In this runway society of competition, nobody has the time to sit back and compare between the options available in the market be it about the educational institutions or about the commodities available in the market. So what exactly does a human mind gets influenced with: a peer review, a quality check, the price or the advertisements? The first three options may have effect over the choice making but these are also dependent upon the fourth check. We are living in a comparative era where advertisers are in all way round trying to leave an impact for long run. Let’s read the impact in a small way.
“Amul” the largest producer of dairy products in our country has even the world record of longest running ad campaign but few people know that the full name of the brand is “Anand Milk Union Limited”. Not only this but a few people will know the fact that the largest diary in Asia is also an Indian brand and that is “Dudhsagar Dairy” in Gujarat. This is just one example of an essential commodity but there are a number of such other examples also present in the market.
Mithila Painting, a well known art style in Bihar, is now being propagated all over the world when a stage has been reached where the art was depreciating and ruled out of culture. Several dance forms, the local forms of Bihar such as Jata-Jatin, Bakho-Bakhain etc are not even known to anyone because these were never covered and propagated but the dance style of Gujarat and Punjab are known to everyone.
Impact of advertisement can be understood with the help of these small examples only. This is the reason why even from an unknown street vendor to a multi-billionaire brand, all focuses upon the advertisements and branding. They have a right to declare their goods as the best even if they are not. In lieu of this proclamation, they even compare with other brands in the market. However, while praising their own products, can a proprietor be allowed to demolish the image of other brands and can they use the competitor’s trademark for comparison without permission? This paper tries to analyze the concept of comparative advertising and its impact as trademark infringement.
DEFINITION OF “TRADEMARK” “INFRINGEMNET” AND “COMPARATIVE ADVERTISING”
Trademark laws strive to safeguard the consumers regarding the origin of their purchases. A trademark is a word, name, or symbol that an owner uses to differentiate the goods from those manufactured or sold by others. In general terms it refers to a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. The main objective behind trademark is to differentiate the products of one proprietor from that of another. Therefore a trademark enables a consumer to identify the goods and their origin. This source and identification being the primary function, the secondary function of trademarks is signifying quality, advertising the product and provide information to the budding consumers.
Section 29 of the Act states that a registered trademark is infringed by any advertisement of that mark, if such advertising takes unfair advantage and is contrary to honest practices in industry or is detrimental to the distinctive character of the mark but it is subject to the exception that nothing 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 is in accordance with honest practices in industrial or commercial matters, and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
Comparative advertisements can be categorized as:
1. They are best in market where they may or may not label a particular product as their competitor.
2. They are superior in a particular class of product or services.
3. Comparing the measurable features.
4. Stating the shortcomings of products of competitors and adjoining their own product as fulfilling all criteria.
5. Concept of trademark blurring; they use the trademark of others for comparison but in a hazel way.
6. Ads which directly claim themselves to be better than any particular brand or product.
“Anything his can do, mine can do better!” This adage sums up the essence of comparative advertising. Advertising and trademark can be said to do a similar kind of function in a way that both aims at emancipation of products, when consumer decides to buy any product that bases upon the idea framed in mind using the images depicted by advertisements.
TRADEMARK AND COMPARATIVE ADVERISING
The advent of comparative advertising has historical traces in the concept of trading itself. One merchant or trader promotes his/her commodity, and to do this, he/she has to tell the consumer about the positive features and advantages of using that particular product over any other product. So, a comparison is but a natural extension, a by-product, of the activity of conducting trade, without which, a merchant cannot sell his/her product. However, when the same merchant intentionally, and without any knowledge, debases or depreciates the rival merchant’s product, then it is an unfair, prejudicial and malicious trade practice, which ridicules the intellectual efforts of the rival competitor to make that particular product, and hence is not comparative advertising to say the least. It is more, an infringement of the rival merchant’s product’s trademark. This is where law intervenes.
Comparative advertisement is an advertisement which explicitly or implicitly identifies a competitor’s goods or services offered by a competitor. Indian Constitution protects the right to free speech and expression under Article 19(1)(a) and in connection to it, SC has also held advertisement to be a part of freedom of speech.
The Trade Marks Act also permits comparative advertisement if the usage is related to honest practices and it has not intended to take any unfair advantages of the reputation of mark or is detrimental to character. However the Act does not define the term “honest practices”, European Court of Justice in Holterhoff v. Freiesleben described it as a duty to act fairly in relation to legitimate interest of the trade mark proprietor, and it seeks to reconcile the fundamental interest of trademark protection with those of free movement of goods and freedom to provide services in free market.
With the growth of market, comparative advertising has increased and there are a number of instances where puff claims were made by the company thus Advertising Standards Council of India generated a code upon advertising where they permitted comparative advertising only in following circumstances:
1. Aspects of comparison between products must be clear.
2. There should not be comparison in a way that advantage is conferred on the advertiser or it suggests that a better price is offered than is actually given.
3. The comparison should be factual, accurate and capable of substantiation.
4. The consumer should not be mislead about the product advertised or the product compared with.
5. The advertisement should not unfairly denigrate, attack or discredit other products.
ASCI have time and again banned several ads which were not in conformity with the Code such as the ad of L’Oreal, CavinKare, Vicco, Complan, CNBC, India Today, Flipkart, BSNL, etc.
After these, Indian Courts also drew a line in exaggerated appraisals and comments which are discussed below.
Reckitt Coleman of India Ltd. v. Kiwi T.T.K. Ltd. the court held that the advertisers are free to claim themselves to be the best in the market and compare themselves with others, even though it is false. But in way of appreciating themselves, they cannot use any phrase defamatory on any other brand, they cannot say that any other brand is bad.
Pepsi Co. Inc. and ors. v. Hindustan Coca Cola Ltd. the court held that generic disparagement without specifically pin pointing the product is highly objectionable. The test laid down for disparagement in this regard was:
Storyline and message to be conveyed.
Karamchand Appliances Pvt. Ltd v. Sh. Daiquiri Brothers and ors. the court held that while a claim that products are best may not provide a cause of action to any other brand of similar product.
Dabur India Ltd. v. Wipro Ltd. Court held that there is no specific path to conclude whether products of any manufacturer are disparaged or not and this depends on the facts and circumstances of each case.
Dabur India Ltd. v. Colgate Palmolive India Ltd. the court held that appreciating one’s product is allowed if the same does not criticize the products of others. Moreover, if the product specifies any advantage over the others, it should be proven evidentially.
These cases upheld the right of producers to puff about their products even if they are false claims but with more new cases coming up before the court, upon the facts and circumstances as well as with new interpretations, court departed from this view and in the case of Colgate-Palmolive (India) Limited v. Anchor Health & Beauty Care Private Limited. The court took a new view in considering the case and for the first time included the concept of “consumer interest”. The court held that in order of recognizing the right of producers to puff about their products, we are neglecting the rights of consumers under Consumer Protection Act, 1986. When two competitors boast about their product without defaming each other, it may benefit them in long run but it frauds the consumer as the false claims of producers will never be known to them. The quality and value of products can only be analyzed by way of comparison. Hence, public interest should be the only parameter to test such ads. The court further held that puff statements result to unfair trade practices under CPA hence it should not be recognized.
Tata Press v. MTNL limited the right to free expression under Article 19(1)(a) given to advertisers. The right cannot be claimed to justify false claims even about their own products. This has been upheld several times by Delhi High Court and Bombay High Court in Hindustan Unilever Limited v. Gujarat Co-operative Milk Marketing Federations and others and said that freedom of expression cannot be used, to show the products of competitors not reliable, to make false, vicious and misleading statements.
To conclude, it can be inferred from the judgements of courts and their interpretations as well as the laws lay down, an advertiser can take part in comparative advertising provided that they are not intended to defame the products of their competitors. Traditionally, a view has been taken that producers are allowed to boast about their product but with evolution, but consumers should not be mislead in any respect. Mistaken impression is allowed but not a false impression.
Gilson, J. Trademark Protection and Practice (Mathew Bender) Cited in The Antitrust Model of extra territorial Trademark Jurisdictions; Analysis and predictions after F. Hoffman-la Roche, Emory International Law Review, 20(2013) 651-698.
Section 2(zb) Trade Marks Act, 1999
Srinivasan, Sruthi “Evolution of Trademark Laws in India”, available at http://www.altacit.com/publication/evolution-of-trademark-laws-in-india/#i_1
Mohammad Amin Naser, “Re-Examining the Functions of Trademark Law”, 8 Chi.-Kent J. Intell. Prop. 99 (2008).
Section 29(8), Trade Marks Act 1999
Section 30(1), Trade Marks Act 1999
B.K. Lenin, A. Babu “Comparative Advertising and Consumer- Changing Dynamics” JIPR, Vol 22, P 113- 120 http://nopr.niscair.res.in/bitstream/123456789/42678/1/JIPR%2022%283%29%20113-120.pdf
M.A. Wani, S. Sharma, “Comparative Advertising: Problems and Potentials under Trademark Law in India” IJLLJS, ISSN: 2348-8212:Volume 3 Issue 1, Page 27- 37.