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Newer trends to Advertising and Turning pages to the IPR Regime in India



The print and electronic media we are surrounded with heavily comprises of the advertisements associated with various products. These advertisements have taken the most significant place in today’s world and form the most basic element of marketing strategies. However with the advancement of science and technology, newer advertisement techniques are being witnessed regularly, every now and then. Use of animations, digital sign boards and sound marks are to name a few. One of such famous trends is the demonstration of scientific or laboratory observations in relation to the wide range of products ranging from toothpastes to cosmetics. Recently in 2013, the Delhi High Court entertained an injunction matter between two of the renowned tooth paste brands i.e. Colgate and Pepsodent where the Colgate filed an injunction petition in action to the Pepsodent’s controversial advertisement where it demonstrated to be far better than Colgate.[i] While we will discuss the events of this case in the later section, it is relevant to know that such a practice of advertising is not a new recipe in the market. While the brand owners advertise their particular commodities, they are in want of maximum viewer attention however the era of comparative advertising is in trend and the competitors at stretch try to prove their brands far better than the others. In the concept of ‘comparative advertising’, a particular product or service specifically mentions about his competitor for expressing the purpose that why his competitor is not superior to him. Comparative advertising is also defined as the advertising where two or more brands are advertised to one another which lead the audience end to a conclusion. Under the trademarks act[ii], usually a trademark holder has the right to use his trademark over the goods in a way so as to make his goods or services gaining a particular identity and hence distinguishing it to any other product. Similarly a trademark holder has the right to use his trademark for the purpose of advertising. However in the era where the global competition is in heights and with the risk of losing one’s consumers, comparative advertising is on its trend. This raises the concern of the consumers on the other hand. Hence it becomes the need of the hour to fix the law in relation to the comparative advertising. Comparative advertising is not an alien practice which is spread wide in the country. While we refer to the UNITED STATES, the guiding objective of maximizing the consumer welfare and enacting a competitive economy has remained the governmental attitude for a large span of time.[iii] Comparative advertising is very well being recognized in the US economy and enjoys acceptable number of legal protection under various speech laws. In UNITED KINGDOM, similar strands of comparative advertising are into preach.[iv] In November 1995, the European Standing Committee of the UK Parliament debated on the very similar issue of comparative advertising and expressed the views of the government on the same by referring it as a ‘legitimate, useful and effective’ marketing mechanism. No Indian statute defines the theme but an initiation was placed by the Delhi High Court in the case of Reckitt & Colman v. Kiwi.[v] The court in the present case observed that a producer while advertising his products can claim that his products are worlds best or are capable of all the best qualities that one can found in that category of product (even though his claims are untrue). However the court strictly focused on the contention that no advertisements shall be made by the producer where he claims his products to be good and the competitors products to be bad in comparison to his goods. Hence, no advertisement shall bring defamation to the competitor’s goods.[vi] In India, comparative advertising is regulated by the combined tandem of the MRTP[vii] Act 1984 and the Trademarks Act, 1999. The trademarks act which basically deals with the theme provisions under section 29(8) and section 30(1) attempts to create a balance to the conflicting interests of the registered trademark owners and the right of the consumers. Section 29(8) of the Trade Marks Act provides that a registered trademark is infringed by any advertising of that trade mark if such advertising takes unfair advantage and is contrary to honest practices in industrial or commercial matters, is detrimental to its distinctive character, or is against the reputation of the trade mark. Section 30(1) has, however, provided an escape route for what would otherwise have been an infringing act under Section 29, if the impugned use of the mark is in accordance with “honest practices” in industrial or commercial matters. In another landmark case BMW v. Deenik[viii] , the court accepted the contention that the proprietor of the BMW mark cannot restrain a third party from using its registered mark for the purpose of settling the issue that he provides maintenance and repair services in relation to the goods associated with that registered mark. The court was intended into such observation as the advertisement was not creating any misimpression in the minds of the consumers that BMW brand was associated under any circumstance to that third party. In recent times, the Delhi high court in the case of Pepsico Inc and Hindustan Coca Cola Ltd.[ix] held that it is not only the direct naming of the competitors products that is prohibited in the form of comparative advertising but also the use of articles having similar appearances in the advertisement is prohibited at the same time. In this case, the Hindustan Coca Cola used to endorse their product in an advertisement by comparing it with a similar other drink in a ‘Pepsi’ shaped bottle with ‘blue’ cap and a ‘globe’ device in its centre. The bottle was named in the advertisement as ‘Pappi’ which according to the court had very close nexus with the plaintiff’s product. Where the whole class of the products has been changing, the producers have found new ways of competition. ‘Generic Disparagement’ is the new species in the class of disparaging advertising where not a specific product but the ‘whole class of products’ is being compared. One of the leading cases in this regard is Dabur India Ltd v. Emami Ltd.[x] In this case, the defendants in their commercial were involved in comparing their product to the whole class of products namely Chyawanprash. The plaintiff since in the present case, enjoyed a market share of more than 63% hence they were right in claiming a cause of action to maintain the suit. Referring to another judgement of the Delhi high court that was resolved between Glaxo Smithkline & Horlicks on one hand and Heinz, the manufacturers of Complan, on the other hand[xi], the court decided the actions of ‘Complan’ as clearly disparaging as it was involved in calling the petitioners products as ‘cheap’. Highlighting the case of Hindustan Lever Limited[xii] that is one of the recent judgments on this category, the HUL was involved in airing a commercial that focused on a sick boy who has become so due to the continuous use of ‘Dettol’ in the water and the same boy in the later part of the commercial gets healthy due to the use of the defendants product ‘lifebuoy’. In the present matter between ‘Colgate’ & ‘Hindustan Unilever Ltd.’ (HUL), the controversy appeared when brand ‘Pepsodent’ released its new advertisement where it claimed to be 130% superior to the compared product i.e. Colgate. However the court dismissed the case on the theory that the matter in which the commercial was made does not seem to derogate the competitor’s product and a good attempt was made through the advertisement to compare between the two products. In the present advertisement, two boys were being displayed. While the one brushes with ‘Pepsodent’, the other brushes with ‘Colgate. When the teeth of the Colgate brushing boy were focused during the advertisement, there was no cavity or gaps present between them and also both the boys looked equally happy. The court delivered its judgement keeping in mind the essential factors that were given out in the decision of Dabur India vs. Colortek Meghalaya Pvt. Ltd.[xiii] which read that the ‘intent of the commercial’ and ‘the manner of the commercial’ has to be duly noticed while searching for the elements of disparagement. We can presume that comparative advertising is beneficial however its abusive sides do need to be kept under check. The question here is not of settling trade rivalries in the market itself but of the issue of public awareness which shall remain in dark for long in case the courts start accepting the first proposition. Comparative advertising largely leads to mis-confusion and disparagement hence the legal protection is into its excessive need. Hence for the betterment of the producers and consumers, comparative advertising must be practiced within permissible parameters. Better corporate environment can be presumed if the situation of following proper guidelines is observed equally by the product marketers. Such way can lead the IPR laws and the consumer interests go smoothly hand in hand. REFERENCES [i] CS (OS) No. 1588 of 2013 (The judgement can be accessed here at http://indiankanoon.org/doc/51277056/ accessed on 24th January, 2015) [ii] The Indian Trademarks Act, 1999 [iii] Charlotte J. Romano, Comparative Advertising in the United States and in France, 25 Nw. J. Int'l L. & Bus. 371 (2004-2005) [iv] http://www.consulegis.com/news/comparative-advertising-uk-v-europe/ accessed on 28th January, 2015 [v] 1996 (37) DRJ 649 [vi] The same theme was observed in the case of Reckitt and Colman of India v. M.P. Ramchandran and Anr (1999 (19) PTC 741) [vii] The Monopolies and Restrictive Trade Practices, 1984 (herein after “MRTP Act”) [viii] Case C-63/97 [1999] ECR I-905 (ECJ) [ix] 2003 (27) PTC 305 Del [x] (2004) PTC 1 [xi] The Judgement can be accessed at http://lobis.nic.in/dhc/SRB/judgement/22-11-2010/SRB12112010S25772008.pdf accessed on 27th January, 2015 [xii] 200 (2013) DLT 563 [xiii] The case is available at http://indiankanoon.org/doc/82383482/ accessed on 29th January, 2015

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