Written by: VAIBHAV PIMPALE
College: ILS LAW COLLEGE, PUNE
INTRODUCTION:
The COVID-19 pandemic which affected humanity and global business has led everyone to lock themselves in their accommodations didn’t limit Hindustan Unilever Ltd (plaintiff) to move in Bombay High Court against Reckitt Benckiser (India) Pvt. Ltd. (defendant) over the case of comparative advertisement where a Dettol hand wash advertisement allegedly mocked the mark of HUL’s Lifebuoy soap. The Court in this held in favor of the plaintiff by restricting the defendant from broadcasting the advertisement.
Chapter IV of Trademark Law provides for the effect of registration of trademark wherein the registered proprietor is provided with rights of infringement and passing off in cases of infringement of trademark by advertisement.
DEFINITION OF TRADEMARK:
Section 2(b) of the Trademark Act, 1999 defines Trademark as –
“A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors;”
Section 29 (8) provides that, A registered trademark is infringed by any advertising of the trademark if such advertising –
- Takes unfair advantage of and is contrary to honest practices in industrial or commercial matters
- Is detrimental to its distinctive character
- Is against the reputation of the trademark
DEFINITION OF DISPARAGEMENT:
The Black’s Law Dictionary defines disparagement to mean-
- a derogatory comparison of one thing with another
- the act or an instance of castigating or detracting from the reputation of especially unfairly or untruthfully
- a false and injurious statement that discredits or detracts from the reputation of another’s property, product, or business
To satisfy the test of comparative disparagement, the plaintiff has to establish the following elements:
- A false or misleading statement of fact has been made about his product
- That the statement is deceiving or has the potential to deceive, the substantial segment of prospective consumer
- The deception is likely to influence consumer’s purchasing decisions.
To decide the question of disparagement the Court has to keep the following factors in mind:
- Intent of commercial
- Manner of commercial
- The storyline of the commercial and the message sought to be conveyed by the commercial.
The manner of the commercial is important if it is ridiculing or condemning the product of a competitor. Then it amounts to disparagement or otherwise not.
The Madras Court in the case of Annamalayar Agencies v. VVS and Sons Pvt Ltd., referring to various judgments stated out following legal principles in respect of disparagement:
- A manufacturer of the disparaged product which though not identified by name can complain of and seek to injunct such disparagement.
- Generic disparagement of a rival product without specifically identifying or pinpointing the rival product is equally objectionable.
- Advertising campaign on visual media has an immediate effect on the viewers and possible purchasers’ mind particularly when a well-known cinema star is endorsing it.
- There must be a dividing line between actionable statements and those which are not.
- When a claim of superiority over a rival product is made and until the same is proved by a panel of experts, an order of interim nature should operate against those advertisements.
- The advertiser has a right to boast of its technological superiority in comparison with a product of a competitor but he cannot disparage the goods of the competitor.
- If the defendants highlight its better future while comparing its product with that of the plaintiff in an advertisement, no possible objection can be raised thereto.
- Courts will injunct an advertiser from publishing an article if the dominant purpose is to injure the reputation of the plaintiff.
- The degree of disparagement must be such that it would tantamount to defamation.
- An advertiser can say that his product is better than that of his rival but he cannot say that the rival’s product is inferior to his product.
Section 29(9) of the Act provides that, where the distinctive elements of registered trademark consist of or include words, the trademark may be infringed by spoken use of those words as well as by their visual representation and reference in this section to the use a mark shall be construed accordingly.
The cinematograph films which are presented in the audio and video format before the public at large are covered within the ambit of visual representation of Section 29(9). Either said spoken words should cause the infringement by making a misstatement or causing confusion and deception which is the gist of passing off action or in the alternative by way of diluting the diluting character and repute of the trademark which may either be intentional or unintentional.
The reputation of the mark has to be assessed based on several factors, such as publicity and advertising of products carrying the mark, the volume of turnover, and the impact that the mark has created in the minds of the public enabling them to associate the mark with the product.
Article 19 (1) of the Constitution of India guarantees the fundamental right of freedom of speech and expression but such a right is not an absolute right and cannot be allowed to abuse or malign or disparage the product of another.
ADVERTISING AND INDIAN LAWS:
At present in India, there is no central statutory agency or uniform legislation regulating the advertising industry. The Indian advertising market as a whole is regulated and controlled by a non-statutory body, the Advertising Standards Council of India (ASCI).
To regulate advertisement in India ASCI code is adopted which applies to advertisements read, heard, or viewed in India even if they originate or are published abroad so long as they are directed to consumers in India or are exposed to a significant number of consumers in India.
- MISLEADING ADVERTISEMENT:
Any advertisement or promotion through television, radio, or any other electronic media, newspapers, banners, posters, wall writing, etc., to misrepresent the nature, characteristics, qualities, or geographic origin of goods, services, or commercial activities to mislead the consumers.
- CONSUMER PROTECTION ACT:
The Act defines Misleading Advertisement under Section 2(28) of the Act. The provisions pertaining to comparative advertisement are related to unfair trade practices. However, a business entity cannot claim relief against unfair comparative advertising under the Act as Section 35 of the Act doesn’t include a business entity to make a complaint against such practices.
The Consumer Protection Act, 2019 provided penalties for misleading advertisements on the manufacturer or an endorser up to Rs. 1,000,000 or imprisonment for up to two years. For a subsequent offense, the fine may extend to up to Rs. 5,000,000 or imprisonment up to five years. The New Act fixes liability on endorsers considering consumers falling prey to unfair trade practices under the influence of celebrities acting as brand ambassadors.
- CABLE TELEVISION NETWORK REGULATION ACT AND RULES:
Section 6 of the Act, 1995 says that no person shall transmit or re-transmit through a cable service any advertisement unless such advertisement is in conformity with the prescribing advertising code and prescribes for first offense imprisonment which may extend to two years or fine which may extend to Rs. 2000 or both. For every subsequent offense, it can go up to five years or Rs. 5000 or both.
CONCLUSION:
The Advertisement is a marketing strategy to make the public aware of the manufacturer’s product and gain goodwill in the market. The settled law on the subject appears to be that a manufacturer has entitled to make a statement that his goods are the best but for healthy competition in the market and without prejudice to the right of any other trademark proprietor he should abide and comply with rules of law.