This article on COMPARATIVE ADVERTISEMENTS IN TRADEMARK REGIME is written by Shruti. A 4th year student from BMS College of Law, and an intern at Legal Upanishad.
An advertisement is a method of showing off or communicating one’s aspects, features, characteristics of a product by attractively representing them so that the consumers can buy their products. Advertisements Create a brand image to the public, traditionally advertisements were made to attract the customers by highlighting their product or services but nowadays, most of the commercials appears to be comparative advertisements. This has created issues like disparagement, unfair competition, and trademark infringement.
We all have watched TV, you might have noticed a company or a brand, to portray his goods are the best often compares the advantages of his goods to other companies. Some blur the brand name and some don’t, there is an old ad by Pepsi where a little boy uses Coca-Cola tins as a stand and buys Pepsi tins from the vending machine so, people can immediately recognize the product because of their brand name, the shape it has and any other familiar things.
Well, now the question is, is this even legally right? Trademarks distinguish one brand from another so, is it not a violation of trademark holder’s rights? Can a person use their competitor’s trademark for comparison purposes? and so on. Let us understand these questions from this article which focuses on comparative advertisements in trademark regime.
The term comparative advertisement describes the advertisements where a brand compares its services or goods with other brands’ goods or services. The UK Regulation defines comparative advertisement as” explicitly or by implication, identifies a competitor or goods or services offered by a competitor”. Trademark infringement means anyone uses a mark that is not his and the logo or name is very similar to the one who created it. This helps in consumer awareness and consumers to understand the value, quality, price, etc. of a product. Comparison is variable in nature, it may be a positive comparison or a negative comparison between the products. The business may not only highlight their unique selling point but also bring the knowledge about their product to the customers by comparing themselves to other businesses.
COMPARATIVE ADVERTISEMENTS IN TRADEMARK REGIME
After the legalization of Comparative Advantage in India, a brand could benefit the consumer by presenting the particular information of their goods and services by comparing it with others and also increasing public awareness. Registering trademarks under the Trademark Act 1999 differs certain marks from others and makes it a distinct identity. So, to spread awareness to the public, advertising by comparing one good from another, acts as a great tool.
So, using the trademark of another person for comparative advertising is considered to be the use of their trademark? The answer is no. Under section 30(1) of the Trademarks Act, using a registered trademark to identify the services and goods of the owner, provided the use:
- Are according to the honest practices in commercial or industrial matters.
- Is not to take unfair advantage of the unique character of the trademark.
STATUTORY LAWS ON COMPARATIVE ADVERTISEMENTS
These are the laws available on the comparative advertisement and use of someone else’s trademark are as follows:
- Section 29(8) and section 30(1) of the Trademarks Act permits comparative advertisement.
- As long as being honest, there is no wrong in showcasing the merits of the products by comparing them with other registered trademarks to identify them.
- It is not considered as infringement only if the mark that is used is not in under honest practices.
- Industry or statutory codes of conduct are not considered to be a guide that is sufficient as to whether an action done is honest for sections 30 and 29(8).
- The general public should be used to these types of advertising.
- A misleading advertisement is not honest for the purpose of the above-mentioned sections.
- The advertisement, if it is considered as a whole and justifies the given description then it is not misleading for any interlocutory purposes, the advertisement should be permitted.
CONSTITUTIONAL ASPECTS AND THE BENEFITS OF COMPARATIVE ADVERTISEMENTS
Article 19(1) (a) talks about the fundamental rights to free speech which includes commercial speech. The trader can give every information regarding his products to the customers for their own benefit. Even if this kind of advertisement is criticized by the court it is not clear how comparative advertisement by the owner falls under restriction. This article also includes the right to information, so the consumer has the right to know and receive information. Therefore, the consumers through advertisements have the right to get educated, the right to know and to receive information.
The benefits of the comparison are, the consumers can make informed, rational, and efficient choices. Also the consumers can have a better understanding of the competitor’s product along with the other products in the market. Things like ‘buyer be aware and seller be aware’ bring a more consumer-oriented market. Without these the consumer’s right to decision making gets diluted. So, comparative advertisements boost innovation, economic growth, the standard of living, quality of products, and market transparency.
LIMITATIONS ON COMPARATIVE ADVERTISEMENTS
Over the years, due to globalization and various platforms for communication. The task of distinguishing one mark from another has become difficult as there is an increase in creativity and competition. So there came up the alternative techniques to showcase one’s product’s characteristics and features which led to an increase in trademark infringement suits. The advertisers didn’t identify the difference between Puffery and Disparagement which automatically led to defamation of Marks of others.
The limitations are provided under section 29(8) which reads as follows:
A registered trademark is infringed if the advertisement:
- Is contrary to honest practices and has taken an unfair advantage in commercial or industrial matters.
- and is defaming the reputation of the trademark.
- Is causing harm to any trademark’s distinctive character.
The Implicit comparative advertisements use no direct information of any particular product, here they blur the product, mute the voice of the character in the advertisement, and may mention the world’s no one brand. These kinds of advertisements are not opposed. But under the explicit comparative advertisement, the product is directly visible to the people. While doing this the advertisers are not allowed to disrepute another product that has a registered trademark. If done by the advertisers, it would amount to misleading or untrue statements.
Section 36 of the MRTP Act talks about unfair trade practice which also acts as a limitation for comparative advertisements. This section mentioned unfair trade practice is nothing but use or supply of any services or goods, promoting the sale, adopting any unfair method, giving false information or misleading facts that disparages the services, trade, or goods of another person.
JUDICIAL PRONOUNCEMENTS ON COMPARATIVE ADVERTISEMENTS
Case: Dabur India Ltd vs. Emami Ltd.
The court concluded that the comparative advertisements can be done only to an extent where it does not criticize another mark. The court also observed that an infringement may occur when the particular product mark is not specifically mentioned in the advertisement. But also when a general reference of an entire class of services or goods is used.
Case: Horlick Ltd vs. Heinz India Pvt. Ltd.
The court held that the judicial approach towards comparative advertisements is now witnessed on consumer-centric. The trademark regime is used as a guiding light towards the determination of disparagement and puffery under the comparative advertisement.
If anyone feels their brand name has been used unfairly, one can approach the ASCI (Advertising Standards Council of India). This body basically gives guidelines based on misleading the consumers by making them take undue advantage of the competitor’s services or products. This body files complaints before their authority to solve the grievances caused by advertising. But the provision made by this body does not have a force of law, they are only recommendatory in nature.
One can make use of the trademarks of their rivals to promote their services and goods but, one should be careful by not disrespecting another person’s products. One can praise their brand in any way without taking undue advantage of someone else’s mark even if their advertisement is not factually correct. The judiciary is often concerned about the prevention of misleading the public. As there are laws such as Trade Mark Act,1999, Competition Act,2000, etc. present in the country. The courts need not concern more about misleading the public and allow airing the comparative advertisements.
1- 112 (2004) DLT 73, 2004 (75) DRJ 356, 2004 (29) PTC 1 Del
2- CS(COMM) 808/2017
3- Suleman, S. (2018, May 3). Comparative Advertising, Disparagement and Trademark Infringement: An Interface. Retrieved from SSRN: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1958894