Perspective of trade mark infringement in comparative advertisements

By Urvi Karolia

Introduction

Trademarks are marks used in trade for the purpose of distinguishing particular goods or services from another. Such marks act as source identifiers and are heavily marketed in order to establish themselves in the market. One technique used by trademark owners for popularising their trademark is done with the help of advertisements. However, if there is use of someone else’s trademark in your advertisement, it would fall under the purview of comparative advertisement. This process of using another trademark in your advertisement is valid in the eyes of law however, there are a few limitations. One must keep in mind that trademark infringement is avoided. Thus, in case, if an advertisement uses a competitor’s trademark while comparing 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 product disparagement through comparative advertisement, but would also invoke issues related to infringement of their trademark.[1]

What is Comparative advertisement?

In order to completely understand the concept of comparative advertisement, it is important to first understand why products are advertised. The primary objective of advertising is to create awareness and inform the consumers about the product. However many advertisements also focus more on convincing customers that their product or service is the best in the market. While doing so, they compare their products with that of their competitors in order to point out their main differences. The way an advertisement may compare the products may vary, some may explicitly show the name of the competitor’s product or some may implicitly just refer to them. These advertisements can also be done positivity by bringing out the similarities or they may be done negatively by bringing out their differences.  However, the main aim of comparing products is to create awareness amongst the consumers and declare that their products are best in order to generate profits.

What is Trademark Infringement?

A trademark is literally a ‘mark’ that a business uses to distinguish its product or services from that of another. It is one of the main forms of intellectual property and its main function is to protect the mark of the product, that is to say, the goods and services.

In India, S. 2 (1) (zb) of The Trade Mark Act, 1999[2] defines a Trade mark “as a  mark capable of being represented graphically and which is capable distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”

Thus, a trade mark is said to infringed when there is an unauthorised use of the mark by any person other than the registered proprietor and which is done without his consent or knowledge. In order to reenforce the right in the trademark, the owner of the mark can file a civil suit of trademark infringement in a competent court of law.

Section 29(8) of the Trademark Act,1999[3], which talks about infringement of registered trademark, specifically indicates that a registered trademark is infringed by any advertisement of that trademark if such advertising –

  (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

   (b) is detrimental to its distinctive character; or

   (c) is against the reputation of the trade mark

This section is to be read along with Section 30(1) of the Trade Mark Act,1999[4] which approves comparative advertisements which reads as follows;

 Section 30(1) – Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use-

        (a) is in accordance with honest practices 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 trade mark.

Thus, It is evident that comparative advertisement is permissible but it can turn into a case of infringement if it is done to mislead or falsify the general public and detriments the interest of the registered owner of the trademark. However, it is pertinent to note that the Trade Mark Act does not only give statutory protection to a proprietor of a registered mark but, also protects well-known unregistered marks. This is helpful for a proprietor of a well-known mark as it gives his a statutory protection under which an infringement case can be filed as opposed to a common law remedy of passing-off.

Laws governing Trademark infringement in comparative advertisements

As it has been stated about, the Trade Mark Act, 1999 is one of the statutory protections available to the registered owner of the mark in case his mark is being misused in an advertisement. Other than that, in India, advertising is regulated under many statues such as The Indian Constitution, The Consumer Protection Act, The Monopolies and Restrictive Trade Practices Act, 1969 and also in the codes of Advertising Standard Council of India (ASCI) which specifies that comparative advertisement is permissible if the aspects of the products compared are clear, factual and substantial, and if such comparison does not confer unnatural advantages on advertiser, or if there is no unfair belittling of the competing product or if it is unlikely to mislead the consumer.

In the landmark case of Tata Press vs. Mahanagar Telephone Nigam Ltd.[5], the court held that in it important to note that advertisements are not only for the purpose of making profits but are made in order to also have a free flow of information in  market with the intent to  fulfil the greater goal of public awareness. As a result of this judgement, advertisements were held involve the concept of ‘commercial speech’ under the ambit of Article 19(1)(a) of the Constitution.[6]

How are Trademarks infringed in comparative advertisements?

Coming back to the question of how a trade mark can be said to be infringed in a comparative advertisement, this can be best understood with the help of case laws. The landmark judgement of Reckitt & Colman f India Ltd. vs. M.P. Ramchandram & Anr.[7], the plaintiff was a manufacturer of a blue whitener which was manufactured under a registered brand name of ‘Robin Blue’. The defendant also started manufacturing a blue whitener and started promoting their product by comparing and disparaging the registered mark. The advertisement was shown is such a way that it was obviously referring to the registered mark as there was no other blue whitener in the market. The Calcutta High Court held that the defendant was disparaging the goods and was thus liable for infringement and was granted an injunction. More Importantly the Court laid down five principles to guide future cases of infringement.

Another example is the case of Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr.[8]. In this case, Pepsi filed a suit against Coca-Cola for the wrongful use of their trademark in their advertisement. In the advertisement, a kid is asked to try two samples of cold drinks and was asked which one he liked better. The kids points at one of the samples and says that he did not like the other one. Once both the samples are revealed, it is shown that sample bottle which the kid liked was Thumps-up and the other one was shown to have PAPPI written over it which was deceptively similar to the mark of Pepsi. Other such advertisements by Cola-Cola also went after the solans used by Pepsi which amounted to damaging the repute of Pepsi. In this case, the court held that Coca-Cola is to be held liable on the grounds of disparagement and depreciating the goodwill of Pepsi’s products under Trade Mark and Copyright Act as the registered trade mark was being infringed by the use of the word PAPPI which is deceptively resembling to the trade mark Pepsi.[9]

The above mentioned case laws are a few examples of how a trade mark can be infringed in an advertising which compares two products. The law governing the subject is strict and adequate to protect the proprietors who can reenforce their rights. 

Remedies under Indian laws

Depending upon the product or service in question, there are various remedies that are available to a proprietor. One of the most commonly used and granted remedy by Courts are injunctions. Injunctions are a statutory remedy and they are of two types – temporary and perpetual. Temporary injunction, as the name suggests, is for a stipulated period of time or until any further order of the Court and can be granted at any stage of the suit. Whereas a perpetual/permanent injunction is generally granted upon merits of the suit when the suit is finally decreed. A plaintiff can seek for an injunction restraining further use of the registered mark, or seek damages or account of profits from the defendants.

Although, granting injunctions was the most commonly used remedy by the Indian courts,  the High Courts have recently also started awarding both compensatory and punitive damages for trademark infringement. The trend of awarding such punitive damages in the realm of trademarks started with the case of Time Incorporated v Lokesh Srivastava[10]

Other remedies available may vary according to the facts and circumstances of the case. However, there are certain acts under which a suit can be filed to stop unwarranted use of a registered mark. Amongst others, The Consumer Protection Act, 1986, The Price Competition Act and The Monopolies and Restrictive Trade Practices Act, 1969 can also be invoked in order to gain further protection of a registered mark. Thus from the above it is clear that although it is primarily the Trademark Act, 1999 that provides for remedy in case of trademark infringement, but it can be coupled with other Act to secure a greater protection.

Conclusion

In conclusion, it can be inferred that there are chances of a trade mark infringement in cases of comparative advertisements but, since such advertisements are permissible under law it is always necessary to make sure that the advertisement is made under the limitations and there is no infringement. The statues in India and particularly the Indian Trademark Act, 1999, awards great protection against such infringement. Thus, there is no deficiency in protection under law in such matters. In Indian Courts play a very important role in such cases and have been established important precedents to uphold the law and deliver justice.  Comparative advertisements alone, are not detrimental as they as they increase public awareness and promote competition however, it the duty of the advertisers to be well-aware of that fact that while making such advertisements, the trade mark of another proprietor is not infringed.


Refrences-

[1] Comparative Advertisement and Infringement of Trademark- A perspective for consumers, by sujay_ilnu, Legal Services India.

[2] http://ipindia.nic.in/writereaddata/Portal/ev/TM-ACT-1999.html#s2

[3] http://ipindia.nic.in/writereaddata/Portal/ev/TM-ACT-1999.html#s29

[4] http://ipindia.nic.in/writereaddata/Portal/ev/TM-ACT-1999.html#s30

[5] 1995 SCC (5) 139

[6] Comparative Advertisement: A Perspective, 23 February 2017 by Khurana And Khurana, Mondaq

[7] 1999 PTC (19) 741

[8] 2003 (27) PTC 305 De

[9] A case study approach – an analysis of the infringement of trademark by comparative advertising, by Semila Fernandes, ICTMS-2013, Symbiosis Institute of Business Management, Bangalore, Symbiosis International University

[10] 2005 (30) PTC 3   (Del).

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