The word ‘Disparagement’ carries with itself a special significance in the field of trademarks. Disparagement in the aforesaid area means that when the reputation of a registered trademark is derogated or denigrated by one way or the other, it takes the form of infringement within the functional domain of IPR.
One of the methods by which disparagement of a trademark may occasion is by way of comparative advertisements. When a trader puffs his product to the extent of derogating a competitor’s product, such commercial advertisement would be liable to be restrained on account of being disparaging to the competitor or his products.
Section 29 (4) of the Trade Marks Act, 1999 states that when a mark is used by a person in a course of trade which is identical or similar to a registered trade mark and is used in relation to goods and services different from those of the registered trade mark owner, and such trade mark has a reputation and use of that mark takes unfair advantage of or is detrimental to the reputation or the distinguishing character of that trademark, such person would be liable for infringement of such a trade mark.
As per Article 3(a) of Kerly’s Law of Trademarks and Trade Names by David Kitchen and Anr., comparative advertisements would not lead to infringement or disparagement to the competitor’s trademark if:
- The comparative advertisement does not create a confusion between the trademarks, trade names, distinguishing marks, services or goods etc. of the advertiser and the competitor.
- It does not denigrate the products, trademarks, trade names etc. of the competitor.
- It doesn’t take unfair advantage of the competitor’s reputation of a trademark, trade name, distinguishing marks, etc.
- It does not portray his own goods and services as replicas or imitations of a protected trademark.
The law related to commercial advertisements evolved through a series of cases.
- It was in first in the case of Reckitt & Colman of India v. Kiwi TTK Ltd. (1996) that it was decided that comparative advertisements in itself would not be actionable. An advertiser could claim his products to be best or better than other products in the market, be it true or not. But he cannot say that the products of a competitor in the market are bad, as that would amount to disparagement of the product and hence would become actionable.
- Now, when a rule related to comparative advertisement being allowed with certain conditions had been laid down, a need to widen its ambit occurred. This challenge was reached by the decision in the case of Reckitt & Colman of India Ltd. v. M.P. Ramachandran 2 (1999). In this case it was held that even if there is generic disparagement of a commodity in an advertisement, a manufacturer who has been affected by such generic disparagement can be allowed to claim an injunction on such advertisement.
- Then came the case of Pepsi Co. Inc. v. Hindustan Coca Cola Ltd (2003), the court expressed that there is a difference between comparative advertising and infringement and since comparative advertising is permissible, as has been held in the Reckitt & Coleman v. Kiwi TTK Ltd 7 case, any action of comparative advertising would not be amount to infringement of the trademark ispo facto.
- Following this judgement was a case of Dabur India Limited v. Emami Limited (2004), based on the similar lines of Reckitt & Colman (1999). It held that by saying that Chayawanprash should not be consumed in summers in an advertisement, the defendant conveyed that even plaintiff’s chayawanprash should not be consumed during summers. This would amount as disparagement of the product of the plaintiff as there is an element of insinuation present in that advertisement. Therefore, it further strengthened the generic disparagement theory propounded in the Reckitt & Colman (1999) case.
- A decision on the same lines was held in Dabur India Limited v. Colgate Palmolive India Ltd. 3 (2005), where the issue was related to a commercial, criticizing the use of Lal Dant Manjan powder as being harsh on teeth. The court held that generic disparagement is equally objectionable as it facilitates the advertiser to cleverly hit the product of a rival without pin point specifically to him or his product.
- In a recent case of Hindustan Unilever Limited vs. Reckitt Benckiser (India) Private Limited, 2021, Hon’ble Delhi High Court has observed that it is not necessary to clearly mention the competitor's product and that mere inferences drawn from the advertiser’s depiction of a competitor’s brand, its products, or packaging can be sufficient grounds for a disparagement claim. Any comparative statement which claims that the competing product is inferior, and advertiser’s product is better or superior, is not puffery and would amount to disparagement.
Comments
Post a Comment