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INFRINGEMENT OF TRADEMARK BY COMPARATIVE

ADVERTISING

Subject: I.P.R

Submitted to: - Submitted by:-

DR. SHAIWAL SATYARTHI ADHISH PRASAD

Faculty of Intellectual Property Law Roll no: - 904

Semester: - 7th
Session: - 2013-18
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ACKNOWLEDGEMENT

I am very thankful to everyone who all supported me for I have completed my project effectively
and moreover on time. I am equally grateful to my Intellectual Property Law faculty: Dr. Shiwal
Satyarthi Sir. He gave me moral support and guided me in different matters regarding the topic.
He had been very kind and patient while suggesting me the outlines of this project and correcting
my doubts. I thank him for his overall supports. Last but not the least, I would like to thank my
friends who helped me a lot in gathering different information, collecting data and guiding me
from time to time in making this project despite of their busy schedules ,they gave me different
ideas in making this project unique.

Thanking you

ADHISH PRASAD
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TABLE OF CONTENTS

1. OBJEC OF THE STUDY........4

2. HYP0THESIS..................4

3. RESEARCH METHODOLOGY....4

4. SOURCES OF DATA.........................................................................................................4

CHAPTERISATION

i. INTRODUCTION ...........5,6

ii. ADVERTISEMENT AND COMPARATIVE ADVERTISEMENT..................7-9

iii. LEGAL PROVISIONS.....................................................................................10-13

iv. JUDICIAL PRONOUNCEMENTS.................................................................14-20

v. CONCLUSION AND SUGGESTION.........................................21,22

BIBLIOGRAPHY........23
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OBJECT OF THE STUDY-

The object of study is to find out the legal provisions and consequences for the Infringement
of trademark by comparative advertisement.

HYPOTHESIS-

Comparative Advertisings leads to Infringement of Copyright

RESEARCH METHODOLOGY-

Researcher shall emphasize and use the doctrinal method to prepare this project topic.

SOURCES OF DATA-

PRIMARY SOURCES:- SECONDARY SOURCES:-

1. Trade Mark Act, 1999 1. Books on IPR

2. The Constitution of India, 1950 2. Websites

3. Journals

4. Magazines
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CHAPTER 1: INTRODUCTION

In today's world when wide range of products and brands eagerly look for consumer's attention,
advertisements become critical in determining product's future prospects. In the race of
promoting one's own product lot many producers adopt different styles of advertising their
product to attract consumers. Sometimes such advertising can fall between the thin line of fair
and unfair trade practices and can cause legal consequences. Comparative advertising is one such
way. Comparative advertising is a practice where a producer while advertising his product
compares it with the product of the competitor by reference or by any representation of
competitor's product. It may highlight either the similarities in the two products or even
differences. The producer uses the products of its competitor as a standard or benchmark and
claims to exceed it.1

Comparative advertising displays a comparison of two different brands on numbered variants

like price, quality by referring the alternative brand by name, visual illustrations or other
distinctive attributes. Advertisers employ this technique to increase their visibility in the market
and to promote their product.

Comparative advertising is used by many companies as an advertising tool, where an

advertisement for a product or service mentions a competitors product or service and compares
the two, to show that the competitors product is inferior.2

Trade mark owners can sometimes use their registered trademarks to prevent this type of
advertising. Article 5 of the Trade Marks Directive states that a registered trade mark shall
confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all
third parties not having his consent from using in the course of trade an identical sign in relation
to identical goods or services or an identical or similar mark in relation to identical or similar

1
http://www.lexology.com/library/detail.aspx?g=1cf2e8f0-927c-4c06-8d22-5485e6be541e, Accessed on
27/10/2016
2
P.Narayanan, Law of Trademarks and Passing Off (6th edition,).,pp.221
 Page |6

goods and services, where there exists a likelihood of confusion on the part of the public which
includes the likelihood of association.3

The Advertising Directive (Directive (EC) 2006/114) sets out strict rules on comparative
advertising so that comparison of competitors products does not result in trade mark
infringement. Comparative advertising shall, as far as the comparison is concerned, be permitted
when the following conditions are met:
It is not misleading;
It compares the goods or services meeting the same needs or intended for the same purpose;
It objectively compares one or more material, relevant, verifiable and representative features of
the goods/services which may include price;
It does not discredit or denigrate the trademarks or goods and services of a competitor;
For products containing a designation of origin it relates to products within the same designation;
It does not take unfair advantage of the reputation of a trade mark;
It does not present goods or services as imitations or replicas of goods or services; and
It does not create confusion between the advertisers goods or services and the competitors
marks.
A trademark owner can launch an action for trademark infringement against any person who uses
a trademark in comparative advertising in a way that does not comply with the Advertising
Directive.4

However, the debate in regard to the jurisprudential justification of comparative advertising is

always open. Proponents of comparative advertising consider it to be a positive thing in the
world of advertising. They think it is not misleading rather promotes healthy competition. It only
compares goods or services meeting the same needs or intended for the same purpose. As per
their view comparative advertising does not create confusion in the market place between the
advertiser and a competitor. However the opponents of comparative advertising believe that
these kinds of practices hamper the reputation of goods of the competitor. They argue that the
major objective behind comparative advertising is to gain unfair advantage at the cost of
competitor's goodwill.

3
http://mcdanielslaw.com/comparative-advertising-and-trade-mark-infringement/, Accessed on 25/10/2016
4
The Advertising Directive (Directive (EC) 2006/114), Accessed on 21/10/2016
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CHAPTER 2: ADVERTISEMENT AND COMPARATIVE

ADVERTISEMENT

Advertising is an instrument in the hands of the people who use it. If evil men use advertising
for base purposes, then evil can result. If honest men use advertising to sell an honest product
with honest enthusiasm, then positive good for our kind of capitalistic society can result.5

So, advertising is a marketing tool which is used for sales promotion and publicity. Advertising
techniques are used to make the products, services or opinions familiar to the people. It is a
process of communication between the owner of the products or services and consumers. The
consumers become familiar to the effectiveness and utility of the existing products and future
products. It helps the consumer in taking right decision and it is an art of communication
technique by which the Trademark or brand of the product or service is made known to the
people.6

Comparative advertising is an advertising that specifically compares the advertised brand with
another brand of the same product. Comparative advertisement is an advertisement where a party
advertises his goods or services by comparing them with goods and services of another party. It
is an advertisement in which there is specific mention or presentation of competing brand(s) and
a comparison is made or implied. It is a practice of either directly or indirectly naming one or
more competitors in an advertising message or usually making a comparison on one or more
specific attributes or characteristics. It is a technique which compares two or more brands on the
basis of one or more product attributes. So comparative Advertising is a sales promotion
technique that compares the products or services of one undertaking with those of another or
with those of other competitors. It is aimed at to highlight the advantages of the goods or services
offered by the advertiser as compare to those of a competitor.7

5
William Cornish and David Llewelyn, Intellectual Property: patents,copyright,Trademarks and Allied Rights(5th
edition) pp.132
6
http://www.academia.edu/10258880/Comparative_Advertising_And_Infringement_of_Trademarks, Accessed on
26/10/2016
7
http://www.inta.org/index.phpm, Accessed on 29/10/2016
 Page |8

Comparative advertising can broadly be divided into two types firstly, a positive comparison and
secondly, a negative comparison. In the first case, a positive reference is made to claim that
ones own product is as good as the other. In the Second case, a negative reference is made to
claim that ones own product is better than the other. The positive comparison is also known as
indirect comparative advertisement and the negative comparison is also known as direct
comparative advertisement. In both of these cases an unauthorized reference to the competitor is
made."8

Comparative advertising should not be misleading or disparaging. Because the advertisement

campaign on the visual media has an immediate impact on the viewers and possible purchasers
mind. The term disparage means to dishonor (something or someone) by comparison .To
unjustly discredit or detract from the reputation of (anothers property, product, or business). The
term disparagement means a false and injurious statement that discredits or detracts from
reputation of anothers property, product or business. As per New International Websters
Comprehensive Dictionary the term disparage means to speak of slightingly under value or to
bring discredit or dishonor upon. And the term disparagement means the act of depreciating,
aspersing, slighting, or undervaluing, derogation, or a reproach disgrace. As per Oxford English
Dictionary the term disparagement means lowering of value, honour, or estimation dishonour,
disgrace, indignity, discredit something that causes this. Comparison should not be made on
false or misleading statements about the goods or services.9

8
Lectures on Environmental Law, by Dr. Rega Surya Rao, Andhra Law House, pp.97
9
http://www.en.mimi.hu/marketingweb/comparative_advertisement.html,Accessed on 27/10/2016
 Page |9

However, there are some advantages and disadvantages of comparative

advertising.

An honest and effective comparative advertisement has various positive benefits. It can play the
role of a salesman by removing and clarifying doubts about a brand. It influences the purchase
decision of the consumers and helps them to take a right decision. An honest comparative
advertising provides consumers with important information about comparative products and
services. This in turn, assists them to make rational purchase decision. Comparative advertising
leads to product improvement and innovation and this may, in turn, lower the price of the
products or services. Comparative advertising that aims to truthfully inform the consumers about
the transparency of the market.

Again, comparative advertising becomes harmful to the consumers, competitors and the public
at large if it is deceptive, misleading, unfair and disparaging. If it contains a misrepresentation,
disparagement or deception that may mislead or confuse the consumers and may bring about
chaos in the market.10

10
http://www.selvamandselvam.in/blog/comparative-advertisement-and-trademark-infringement/, Accessed on
31/10/2016
 P a g e | 10

CHAPTER 3: LEGAL PROVISIONS

Use of anybody else's trademark in any advertisement becomes an illegal act if it affects the
reputation and goodwill of the trademark. Additionally comparative advertising can also lead to
disparagement of goods. Disparagement of goods is as such not defined in the statute but it can
be understood as an untrue or misleading statement about a competitor's goods made with the
purpose of persuading consumers not to buy the product. Such acts can attract serious legal
liabilities.11

Few provisions under the Trademarks Law come into picture when any comparative advertising
is done. The same is also checked under provisions relating to unfair trade practices.

Section 29(8) of Trademarks Act, 1999 says that,

A registered trade mark 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 trade mark.12

This provision of the Trade Marks Act quite clearly mentions that if an act while advertising a
particular mark is done to take unfair advantage of another mark, or is detrimental to the very
distinct character of the other mark and is also against the reputation of the trade mark, then such
act is an infringement and necessary action can be taken against the infringer. One cannot use the
mark of another for his own profit.

11
Dr. G. B. Reddy, Intellectual Property Rights and the law (Gogia Law Agency, 4th edition, 2004-2005), pp325
12
The Trademark Act 1999.
 P a g e | 11

Section 30 (1) of Trademarks Act, 1999 justifies comparative advertisement

saying:

(1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by
any person for the purposes of identifying goods or services as those of the proprietor provided
the use--

(a) is in accordance with honest practices in industrial or commercial matters, and

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or
repute of the trade mark.13

This provision of Trade Mark Act justifies comparative advertising authorising every person to
use a registered trade mark for the purpose of identifying goods or services of the competitor but
such use must only be done in accordance with the honest and fair trade practices. There should
not be any mala fide intent to gain advantage of competitor's goodwill behind such use.

Directives of The European Council and Views of The International Trademark

Association:
Until very recently comparative advertising was essentially not allowed in European countries.
The European Union first addressed the issue of the comparative advertising in the late 1970s.
According to current European Legislation, comparative advertisement is allowed only if it is not
misleading, compares like with like, does not create confusion and discredit or take unfair
advantage of a rivals trademark.14

13
The Trademark Act 1999.
14
Directives of the European Council
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The 1997 European Council Directive says that comparative advertisement shall, as far as
the comparison is concerned, be permitted if the following conditions are met:
i. it is not misleading
ii. it compares goods or services meeting the same needs or intended for the same purpose
iii. it objectively compares one or more material, relevant, verifiable and representative features
of those goods and services, which may include price
iv. it does not create confusion in the market place between the advertiser and a competitor or
between the advertisers trademarks, trade names, other distinguishing marks, goods or services
and those of a competitor
v. it does not discredit or denigrate the trademarks, trade names, other distinguishing marks,
goods, services, activities or circumstances of competitor
vi. for products with designation of origin, it relates in each case to products with the same
designation
vii. it does not take unfair advantage of reputation of a trademark, trade name or other
distinguishing marks of a competitors or of the designation of origin of competing products
viii. it does not present goods or services as imitations or replicas of goods or services bearing a
protected trademark or trade name. A subcommittee on comparative advertising of the
International Trademark Association has been studying the current state of the Law15

Section 36A of MRTP Act lists several actions to be an unfair trade practice. The
provision which pertains to comparative representation is contained in Section 36A(1)(x)
which reads as follows:
36A. Definition of unfair trade practice: ...."unfair trade practice" means a trade practice which,
for the purpose of promoting the sale, use or supply of any goods or for the provisions of any
services, adopts any unfair method or unfair or deceptive practice including any of the following
practices, namely :
1) the practice of making any statement, whether orally or in writing or by visible representation
which, xxx
(x) gives false or misleading facts disparaging the goods, services or trade of another person.16

15
The 1997 European Council Directive
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Advertising Standards Council of India has specified the certain norms or guidelines which
should be kept in mind while promoting their goods through ads in its Code of Conduct,
1985. The guidelines states as follows:

i. The producer must only make honest representation in the ads;

ii. The ads must not be offensive in any way to the general public;
iii. Ads must not be used for the promotions of products, hazardous or harmful to society or
to individuals particularly minors, to a degree unacceptable to society at large;
iv. Ads must not in any way hamper competition.

However, There is no specific legislative mechanism regulating comparative advertising in India

therefore the precedents set by various courts are followed while adjudging such matters. Though
the Courts rule in favour of liberty to advertise but do not hesitate in granting injunctions and
imposing damages against infringers.17

16
The MRTP Act 1969
17
Justice P.S. Narayanas Intellectual Property Law in India (3rd Edition2005), pp.243
 P a g e | 14

CHAPTER 4: JUDICIAL PRONOUNCEMENTS

1.In Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd.18 , the plaintiff company is engaged
in manufacture and sale of consumer products and one of the products of the plaintiff is liquid
shoe polish being manufactured and marketed by them under the name and style of Cherry
Blossom Premium Liquid Wax Polish. Defendant is also engaged in the manufacture of polish
and one of the brand being manufactured and marketed by the defendant is "KIWI" brand of
liquid polish. It is alleged that the liquid polish being marketed by the defendant and some other
manufacturers have much less wax contents and more acrylic contents as compared to the liquid
polish of the plaintiff. The acrylic base allegedly tends to form a film on the footwear which over
a period of time is liable to crack and thus damage the footwear. It is, therefore, stated that the
liquid polish of the plaintiff having wax rich formula is better than the other polishes. The liquid
polish of the plaintiff is sold and marketed in angle neck bottles which is alleged to have easy
application of the polish to the footwear. An imported applicator is alleged fitted on to the bottle
which is strengthened by chemical flocking on the surface as also by riveting the sponge on to
the plastic applicator base. The plaintiff has claimed its product to be superior than the similar
product of the other competitors in every respect and it is stated that the plaintiff has 68% market
share of the liquid shoe polish whereas the defendant has only 20% of such share.

The defendant with a view to promote its product is displaying an advertisement through the
electronic media. The advertisement of the defendant shows a bottle of "KIWI". From which the
word "KIWI" is written on white surface which does not drip as against another bottle described
as "OTHERS" which drips. The product shown to have been flowing from the bottle of
"OTHERS" is from a bottle marked "Brand X" and allegedly looks like the bottle of the liquid
shoe polish of the plaintiff for which the plaintiff allegedly has a designed registration granted in
1993 under design No. 165756. The bottle of "OTHERS" marked "Brand X" also has a red blob
on its surface, which allegedly represents "CHERRY" which appear on the bottle of the plaintiffs
product. Besides the advertisement in the electronic media, defendant had also been circulating a
"point of sale" poster material at shops and marketing outlets selling similar products. It is

18
1996 PTC (16) 393
 P a g e | 15

alleged that in the said poster material circulated by the defendant, the bottle shown, as
"OTHERS" with a faulty applicator allegedly resembles the applicator of the plaintiff.

It was held that a manufacturer is entitled to make a statement that his goods are the best and also
make some statements for puffing of his goods and the same will not give a cause of action to
other traders or manufacturers of similar goods to institute proceedings as there is no
disparagement or defamation to the goods of the manufacturer so doing. However, a
manufacturer is not entitled to say that his competitor's goods are bad so as to puff and promote
his goods.

2. In Reckitt & Colman of India Ltd. v. M.P. Ramachandran and Anr. 19 , The facts were
that the plaintiff was the manufacturer of blue whitener under the name and style of "Robin
Blue". The" defendant had also started manufacturing blue whitener and with a view to promote
their products they issued an advertisement allegedly making disparaging representations to the
plaintiffs Robin Liquid Blue.

The defendants had depicted the product of the petitioner showing the container in which the
product of the petitioner was sold and in regard to which the petitioner had a registered design. It
was further shown in the advertisement that the product contained in the said container was
priced at Rs.IO.00. By giving the price, the respondent had in no uncertain terms identified the
product of the petitioner since the only blue whitener sold in the market at the relevant time
priced at around Rs.10.00 was the product of the petitioner. It was contended in the
advertisement that the said blue was uneconomical and it was then contended that at Rs.10.00 the
average blue is the most expansive to white your clothes. Thereafter it was added "What is more,
you have to use lots of blue per wash". By making this comment the container of the petitioner
had been shown upside down and had been further shown that the liquid was gushing out. The
object was obviously to show that the product of the petitioner priced at Rs.10.00 gushed out as a

19
1999 PTC (19) 741.
 P a g e | 16

squirt and not in drips while being used and, therefore, it was expansive way to whiten the
clothes.

It was in these circumstances that the Court held that the assertion made in the advertisement was
clearly related to the product of the petitioner in that case and was made with a view to disparage
and defame the petitioner's product. The Court had based its decision mainly on the fact that the
price of the container shown in the advertisement was Rs.10.00 and no other blue whitener
except that of the petitioner was at the relevant time priced at. Rs.10.00 and it, therefore, held
that the advertisement was directly related to the product of the petitioner. The Court, therefore,
in that case restrained the respondent from issuing the advertisement in question.

3.In Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr20., The Pepsi Company
Incorporation along with Pepsi co (India) Holdings Limited and Pepsi Foods Limited, the
appellants (plaintiff's before the trial court) filed suit against Hindustan Coca Cola and others.
Hindustan Coca Cola and others are endorsing their product with the help of a commercial which
shows that the lead actor asks a kid which is his favourite drink. He mutters the word "Pepsi",
which can be seen from his lip movement though the same is muted. The lead actor thereafter
asks the boy to taste two drinks in two different bottles covered with lid and the question asked
by the lead actor is that "Bacchon Ko Konsi pasand aayegi".? After taste the boy points out to
one drink and says that that drink would be liked by the children because it is sweet. In his words
he says. "Who meethi hain, Bacchon ko meethi cheese pasand hai". He preferred the other drink
which according to him tastes strong and that grown up people would prefer the same. And later
the stronger one came out be "Thums Up", and one which is sweet, word "Pappi" is written on
the bottle with a globe device and the colour that of the "Pepsi". Realising that he had at the
initial stage given his preference for "Pepsi" and subsequently finding it to be a drink for kids,
the boy felt embarrassed. There are other commercials by the respondents where the lead actor
said "Wrong choice baby", and that the "Thums Up" is a right choice, and "Kyo Dil Maange No
More" for the appellants products.

20
2003 (27) PTC 305 Del
 P a g e | 17

Here the issue was whether the commercial by depicting that the boy preferred Thums Up as
against "Pepsi" because Thums Up is strong drink while "Pepsi" is for children as children like
sweet, amounts to disparagement or it is only a healthy competition and puffing the product of
the respondents?

Court held that by calling the Cola drink of the appellants "Yeh Bachhon Wali Hai, Bachon Ko
Yeh Pasand Aayegi". "Wrong Choice Baby", the respondents depicted the commercial in a
derogatory and mocking manner. It can't be called puffing up. Repeatedly telecasting this
commercial will leave an impression on the mind of the viewers that product of the appellant i.e.
"PEPSI" is simply a sweet thing nor meant for grown up or growing children. If they choose
PEPSI, it would be a wrong choice. The message is that kids who want to grow should not drink
"Pepsi". They should grow up with "Thums UP". The manner in which this message is conveyed
does show disparagement of the appellant's product.

4.In Hindustan Lever v. Colgate Palmolive (I) Ltd 21 ., Hindustan Lever introduced new
toothpaste called New Pepsodent, claiming to be 102% better than the leading toothpaste.
Advertisement showed New Pepsodent superior in killing germs than any other toothpaste. Lip
movement in the aid indicated Colgate as the other toothpaste referred, although voice muted.
Also, same jingle as used in the Colgate aid is played.

Court held that direct reference about inferiority need not be shown and such reference amounted
to disparagement. Advertisement likely to leave doubt in minds of viewers that Pepsodent was
being compared with Colgate. And injunction was granted by the court.

5.In Dabur India Limited Vs. Colgate Palmolive India Ltd22. , Trade rivalries which lead to
advertisements in which the product of an advertiser is extolled and the rival product deprecated
have led to this suit by the plaintiff Dabur India Ltd. who makes Dabur Lal Dant Manjan
Powder, against the defendant Colgate Palmolive India Ltd. who manufacture Colgate tooth

21
(1998) 1 CompLJ 171 MRTPC
22
1998 (1) SCC 720,
 P a g e | 18

powder. This suit and this application for interim injunction is occasioned by an advertisement
aired on the visual media by the defendant. The sum and substance of the TV advertisement
complained of is that a Cinestar Sunil Shetty is seen stopping the purchasers of Lal Dant Manjan
powders. He further inform them of the ill effects of such Lal Dant Manjan by rubbing it on the
purchaser's spectacles which leave marks which are termed by Sunil Shetty as being akin to
sandpapering. He also endorses the defendant Colgate's tooth powder as being 16 times less
abrasive and non damaging to the spectacles. He is heard telling the purchaser that it is easy to
change spectacles but not the teeth.

Court held that generic disparagement of a rival product without specifically identifying or
pinpointing the rival product is equally objectionable. Cleaver advertising can indeed hit a rival
product without specifically referring to it .No one can disparage a class or genre of a product
within which a complaining plaintiff falls and raise a defense that the plaintiff has not been
specifically identified

6.In Dabur India Limited v. Emami Limited 23 , the Defendant is propagating in the
advertisement that there should be no consumption of Chayawanprash during the summer
months, it is also propagating that the Plaintiff's Chayawanprash should not also be taken during
the summer months as it is not good for health and instead Amritprash, which is the Defendant's
product, should be taken. Such an advertisement is clearly disparaging to the product of the
Plaintiff as there is an element of insinuation present in the said advertisement.

It was held a manufacturer is entitled to make a statement that his goods are the best and also
make some statements for puffing of his goods but the same would not give a cause of action to
other traders a cause of action to other traders or manufacturers of similar goods to institute
proceedings as there is no disparagement or defamation to the goods of the manufacturer so
doing.
Even if there be no direct reference to the product of the Plaintiff and only a reference is made to
the entire class of Chayawanprash in its generic sense, even in those circumstances
disparagement is possible. There is insinuation against user of chayawanprash during the
summer months, in the advertisement in question, for Dabur Chayawanprash is also a
23
2004 (29) PTC 1 (Del)
 P a g e | 19

Chayawanprash as against which disparagement is made. However, a manufacturer is not

entitled to say that his competitors goods are bad so as to puff and promote his goods.

7,In Reckit Benckiser (India) Limited Vs. Naga Limited and Ors24. , the Plaintiff has filed
this Suit for permanent and mandatory injunction, being aggrieved by the Defendant's television
commercial which depicts a woman in an advanced stage of pregnancy needing urgent medical
assistance during a train journey. The doctor calls for hot water and is handed a cake of soap
which she rejects, stating that an antiseptic soap is needed. It is not in dispute that the soap which
was handed over to the doctor is identifiable by viewers as the Plaintiff's product, namely, Dettol
Soap. The doctor further states in the commercial that "at a time like this, you do not need just
antiseptic, you need a protector". The Defendant's Ayurvedic soap is then shown and it is
concurrently stated that it is a body 'rakshak' soap, the first Ayurvedic soap that completely
removes all seven kinds of terms and protects from infection. The Plaintiff's grievance is that this
commercial disparages its Dettol Soap. It is averred that the intention behind the commercial is
malicious, especially in view of the trade literature which shows that Dettol Brand sales are
about 3035 crores out of a total sales of Rs. 230 crores. The Plaintiff has vehemently stressed
that Dettol is the leader in brand equity.

Issue was whether the Defendant could be held to have disparaged the Plaintiff's product even
though no false statements have been made by the Defendant?

And it was held that If a competitor makes the consumer aware of his mistaken impression, the
Plaintiff cannot be heard to complain of such action. I find it difficult, not impossible, to hold a
party liable for libel when all that has been stated by the competitor is the truth. Truth is always a
complete defence against any assault or challenge regardless of whether any damage is sustained
as a result of it. The public perception is that Dettol soap shares the same medicinal and curative
qualities as the Dettol liquid. It matters little whether this misunderstanding has been contrived
by the manufacturer or has developed in the consumers mind independently. If any party, such as
the Defendant, helps in correcting the error, it commits no illegality. The tortious injunction,

24
(26) PTC 535 Del
 P a g e | 20

which is the backbone of the present action, is predicated on falsehood, and in the present
circumstances, the falsehood can be laid at the door of the Plaintiff and not of the Defendant.

8,In Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 25 , Hindustan Lever
Limited(HUL) aired a television commercial which depicted a child being sick because of the
alleged use of Dettol as an antiseptic liquid in bathing water whilst promoting the superiority of
Hindustan Lever Limiteds Lifebuoy Soap. The plaintiff, Reckitt Benckiser filed a suit for an ad
interim injunction against the telecast of the television commercial of defendant Hindustan Lever
Limiteds Lifebuoy Soap, which was disparaging and denigrating the reputation and goodwill of
the plaintiffs product Dettol in the commercial market.

Justice Kailash Gambhir of the Delhi High Court decided that the commercial telecast by the
respondent indeed disparaged the product of the plaintiff and granted an interim injunction to the
plaintiff against the telecast.

9.In Duracell International Ltd v. Ever Ready Ltd,26 the advertisement in question had referred
to the corporate name of the competitor, Duracell Batteries Ltd while depicting the appearance
of a distinctive Duracell battery and without mentioning the brand name. It was held that the
defendant had not infringed the trademark of the plaintiff. Furthermore, although Duracell had
registered its battery as a trademark, it was in copper and black colours, while colours used in the
plaintiffs advertisement were white and black.

Hence, it was held that the defendant had also not infringed that trademark.

25
Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd.
26
(1998) FSR 87
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CHAPTER 5: CONCLUSION & SUGGESTION

After going through various books, online materials and other data sources, the researcher has
concluded that, his hypothesis is false, So, from the above discussion, the researcher is in the
opinion that comparative advertisement should stay. It has many advantages if accompanied with
true facts. It helps the market to be competitive and helps the consumers to decide between two
products or services. Comparative advertising has become more effective and helpful to the
consumers in the era of globalization. Now we are living in the global village. Nature of market,
trade and commerce has completely been changed in this era of globalization. Consumers are
badly in need of more and more information about a particular product or service in order to
make their choice and decision accurate and correct. Here is the importance and efficiency of
comparative advertisement. But, comparative advertisement has many disadvantages and should
not be allowed if it is accompanied with false information about the products and services and
intends to discredit, denigrate or disparage the products or services of rival competitors.
Comparative advertisement will be harmful to the consumer in particular and society at large if it
consists of false, wrong and concocted information. It will become harmful to the rival
competitors if it is accompanied with disparagement.

The researcher is also of the opinion that the existing legal provisions in India are not strong
enough to prevent the evils of disparagement in comparative advertising. In this era of
globalization the sphere of trade and commerce is widening day by day. India is heading to
achieve the status of one of the powerful economic giant of the world. Various foreign
companies including Multinational companies (MNCS) are coming to establish business here.
This has prompted the rapid increase in the war of advertisement among various brand owners. It
is the need of the hour to strengthen the existing legal provisions and/or to introduce a new
provision in the existing Acts to restrict and check commercial disparaging in comparative
advertising. Otherwise Indian courts will be flooded with these types of cases. However, in doing
that balancing of interest must be made judiciously. That is the interest of advertisers in
promoting their products and the interest of rival competitors who are supposed to suffer a loss
from that advertisement. The interest of the public in getting accurate and fair information is also
to be protected.
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In fine, the researcher would like to suggest that more stringent punishment should also be
incorporated in the existing legislations to prevent disparaging in comparative advertisement.
The companies or advertisers should advertise with a view to inform the consumer and not to
attack, criticize, discredit or disparage other products and services directly or indirectly. The
comparative advertisement should be informative and should reflect positive merits of the
products or services.

While a trader is allowed to declare his product as the best in the world, care must be taken while
using the trademark of others. Many of the ads portray the design trademark of their rivals
product in a negative light by damaging the reputation of the product by belittling it. What the
aim of comparative advertising should be is consumer welfare and not a business strategy to
make more money because that does not always go well.
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BIBLIOGRAPHY

PRIMARY SOURCE: -

STATUTE: -

THE CONSTITUTION OF INDIA, 1950.

TRADE MARKS ACT, 1999

SECONDARY SOURCE: -

BOOKS: -

P.Narayanan, Law of Trademarks and Passing Off, 6th edition

William Cornish and David Llewelyn, IntellectualProperty:patents,copyright,Trademarks
and Allied Rights, 5th edition
Dr. Rega Surya Rao, Lectures on Environmental Law, Andhra Law House
Dr. G. B. Reddy, Intellectual Property Rights and the law, Gogia Law Agency, 4th
edition, 2004-2005
Justice P.S. Narayanas Intellectual Property Law in India, 3rd Edition 2005

ONLINE SOURCES-

http://www.lexology.com/library/detail.aspx?g=1cf2e8f0-927c-4c06-8d22-
5485e6be541e/
http://mcdanielslaw.com/comparative-advertising-and-trade-mark-infringement/
http://www.academia.edu/10258880/Comparative_Advertising_And_Infringement_of
_Trademarks
http://www.inta.org/index.phpm
http://www.en.mimi.hu/marketingweb/comparative_advertisement.html
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