- Shubhank Suman
Product advertising is one of the best ways to reach the target audience and to provide product information. However, market actors in recent days often employ unethical advertisement strategies to gain a monetary advantage which can detrimentally harm the reputation of their rivals. Comparative advertising is one such type of strategy.
The European misleading and comparative advertisement directive specified comparative advertisement in Article 2(c), which states “comparative advertising means any advertising which explicitly or by implication identifies a competitor or goods or services offered by a competitor”. In simple terms, a Comparative advertisement is a form of marketing in which a business try to present their products and services superior to its rival by comparing its products with the products of rivals and demonstrating various reasons to make the viewers believe why its goods or services are superior to those of its rivals. The two products can be compared directly or indirectly. If the product of a competitor is used directly, then it is a direct comparison and if the product of a competitor is not directly stated then it’s an indirect comparison. Here we need to understand one thing Comparative advertising does not have only bad impacts, initially, it is considered as beneficial to the consumer as it compares the price, benefit, quality, or other merits of different goods, thus enhances consumer awareness. However comparative advertisement to enhance consumers’ knowledge can only be allowed till the advertisement does not contain any false information or false claims against its competitors, otherwise, it would constitute an act of ‘product disparagement’.
Disparagement, According to Black’s Law Dictionary’ “means to connect unequally; or to dishonor (something or someone) by comparison; or to unjustly discredit or detract from the reputation of (another’s property, product or business); or a false and injurious statement that discredits or detracts from the reputation of another’s property, product or business”. For better understanding, we can refer to the case of Dabur India Limited Vs. Colgate Palmolive India Limited[i] where an actor advertising defendant’s dental paste uses the plaintiff’s (rival) dental paste on the surface of spectacles to show the rival’s product leaves mark on the spectacles in order to prove it less efficient and harmful to teeth. The court in this case observed that defendant’s advertisement is false and detrimental to the reputation of the plaintiff’ hence declared it disparagement. Thus ‘disparagement’ implies false and harmful claims in the advertisement that detrimentally affects the reputation of its rivals. However, when the comparison is not defamatory, libelous, and misleading and is done to highlight the product’s unique features which makes it different from the competitor’s products, in such case it is not referred as disparagement of products. This is because when a comparative advertisement constitutes incorrect facts and claims about the competitor’s, it does not only constitute defamation of competitor’s product but it is also considered as an infringement of the trademark of the competitor. Hence, we can say Indian law permits competitive advertisement as long as the reputation of the rival is not disregarded.
TRADEMARK LAW AND COMPARATIVE ADVERTISING
Trademark basically refers to name and symbol which differentiate one person’s products from another and enables a customer to recognize the products and their sources. Therefore, in the event when an advertiser uses the trademark for comparing its products with its competitor ‘s goods and disparaging them in the process, then such an act committed by the advertiser would not only raise concerns relating to product disparagement but would also raise concerns relating to the infringement of trademarks.
When it comes to comparative advertising and product disparagement, trademark infringement only occurs when the trademark of a rival is used. For instance, we can refer to the case of Duracell International Ltd v Ever Ready Ltd[ii] where an advertisement portraying competitors product without using its brand name and mark is questioned, In the advertisement Ever ready Batteries Ltd portrayed the image of a distinctive Duracell battery, but does not mention its brand name. In this case, the court held that defendant had not infringed the plaintiff’s trademark as there was no mentioning of trademarks. As per section 29 of the trademark act 1999, which deals with comparative advertising,
“A registered trademark is infringed by any advertising of that trade mark 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 trademark.”[iii]
Considering the above discussion, it is clear that product disparagement can only lead to trademark infringement when the trademark of competitors is directly used with dishonest intentions. This concept raised certain questions like what would happen when the product of competitors is used in the advertisement but its brand name or mark is made blurred? It is also not clear what would amount to dishonest intentions. For a better understanding of these ambiguities, we can refer to the advertisement of Patanjali Dantkanti where the product of the competitor was used in such a way that it is completely identifiable by viewers, although it’s name and mark was made blurred. In recent days there’s a new kind of product disparagement surfaces into the market, where companies through hoardings started targeting symbolic slogan of competitors to demean their reputation. We can refer an instance of hoardings war between kingfisher and jet airways where jet airways came up with the slogan of WE’VE’ CHANGED and in reply of that kingfisher came up with the slogan of WE MADE THEM CHANGE. Trademark laws in India though do not expressly provide provisions for the protection of slogans but in the case of Gamble Vs. Anchor [iv] the Delhi high court held that symbols are the collection of words and can also be graphically represented hence it is protected under section 2(m) of the trademarks act. However, due to the limitation of direct use of trademark, trademark laws have been unsuccessful in catering these methods of blurring and using symbols for product disparagement. In these cases, it is also difficult to prove the dishonest intentions of the advertiser as per the doctrine of fair use. The Delhi high court in the case of Colgate Palmolive Company & Anr. v. Hindustan Unilever Ltd [v] came up with the concept of an ordinary person test to establish an honest and fair comparison of trademarks. In this test, it is to find out whether a reasonable person is likely to be impacted by the representation expressed in those advertisements and whether such impact induces him not to purchase the plaintiff’s product. However, even after the evolution of this test, it is difficult for the company to assess how product disparagement affects the reputation of the company’s trademark in the market as this test is based on psychological characteristics that are subjective in nature.
Hence from the above discussion we can infer that Comparative advertisement is allowed in India as long as the competitor’s trademark is honestly used however, it is also evident that relation between the trademark infringement and product disparagement is not completely defined and open to wide interpretation.
COPYRIGHT LAW AND COMPARATIVE DISPARAGEMENT
The relationship between Comparative advertisement and copyright laws is one of the least discussed topics in the field of intellectual property. People generally believe the impact of comparative advertisement is only limited to trademarks laws. however, in reality, the advertisement market has been growing day by day, now advertisement is not only limited to physical products but it has also started promoting literary and dramatic works. For reference, we can take the example of the promotion of a movie in malls. Since advertisement has spread its wings to the copyrightable works too, there is a need to make separate disparagement laws for it. For instance, we can take a hypothetical example for better understanding, let’s assume a production house while promoting its movie, use the dialogue of its competitor’s movie to demean it. Similarly, What would happen when a singer while singing, indirectly use the lyrics of his competitors to derogate it. As per present laws, these types of comparison will neither come under copyright infringement nor under product disparagement as copyright laws apply only when a substantial amount of content is copied while product disparagement applies when content is used directly with dishonest intentions.
In light of the above discussion, we can say that impact of comparative advertisement on trademarks and copyright laws is not properly defined and is a little bit ambiguous in nature. Since the advertisement ‘s role in marketing is now at its peak, the scope of comparative advertising is needed to be tapped in order to cope up with the current realities as It allows consumers to know the differences between two similar products and enables them to make a sound and rational choice. However, we should also not ignore the product disparagement associated with the comparative advertisement and its impact on copyright and trademark laws. It also needs to be properly analyzed and resolved. Therefore, the need of the hour is to come up with balanced laws that provide a broader scope for comparative advertisement along with maintaining its viability in the current scenario.
The author is a 2nd Year Student of NLUO, Bhubaneshwar.
[i] Dabur India Limited Vs. Colgate Palmolive India Limited, 2005 (79) DRJ 461.
[ii] Duracell International Inc v Ever Ready Ltd, ( 1989 ) FSR 71.
[iii] Indian Trademarks Act, 1999, Sec 29 cl.(8).
[iv] Gamble Vs. Anchor, (2016) 234 DLT 331.
[v] Colgate Palmolive Company & Anr. v. Hindustan Unilever Ltd, 2014 (57) PTC 47.