertiser will be held liable for the trademark infringement.

The Trademark Act, 1999 grants the provisions for protecting the trademark from getting infringed. Trademark Infringement pertaining to advertising is defined under section 29 (8) of the Trademark Act which states that if the advertisement takes unfair advantages, uses dishonest practices, is detrimental to its distinctive character, and is against the reputation of the trademark then the said advertisement will be considered to a trademark infringement[3]. Section 30(1) makes comparative advertisement an exception where a registered trademark can be used by a person for identifying the goods and services but with honest practice and should not take any unfair advantages[4]. It means that in India it is permissible to use one’s trademark for comparison and if it’s used the above-mentioned conditions are fulfilled it will not attract the provision of trademark infringement.

The burden of proof lies on the shoulder of the trademark owner to prove that the use of his trademark does not fall under honest practice. If the advertisement has used the tactics of disparaging the competitor’s product and misleading the consumers it would not attract the provision of honest practice. The test for determining the advertisement falls under honest practice or not will be by examining what the reasonable reader or a consumer thinks. The advertisement will be seen as a whole and not one part or segment of it. Apart from the trademark laws, India has the “Advertising Standard Council of India (ASCI)” that allows the comparative advertisement unless the comparison is clear, based on facts, and does not deceive a potential customer. The advertisement should not be of a nature that provides an undue advantage to the producer over the competitor’s goods or service or brand.

Judicial Pronouncements
In the case of Britannia v Unibic Biscuits India[5], the plaintiff was the owner of the registered trademark “Good Day” for its biscuits. While the respondent i.e. Unibic launched their biscuits “Why have a Good Day when you can have a Great Day”. The plaintiff contended that the advertisement has infringed their trademark “Good Day”.

Bangalore City Civil Court granted an injunction to the defendant for disparaging the product of the plaintiff and the manner the advertisement was made will not attract the provisions of honest practice.

In the case of Hindustan Unilever Ltd. v Reckitt Benckiser Ltd. (India),[6] the plaintiff was the owner of the brand name “Lifebuoy” and “VIM” and the respondent was the owner of “Dettol” and “Dettol Healthy Kitchen Gel”. The plaintiff contended that the advertisement made by the respondent infringes the plaintiff’s trademark as in the advertisement it was depicted that the half of plate was washed with the yellow color gel which left the germs behind and the other was cleaned when washed with the Dettol liquid gel. It clearly shows that the comparison that was made was disparaging the plaintiff’s product.

The court granted the injunction on the defendant and held that the advertisement can be made with puffery but there is a thin line between puffery and disparagement. The current advertisement has crossed the line as it mentioned the word “leading dish wash” and any reasonable man will relate this with “VIM” and hence held that it is not an honest practice and will amount to trademark infringement.

In the case of Pepsi Co. vs. Hindustan Coca Cola Ltd.,[7]the plaintiff alleged that Coca-Cola has infringed their trademark as in their advertisement they have used the same color combination bottle with the word “Peppi” written on it, further have used the phrase “Bacchowala drink” and have mocked the slogan of Pepsi by quoting “Yehdilmaange no more” and these acts amounts to product disparagement. The court held that while analyzing the advertisement three things need to be considered i.e. intent, manner, and the storyline of the commercial. If the advertisement is disparaging and lowering the reputation of the competitor’s product it would be held liable for trademark infringement.

In the case of Colgate Palmolive Company and Anr. v Hindustan Unilever Ltd. [8]the respondent toothpaste showed that their toothpaste is better than Colgate with higher efficiencies of killing the bacteria and dental cavities. The plaintiff contended that it is direct disparagement of their product. The Delhi High Court said that it is important to view the advertisement in its entirety and not dissecting certain expressions or words. Further, it is important to examine the storyline and the message that is intended by the advertisement for a consumer. In this case, no injunction was granted against the defendant but the defendant was asked to make certain changes in their advertisement and to remove all the references of the collage product from their advertisement.

In the case of Dabur India Limited v EmamiLimited [9], the plaintiff was the manufacturer of “Dabur Chayawanprash” and the respondent has launched its new product ‘Himani Sona Chandi Amritprash’. The advertisement of the defendant’s product uses the line “Garmionmein Chayawanprash Bhool Jao, Himani Sona-Chandi Amritprash Khao. ”The plaintiff has contended that the said advertisement is disparaging their product and amounts to trademark infringement.

The court held that one can use the statement that his products are best and can also make a statement for puffing his good but this should not amount to disparagement or defamation of any other manufactures. However, manufactures are not entitled to claim that their competitor’s goods are bad or inferior with the view to promote their product. In the present case, the advertisement will amount to a disparagement of the product and the injunction was granted against the defendant for infringing the plaintiff’s trademark.

Conclusion
The Trademark Act, 1999 has enshrined the provisions for comparative advertisement which have addressed many issues but there is a need for a definition for a “Comparative Advertisement”. It is clear from the judicial pronouncement that there is no issue in making a comparison between your product and competitor’s unless it does not amount to product disparagement and does not harm the reputation of the brand.

In my opinion, the manufactures should be allowed to compare their product with that of competitors by laying the benefits of their product as it will give a better view to the customers about the products and further it will help in devolving the healthy trade practices in India. Manufactures making superlative claims and puffing about their product which is not even true defeats the true purpose of safeguarding the consumers from deceptive trade practices.

End-Notes:
  1. Tata Press Ltd v Mahanagar Telephone Nigam Ltd AIR 1995 SC 2438
  2. Dabur India Ltd v Wipro Limited 2006 (32) PTC 677 Del
  3. Sec. 29(8), The Trademarks Act, 1999
  4. Sec. 30(1), The Trademarks Act, 1999
  5. MIPR 2008 (3) 347
  6. (2014) SCC Cal 6094
  7. 2003 (27) PTC 305 Del
  8. (2014) 206 DLT 329 (DB)
  9. 2004 (29) PTC 1 Del
Written By:
  1. Navin Kumar Jaggi
  2. Bhavya Bhasin

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