COMPARATIVE ADVERTISEMENTS IN THE CONTEXT OF TRADEMARK AND COPYRIGHT LAWS

Profile of the Author: Bhawna Pawar, student of Dr. B. R. Ambedkar National Law University, Sonipat pursuing B.A. LL.B (Hons.) 2nd year having areas of interest in constitutional law, civil law and criminal law.

COMPARATIVE ADVERTISING

Comparative advertising is a widely used form of commercial advertising in many countries. This type of advertising aims to influence consumer behavior by comparing the product features of the advertiser with those of a competitive product. Comparative claims vary in nature. They can explicitly call a competitor or refer to him entirely. They can emphasize similarities (good comparisons) or differences (negative comparisons) between products. They can say that the advertised product is "better than" (height claims) or "similar to" competition recommendations (equality or solidarity claims). The purpose of this concept is to allow for a reliable (i.e. not misleading) comparison of the product features of one vendor with those of another; such comparisons will definitely involve the use of trademarks associated with the products in question. If there are no provisions governing this, such use may be a violation of trade mark law. There is no Indian regulation that defines this term, but UK law defines comparative advertising as referring to any advertisement “clearly or indirectly, identifying a competitor or goods or services offered to a competitor”.

Comparative advertising is usually legal and permitted if it meets certain basic conditions. The Advertising Standard Council of India (ASCI) in its Code of Conduct for Advertising Content in India, provides a few of the six rules for comparing claims. For example, as long as the ads are clearly "designed for strong competition and publicity", and there is clarity about comparable features, there may be limitations or no problem. In addition, comparative advertising is often used in relation to similar products that meet the same requirements and are intended for the same purpose. Comparisons between competing products should also be accurate and accurate in a way that can be proven. Most importantly, comparisons between products should not mislead consumers about the advertised product or its comparison; and the ad must not unduly harm, attack or undermine other products.

‘Comparative Advertising’ is a term used to describe ads where the goods or services of another trader are compared to the goods and services of another trader. Comparative advertising benefits the consumer as it often compares the price, quality or other suitability of different products, thus improving consumer awareness. However, there is an important issue with this: The development of consumer information can only be achieved as long as the advertising does not contain false information, which is always dangerous when consumer education is provided to organizations with a particular interest.

The Marketing Act, 1999, stipulates cases in which the use of a registered trademark in advertising may be considered infringement. Section 29 (8) of the Act states that infringement occurs when an advertisement in question, (a) is unfairly profitable and contradicts trustworthy practices in industrial or commercial matters; or (b) harms its unique character; or (c) is contrary to the reputation of the trademark. Section 30 (1) provides for the protection of the use of advertising signs in comparative advertisements, repeating key terms from Section 29 (8), stating that advertisements will not be considered infringement if they (a) adhere to reliable industry practices or commercial matters, and (b) misuse or damage a different character or brand reputation.

TRADEMARK

"Trademark" means a mark that is clearly identifiable and that distinguishes one person's goods or services from those of others and may include the design of goods, packaging and color combinations.

"Trademark includes any name, name, mark, or tool, or any combination thereof, adopted and used by a manufacturer or retailer, to identify its goods and to distinguish them from those made or sold by others.

The primary purpose of a trademark is to ‘distinguish one person’s goods from another’19 Thus a trademark enables the buyer to identify the goods and their origin. So if it happens, if

An advertiser uses a competitor's trademark to make comparisons between his property and that of his competitor, and in doing so would be degrading, such an act by the advertiser would not only apply issues related to comparative advertising and product reduction but also ask for issues related to trademark infringement.

LAWS ON TRADEMARK INFRINGEMENT AND COMPARATIVE ADVERTISEMENT

The law 'advertising against the use of a competitor's trademark may be summarized in:

1. The primary purpose of Section 29 (8) and Section 30 (1) of the Trademarks Act, 1999, is to facilitate comparable advertising.
2. As long as the use of a trademark is credible, there is nothing wrong with disclosing the quality of competing goods or services and using registered trademarks to identify them.
3. The employee belongs to the registered owner to demonstrate that the items disclosed in the category section are applicable.
4. There shall be no violation unless the use of the sign is inconsistent with trustworthy practices.
5. The test aims to: Is it possible for a qualified student to say when offered an advertisement that he or she is trustworthy.
6. Legitimate or industrial standards are not sufficient guidance as to whether a particular act is trustworthy for the purposes of Section 29 (8) and Section 30
7. Integrity must be regarded as appropriate in the relevant community of advertisements for goods or services used.
8. It should be borne in mind that the general public is used for these marketing methods.
9. The law does not oblige courts to enforce the law on a level of cleanliness beyond the general public's expectations of advertising.
10. An advertisement, which is very misleading is unreliable for the purposes of section 29 (8) and section 30 (1).
11. The advertisement must be considered complete.
12. If the back of the advertisement, as a whole, proves the meaning and even if it is misleading for the purpose of the meeting, it should be allowed.

Comparative advertisement often selects specific features of competing products and place them next to the consumer. As in the case with Horlicks v. Heinz, rivals have been relieved that some of the features that would have shown them better lighting have not been disclosed. The Delhi High Court in the current case was very clear that it was not obliged to show all parameters, and that it was "open to the advertiser to highlight a special feature ... that could distinguish its product from its competitors… as long as it is true." for comparison, as the court has found, and there is no mandate in law to disclose each and every factor/characteristic in a comparative advertisement.

There were attempts by the plaintiffs to argue that the fundamental right to freedom of speech under Article 19 (1) (a) of the Indian Constitution was granted only to the citizen of India, and not to a business entity. Accordingly, they have attempted to argue that under Article 21 of the Constitution, plaintiffs could properly ban any commercial use of its trademark, which lowers its favor and reputation. These disputes were completely rejected by the Court. It states that advertisements form part of a commercial transaction recorded under Article 19 (1) (a) and may be prohibited only in accordance with the law enacted under Article 19 (2) of the Constitution. It also noted, "In a democratic country, free flow of commercial information is indispensable, and the public has a right to receive the commercial speech. In fact, the protection given to an advertisement under Article 19(1)(a) of the Constitution is a necessary concomitant of the right of the public to receive the information in the advertisement."[1]

The comparative advertisement has some limitations regarding the practice of Unfair Trading. Under the MRTP Act of 1984, a new chapter was amended on improper trading practices where section 36A stipulates that any defective or unethical disclosure of the false or misleading information of another product will result in the destruction of competitors' goods and products. This will directly affect the other person's trade. Any such reduction of comparative advertisement is reviewed and evaluated based on three parameters i.e.

1. That the advertisement contains a false statement that could lead to persuasion and entice a consumer to buy or use goods and products.
2. Whether the advertisement is misleading
3. Ultimately the effect of such an image on end-users or the average person.

CONCEPT OF DISPARAGEMENT

Section 36A of the MRTP Act[2]; showcase the issues on unfair trade practices which ultimately lead to the cause of disparagement of goods and services of another person. There is no specific definition of disparagement of goods available in any statue. The Delhi High Court defined the concept of disparagement stating that the manufacturer can make any statements to indicate that his goods are better than the goods of the competitor and in certain cases can also puff their own goods which will give no cause of action to the trader of another product as there is no disparagement or defamation of the goods. But the manufacturer cannot say that the competitors‟ goods are bad so as to promote and puff their own goods. Therefore CA cannot be allowed if it discredits the TM or the trade name of the competitors.

Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd. (India) (1996) [3]

Applicant Reckitt & Colman manufactures sells waterproof shoe polish under the brand name Cherry Blossom Premium Liquid Wax Polish. Defendant KIWI also participated in the production and marketing of the liquid KIWI polish which in its advertising is superior to the plaintiff as it is alleged that the cherry blossom has a low wax and acrylic content which over time explodes and causes damage to the shoes. This is promoted on the defendant's website which shows a KIWI bottle that does not drip and puts another bottle of label labeled brand X dripping. The Brand X is depicted with a red tube on its face representing a cherry that looks similar to the cherry that appears in the plaintiff's bottle. Defendant also distributed placards with bottles labeled as brand X with the wrong request similar to that of the plaintiff's claimant. The Court held that the defendant was defaming the plaintiff's property and was told to stop advertising the product of his competitors in a defamatory manner. The Supreme Court of Delhi also added that the advertiser may exaggerate the goods or make statements that his goods are of high quality but this should not discredit his competitor[4].

Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr: (2003): [5]

In this example, Pepsi filed a lawsuit against Coca-Cola for their commercial abuse of TM when the lead actor asked a child about his favorite drink and said he liked Pepsi which was evident in his lip movement as it was silenced. The lead character then asks the child to taste two samples of the drink after hiding his identity and asks the child "Bacchon Ko Konsi pasand aayegi"? The kid points to one drink and says that children would prefer it because it is sweeter and says that he does not like that drink. He likes the taste of the other drink and says that it is a stronger drink and has to be consumed by grown-ups. After the lead actor opens the lid of both the bottles, it is revealed that the bottle which the kid likes was “Thumps-Up” while the other had PAPPI written on it which deceptively resembles PEPSI. The kid feels embarrassed as he had earlier liked the Pepsi taste and hence keeps his hands on his hand as a matter of disappointment. In some other advertisements the commercials read the slogan as "Wrong choice baby", and that the "Thums Up" is a right choice, and "Kyo Dil Maange No More" which amounts to damaging the repute of Pepsi. Held: The court held Coca-Cola on the grounds of disparagement and depreciating the goodwill of the plaintiffs‟ products under TM and Copyright Act as the registered TM was been infringed by the use of a Globe Device or the word PAPPI which is deceptively resembling to the TM PEPSI. [6]

CONCLUSION

There is no doubt that comparative advertising is beneficial as it increases consumer awareness and should therefore be allowed. In addition, it empowers the advertiser to market his product according to his superiority over the established products. However, at the same time there should be regulations, to address abuse. If the courts had accepted the proposal that trade disputes should be settled in the market (as courts are not equipped to decide which product is better), it would have created a great prejudice in the public interest; as the question is not to decide which product is better, but to raise public awareness. Because, as we say that comparative advertising increases public awareness, misleading and degrading advertising should not mislead the public.

FREQUENTLY ASKED QUESTIONS

Q1: What do you mean by trademark and trademark infringement?

Trademark is a known mark of identification of any company or an organization which could be a unique name, symbol, logo, image or a design which helps in defining the product and the repute of the company. Infringement of Trademark takes place when a person other than the registered proprietor or registered user, uses the similar mark or a deceptively similar mark with regard to same goods or services for which the mark is registered.

Q2: What is the classification of comparative advertising?

They can be categorized as indirect CA which showcases the features of one product and compares it favorably with all the other competing brands through a generic or an indirect manner. The next form is the direct CA where in the features and attributes of one product are directly compared with the similar features and attributes of another specific competitor. These classifications can further divide into sub categories of positive CA and negative CA. In positive CA the advertiser will try to depict other products features and attributes in a favorable manner which will help him gain advantage and benefits from the association. Negative CA will use defective practices to misguide the customers by degrading the quality and the value system of both the products and services of the competitors.

[1] By Meetali Agarwal, “India: Comparative Advertising And Product Disparagement: Horlicks vs. Heinz”, https://www.mondaq.com/india/trademark/769280/comparative-advertising-and-product-disparagement-horlicks-vs-heinz

[2] The Monopolies and Restrictive Trade Practices Act 1984

[3] Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd. (India) (1996)

[4] Priya Bansal, “Use of Trademark in Comparative Advertising: Situation in India”, Intellectual Property Law

[5] Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr: (2003)

[6] Rashi Saraf and Yamini Das, “Comparative Advertising laws”, http://www.legalserviceindia.com/article/l182-Comparative-Advertising-laws.html

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