COMPARATIVE ADVERTISEMENT AND TRADEMARK INFRINGEMENT:

COMPARISON OF INDIA, US & UK LAWS

- SANJAY KESAVAN1

1
Author is pursuing IVth B.A LLB (Hons) at Tamil Nadu National Law University, Trichy.

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 Table of Contents

1. Introduction

2. Research Problem

3. Research Methodology

4. Research Questions

5. Review of Literature

6. Scope and Limitation

7. Legislations governing Comparative Advertisement

i. USA
ii. UK
iii. India
iv. Analysis

8. Judicial Approach
i. Case Laws
ii. Analysis

9. Comparative Advertisement and social media

i. Hershey v Feastables

10. Conclusion

11. Bibliography

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Case Laws

1. Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd. (India) (1996)

2. Britannia v. Unibic Biscuits India (2007)

3. Jet Airways v. Kingfisher (2007)

4. Tommy Hilfiger Licensing Inc. vs. Nature Labs LLC [2002]

5. British Airways plc and Ryanair Ltd (2001)

List of Abbreviations

CA – Comparative Advertising

TM – Trademark

USA – United States of America

UK – United Kingdom

EU – European Union

EC – European Community

NAD – National Advertising Division of America

NARB – National Advertising Review Board

FTC - The Federal Trade Commission

MRTP – Monopolies Restrictive Trade Practice

ASCI – Advertising Standards Council of India

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Abstract
In this modern era, connectivity to people becomes so easy even though they live across globe.
Companies uses this connectivity to reach consumers and establish their products through
advertisements, these advertisements became face of their products and manufactures desired
to reach majority of people through this means. After Industrialization and Globalization many
players came into the market and number of manufactures for a specific product began to
increase and companies to withstand this competition began Comparative Advertising. It is the
concept of comparing one’s own product to that of competitors product and promoting it
without disparaging the competitor’s product.

This shift from traditional advertisement to comparative advertisement brought in trademark

infringement. Most countries like India do not have a separate legislation to address this
infringement resulting in widely unregulated advertising platform that promotes puffery and
denigration which is an unfair trade practice. In this paper, we will discuss the concept of
comparative advertisement by comparing laws of India, United States of America and United
Kingdom by comparing the nations legislations enacted for this purpose and also trace the
similarity and dissimilarity of statutory provision in the above nations.

We will also discuss the judicial precedents set by court of different jurisdictions. And finally,
will look into social media which at present being a large unregulated platform reaching vast
number of people and companies confront with their competitors in social media to promote
their product which often results in infringement. For this chapter, we take a comparative
advertisement done in YouTube by a chocolate manufacturing brand called Feastables against
Americas multinational company Hershey’s.

Keywords: Comparative Advertisement, Trademark infringement, Puffery, Denigration.

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Introduction

Advertising is essential for success. In order to draw customers, brands lavishly fund the
marketing and branding of their goods and services. Businesses frequently compare their
products to those of their competitors in order to demonstrate their credibility in this highly
competitive marketplace. In this artificial intelligence era, businesses have started adopting a
cutting-edge strategy to outpace their competitors in the race to prove that their products are
the best of the lot. They use a variety of advertising strategies, such as undercover ads and
celebrity endorsements, to draw attention to their products and win over customers.

Customers have witnessed unending product conflicts on their televisions due to trade rivalry
and comparative advertising (hereinafter referred to as CA), which are both dated trends in the
advertising industry. In the 1990s, CA begun to emerge. The Pepsi-Coke war, which occurred
in the nineties, was followed by the Complan-Horlicks conflict, and the most recent conflict in
the records is the Rin-Tide conflict. Each of these advertisements denigrated the competition's
product in order to highlight how popular their own product is in the commercial sector. The
most important aspect to CA is clearly defining the rival products in a decisive yet careful way.
India does not have a dedicated statuary in place to supervise the CA area.

Comparing is legitimate and allowed to some level, but when the CA goes too far and
disparages the goods and services of other companies, the aggrieved party files suit for
infringement. CA has recently grown into a multibillion-dollar industry, and it has presented
courts with fresh, complicated legal problems involving the rights of consumers, marketers,
and their rivals. As in today's world, practically all companies acquire trademark registrations
in accordance with the relevant laws, they may initiate a lawsuit for infringement in relation to
a CA that disparages or impairs one's trademark's reputation.

In this paper, we will be discussing how India, USA and UK manages the issue of CA with
their respective legislations and to what extent these laws protect the trademark of companies
in the contemporary days. In addition to these this paper focuses on judgements of courts in its
respective territory in this issue.

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Research Problem

Comparative advertisement has no standard legislative framework in India which results in

unregulated advertising among competitors and infringement of trademark. The puffery rule
which is currently in function leads to publicizing of false facts that puts consumer under
delusion and evades the concept of informed purchase.

Research Methodology

This research paper uses doctrinal method of research by using books, articles, journals,
legislation and online sources. A comparative analysis is used to analyse three nations
legislation to understand the existing legislations and different nations judicial approach.

Research Questions

1. What are the existing statutory differences in laws of India, United States and United
Kingdom addressing CA?
2. To what extent the laws governing comparative advertisement is effective in contemporary
days?

Review of Literature

1. Comparative Advertisement and It’s Relation to Trademark Violation – An Analysis of The

Indian Statute by Semila Fernandes

This journal approached this subject on a case study basis by comparing four jurisdictions
namely India, U.S.A, China, U.K and European law. These distinctions make us to understand
how courts from specific jurisdiction analyzed comparative advertisement. And this journal
also focuses on impact of CA on consumers and advertisers.

2. Comparative Advertising, disparagement and Trademark infringement in India: An

Interface by Shikha Sharma

This article discusses in detail about the product disparagement and comparative advertising’s
theoretical and statutory framework and it compares product disparagement with Indian
trademark law along with recent judicial trends to that of U.S and U.K courts decisions.

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3. Comparative Advertising in India: Evolving a regulatory framework by Parth Gokhale and
Shriyani Datta

This article reviews the existing statutory regulations in both domestic and international arena
addressing comparative advertisement. It combines both consumers interest and competitors
interest in this issue to arrive an comprehensive framework of regulation.

Scope and Limitation

The scope of this research paper is to address the issue of Comparative advertising in trademark
infringement. And it also focuses on unregulated social media platforms in promoting
advertisement and its impact on trademark of the competitors. This research paper is limited to
the legislations of India, USA and UK and no other countries legislation is taken into account.

Legislations governing Comparative Advertisement

In the United States, CA is defined as “advertising that contrasts other brands on objectively
quantifiable characteristics or cost, and recognizes the option brand by name, representation,
or other distinctive information.”2 The fundamental federal statute that governs commerce and
trade, Title 15 of the United States Code, is where US CA law has its roots. The Federal Trade
Commission (FTC) has oversight over trade and customs under Title 15.

In the European Union (EU), “any advertising which explicitly or by implication identifies a
competitor or goods or services offered by a competitor”3 is referred to as CA. The idea is
expanded upon in Directive 2006/114/EC of the European Parliament and of the Council of
12th Dec 2006 Concerning Misleading and Comparative Advertising, which also establishes
consistent general requirements to harmonize the use of CA between the States.

CA is a relatively new and less established concept in India. It has not been a part of societal
customs for as long as it has in the US or the UK, nor does it have any committed enactment
or heading. Despite the fact that India lacks a dedicated comparative advertising law like those
in the United States and the United Kingdom, the Trade Marks Act of 1999 and the Monopolies
of Restrictive Trade Practices Act of 1984 nevertheless have some influence.

2
Statement of Policy Regarding Comparative Advertising, 16 C.F.R. § 14.15(b) (2012).
3
Directive 2006/114/EC, OJ L 376 at 22, art. 2(c).

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 i. USA

Federal and state law work together when dealing with the law relating to CA in the USA's
self-regulatory code of conduct. The laws are;

1. National Advertising Division

2. The Federal Trade Commission 1914
3. Section 43(a) of the Lanham Act 1946

The National Advertising Division of the Better Business Bureau is one of the key
organizations for regulating advertising and preserving consumer trust in advertising. When a
rival files a complaint with NAD, the defendant is required to either immediately withdraw the
contested advertisement or to promise in writing not to run any further identical advertisements.
If the defendant is not obeying the order, then necessary judgement would be passed and parties
can go for appeal to NARB.

Finally, Section 43(a) of the Lanham Act of 1946 is the only statute that addresses CA. The
Act's primary goal is to safeguard trademark owners from unauthorized uses of their marks that
are anticipated to confuse or deceive consumers. 4

ii. United Kingdom

The European Union Directions serve as the foundation for UK law on CA. The primary forums
for regulating CA include:

1. Trademark Act, 1994 (Section 10(6))

2. Comparative Advertising Directives

In the UK, two European Directives regulate the use of trademarks in CA. The main Directive
governing deceptive and comparative advertising is Council Directive 84/450/EEC, as
amended by Directive 97/55/EC. The next Directive is Council Directive 89/104/EEC, which
establishes trademark law for the member states of the European Union. This Directive is
implemented in the UK in the Trade Marks Act 1994. The Office of Fair Trading and Trading
Standards, two local enforcement agencies in the UK, are responsible for putting the
aforementioned Directives into effect. In accordance with the voluntary norms of behavior, the
trademark holder can also bring the matter before the Advertising Standards Authority.

4
15 U.S.C. § 1052(d) (1996)

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iii. India

The following laws apply to CA in India:

1. The Trademarks Act 1999;

2. The applicable ASCI Guidelines

Following the union of the Trademarks Act of 1999 and the MRTP Act of 1984, the concept of
CA emerges. The UK Trade Marks Act, 1994 (hereinafter referred to as TM Act) served as a
model for the Trade Marks Act of 1999, which was a progressive revision in the field of CA. A
registered trademark is violated by any advertisement of that trademark if the promoter receives
unjustified profit, according to Section 29 of the TM Act of 1999, in particular Section 29(8).
Nothing in Section 29 prevents an advertiser or company from using another's trademark as
long as it is done in a way that is legal and reasonable, section 30(1) of TM Act. 5 Additionally,
the TM Act of 1999's Section 30(2) (a) allowed the use of registered trademarks in connection
with products or services that are suggestive to class, quality etc., The provisions mentioned
above are comparable to Sections 10(6) and 11(2) of the UK Trademarks Act, 1994. In addition
to the above regulations governing CA in India, the "Advertising Standards Council of India
(ASCI)" standards provides justifiable regulations for a CA.

Analysis

It is clear that India has only recently expanded its laws on CA. There is now no fundamental
legal body or unified law that regulates the advertising industry.6 Examining India's CA law
reveals that without a specialized administrative component to oversee it, an inadequate
approach has been followed. Such an approach is insufficient based on a logical premise, as
the specific application of many laws leaves a trail of gaps in any attempt to resolve the issue
in a comprehensive manner. 7

In contrast, the UK has a unique approach to CA in the form of the European Community (EC)
Directive against Misleading Advertising. While in the US, the FTA Act and the Lanham Act
are two notable laws that address CA. Even while the ASCI has the ability to ensure that its

5
Semila Fernandes, "Comparative Advertisement and It's Relation To Trademark Violation – An Analysis Of The
Indian Statute", Journal of Business Management & Social Sciences Research (JBM&SSR) Volume 2, No.6, June
2013
6
Sonal Goel, "Comparative advertisement and the Law: The changing face of market", International Journal of
Research and Analysis, Vol. 2, Issue.3 (2014)
7
Parth Gokhale and Shriyani Datta, "Comparative Advertising in India: Evolving a regulatory framework", 4
NUJS L. Rev. 131 (2011).

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members conform to its standards to a reasonable extent, a problem arises when complaints are
made over the actions of non-members. Also, those standards are only allowed to serve as
recommendations due to the lack of an effective enforcement mechanism.

This non-implementable self-regulation paradigm can be compared to other similar instruments

that have been started in other jurisdictions. To ensure that advertising was "lawful, civilized,
truthful, and honest," the ASA was established. The ability of the ASA to ensure the
enforceability of its orders is a key difference between it and the ASCI. Additionally, the EU
court is referred to in the UK, more authoritative forum whenever the matter has failed to be
resolved by domestic courts there or when there is any doubt regarding particular aspects of
the case. Despite the fact that the UK had its own unique TM Act in 1994, the First Council
Directive 89/104/EEC and Directive 2006/114/EC dealing with European Union legislation
continue to play a significant role but no such clash of laws is seen in India or US laws.

Judicial Approach

1. Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd. (India) (1996)8

Both the plaintiff and defendant engaged in the manufacture of shoe wax polish under the name
Cherry Blossom and KIWI respectively. KIWI in its advertisement claimed its more efficient
than Cherry Blossom as it has less wax more acrylic content which results in shoe damage. It
was depicted in KIWI’s website, a bottle of KIWI that doesn't leak is displayed alongside a
bottle of brand X polish that drips. Brand X is depicted with a cherry-like red glob on its surface
that resembles the plaintiff's bottle. The court held that, the defendant had disparaged the
plaintiff's goods and was ordered to stop doing so when advertising a competitor's product.

The Delhi High Court further stated that although the advertiser may exaggerate the benefits
of his products or claim that they are of higher quality, he must not do so at the expense of the
reputation of his competitors.

2. Britannia v. Unibic Biscuits India (2007)

Unibic launched a new biscuit called ‘Great day’ along with a tagline, “Why have a good day,
when you can have a great day”. It was directly against the Britannia’s Good day biscuit. The
plaintiff claimed that the defendant had violated their trademark registration for "Good Day"
and that they had attempted to highlight it with their tagline. The court gave injunction for

8
63 (1996) DLT 29

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disparaging goods for exaggeration of facts done by the defendant. In considering this issue,
the court considered three factors,

including the purpose of the advertisement,

how it was promoted, and

the message it conveyed to the general public.

3. Jet Airways v. Kingfisher (2007)

Daily flights from Jet Airways and Kingfisher began to New York. Jet set up a hoarding with
the slogan ‘We've Changed’ to launch their campaign. Soon, Kingfisher came up with a huge
hoarding above Jet Airways with a print saying ‘We made them change’. Jet may still seek an
injunction even though there was no criticism of the goods or use of its trademark on
Kingfisher's hoarding because it was directly related to them for misleading information.

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However, Jet quickly decided to remove hoarding, which was a wise decision given that there
is now no legal framework allowing Jet or any other company in such a circumstance to sue
Kingfisher for this kind of advertisement.

4. Tommy Hilfiger Licensing Inc. vs. Nature Labs LLC [2002]9

Nature labs created a pet perfumery named ‘Timmy Holedigger’ along with a slogan in its
trademark stating ‘If you like Tommy Hilfiger, your pet will love Timmy Holedigger’. Tommy
Hilfiger sued Nature Labs, claiming that they were violating their rights to their TM in an unfair
manner. The USA court ruled that because Nature Labs tapped the similarities as a source of
humor and a way to make its customers laugh, it did not violate Tommy Hilfiger's trademark.
Because it utilized the idea of freedom of speech, it was asserted to be a fair parody, which
rejected the plaintiff's complaint of infringement against the defendant.

9
221 F.Supp.2d 410 (S.D.N.Y. 2002)

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5. British Airways plc and Ryanair Ltd (2001)10

British Airways claimed that Ryanair had violated BA's TM. Ryanair had created a CA using a
banner ad with the words "EXPENSIVE BA...DS" inscribed on it. Above all, a pricing
comparison said that BA's airfare was five times more expensive than Ryanair, when in fact it
was just three times more expensive. Ryanair made a false comparison, but the High Court
determined that it did not violate the plaintiff's trademark because the end result would have
been the same as saying that BA was expensive.

Analysis

The Delhi High Court in the KIWI disparagement case stated that puffing of goods is
permissible but it shall not be at the expense of competitors goods. Puffing of goods is
exaggerating of facts of one’s goods to promote its products and it is lawful if the facts which
the product claims to be in its advertisement is false. This suggests that it is okay for the
producer to puff the items, which will undermine the customer rights guaranteed by the
customer Protection Act of 1986.

Even if the producers have benefited, allowing two competitors to promote their items without
damaging one another will ultimately leave the customers vulnerable. The truth about the
fabrications made in the advertisement's claims about the product's quality, worth, and pricing
will only come to light if one trader is impacted by the CA.

10
[2000] EWHC Ch 55

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The Britannia v. Unibic case demonstrated that the Indian law does not encourage businesses
to exaggerate the truth, preventing competitors from acquiring long-term advantages. However,
there is no relevant stated statute to claim that there has been an infringement if the products
of the manufacturer were disparaged because Indian law has no definition of disparaged, unfair
practice and honest practice.

Comparing Britannia and British Airways case it is evident that CA was disallowed by the court
in Britannia case and it rendered justice to good day biscuits market. But when Ryanair claimed
British Airways is five times expensive but in reality, its only three times expensive, the court
did not order any injunction and held Ryanair did not disparage British Airways. This
demonstrates unequivocally that the UK legal system has laxity which hinders the delivery of
justice to the TM owner.

In the Tommy Hilfiger case, the court held that Nature Labs haven’t disparaged Tommy’s
product and the slogan is viewed as humour to make people laugh. But Timmy Holedigger is
similar to that of Tommy Hilfiger and it may lead to production of copy products which would
result in denigration of Tommy’s products. For example, Bisleri’s water bottle is produced in
different names namely brislei, bsrilie and so on. Its infringement of Bisleri’s design and
Trademark and it would also affect its sales.

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Regarding the Jet Airways case mentioned above, Indian law does not allow for Jet Airways to
receive justice or for Jet to prevail in a lawsuit against Kingfisher because Kingfisher has not
made any TM references about Jet on its hoarding. However, placing the hoarding directly
above Jet is not a fair trade itself.

Comparative Advertisement and Social Media

Companies tend to promote their product through all means in order to outstand the competition
among competitors. The year 2023 is witnessing the rise of Artificial Intelligence (AI) era,
every information we need is procured within seconds and people are more tend to move
toward this modern technology. In the same way, advertising also seen a shift in phase earlier
advertisement were done through newspapers, magazines, posters, bill boards, hoardings,
television ads in large scale for vast audience.

At present the mode of advertisement became more personalised, people receive ad based on
their likes, needs and purchasing power. Companies began to target their audience from
traditional large scale approach to individual approach. For example, Instagram uses algorithm
to reach its users with personalised feeds and ads. The likes, search history, screen time and our
recent activities is monitored by third parties and such information is imbibed in algorithm of
Instagram to show us desired content and ads at times.

The ads we see in digital platforms often puff their own product without any scientific facts,
denigrate competitors’ products and infringe TM rights of the registered TM owners. Since
most of the social media like YouTube don’t have censorship and regulatory body to oversee
the content, companies started to trash talk their competitors in such platforms to promote their
products.

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Let’s take a look into this picture, taken from Mr Beast YouTube channel, where it’s written on
the wall Hershey’s sucks and a person is throwing Hershey chocolate bar into trash can saying
“I would never eat Hershey in my lifetime”, it is done to promote chocolate bar from another
brand called Feastables. Hershey is a American multinational company founded by Milton S
Hershy in the 1900s they are one of the largest producers of chocolates in the world and
American market is mostly dominated by giants like Hershey’s and Mars. In the year of 2021,
Jimmy Donaldson popularly known as Mr Beast founded a chocolate brand called Feastables.
Jimmy owns a YouTube channel called Mr Beast with whooping 203 million subscribers
currently making him one of the largest influencers on internet. He’s also an entrepreneur now
by establishing his own merchandise and chocolate brand. In order to promote feastables, they
used CA against their competitor Hershey by comparing Hershey chocolate bars with feastables
in YouTube videos by denigrating it quality and taste.

As we seen earlier, in USA there’s National Advertising Division to oversee infringement of

the competitors rights and Section 43(a) of Lanham protect trademark rights of the of the owner.
In this present case which is one of the many examples related to the issue, the trademark of
Hershey is denigrated in the name of promoting one’s own brand. Since its one of the largest
YouTube channels in the community the impact of this promotion surely will have a impact on
its competitors. According to Indian context, degrading one’s product to promote theri own
product is strictly prohibited as its evident through precedents. But in USA, no legal action
was taken against Feastables or promoters of the brand in this CA.

Conclusion

Based on the comparative analysis of US, UK and India legislation, it has been determined that
CA uses both positive and negative references. Positive references imply that a competitor
asserts that his goods are on par with those of the rival. This shows that it is widely accepted
for a trademark to be misappropriated when it enjoys the goodwill and reputation of a well-
known brand. Negative references imply that one rival believes his own products to be superior
to the other's and that the competitors' products are ridiculed, which denigrates the items. Every
jurisdiction has handled different situations in accordance with their own assessment and based
on the existing laws regarding the ideas of deceiving and defaming the products of competitors.

Puffery has no regulations in India and it is unfair for a competitor to puff his goods with false
facts. Puffery should be brought under ASIC regulations because it results in adverse effects
on consumers who at first blindly believe the false claim of the product. Existing legal

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framework shall be strengthened in respect to CA to streamline the advertisement and there
should be checks and balance on social platforms which is currently the largest unregulated
medium for publicizing information. India shall adopt necessary laws advertisement division
form European union directives and UK law which has been adopted earlier in Trademarks act.

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