Protecting Our Heroes and Villains with Copyright

Introduction

British author and comic book writer Alan Moore once said, “I suppose all fictional characters, especially in adventure or heroic fiction, at the end of the day are our dreams about ourselves.” Maybe that is why these fictional characters often remain with us even after the book or movie is over. These characters may arise out of a literary work (such as Black Panther and Hermione Granger) or movies (such as Rocky Balboa and Gabbar Singh) or both. IP protection granted to these characters are covered by different statutes. The literary, artistic, or cinematographic work surrounding a character could be the subject matter of protection granted by the Copyright Act, 1957. Under the Trade Marks Act, 1999, the names and dialogues of the characters as well as their visual representation can be protected with respect to various goods and services. The question arises whether copyright can subsist in the character itself and not just in the surrounding literary, artistic, or cinematographic work?

Are Characters Copyrightable?

Section 13 of the Copyright Act, 1957 grants protection to original literary, artistic, musical, or dramatic works, sound recordings and cinematographic films. Protecting the work from which a fictional character emanates such as the script, visual representation, books or cinematographic work may not always be adequate, as subsequent adaptations or versions of the work (such as books or performances) may keep introducing new attributes to the character. Since a fictional character is the sum of all the traits and attributes attached with it, it needs to be protected as a whole, irrespective of the fact that individual traits were introduced in different works. Recognizing this lacuna, the Courts in various judgements have declared that copyright can subsist in certain fictional characters, even outside of its surrounding work. These precedents will be discussed during the course of this piece.

Why do Characters Need Copyright Protection?

Creators of fictional characters spend a lot of time, energy, and skills, creating iconic and everlasting characters and imparting a unique identity to them. As a result, these characters have a life and recognition value of their own, which is highly vulnerable to be misappropriated and exploited by others. Also, often a lot of money is spent by creators, producers, or publishers in bringing these characters to life in the form of books, comic books, movies, plays, etc. Therefore, copyright protection is needed for certain characters to encourage creators, producers and publishers by safeguarding their monetary and intellectual investment in the said characters. For instance, the cartoon character Chhota Bheem is highly recognizable. The creators of the cartoon had initially invested Rs. 75 Lakh and over the years, the brand value of the character increased to more than Rs. 300 Crores.[1]

Which Characters Can be Copyrighted?

Time and again, the Courts have held that copyrightability of a character depends upon the uniqueness of such character. If the character lacks distinctiveness such that it is not likely to make an impact on the general public, the character cannot be granted copyright protection[2]. For instance, in the case of Arbaaz Khan v. North Star Entertainment Pvt. Ltd[3] (which discussed the copyrightability of Chulbul Pandey from the Dabang franchise), the Bombay High Court, held “As to the general principal that the character is unique and the portrayal of that character, as also the “writing up” of that character in an underlying literary work is capable of protection is something that I think I can safely accept“.

Further, apart from the doctrine of “sweat of the brow” which forms the basis of all copyright protection, for fictional characters courts often employ “well-delineated test” and “story being told test”:

  1. Well-delineated test – The determining factor for this test is whether or not the character is sufficiently delineated or sufficiently unique or distinctive in its essence. In the case of Star India Pvt. Ltd v. Leo Burnett[4] the court opined “The characters…must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears”.
  1. Story being told test – Through this test the Courts determine whether the character is pivotal to the story being told or is it an ancillary or background character. Only the former is capable of being granted copyright protection and not the latter. This means the story must be centered on the character or the character should have sufficient importance in the story, in order for it to be copyrightable.

Who owns the copyright in Characters?

If a fictional character exists in a literary or artistic work, the author or creator of the work owns the copyright in the character, in the absence of an agreement to the contrary. Further, if the character is created as ‘work for hire’, the copyright therein will vest in the employer and not the author. With respect to a fictional character who is a part of a movie or a television series, the producer has copyright over the character, however, not entirely. Certain rights in the character, falling under the purview of personality rights, vest with the actor portraying the said character. For instance, Robert Downey, Jr. will have certain rights for his portrayal of the Iron Man and Sherlock Holmes. This is because the reputation and distinctiveness of the character is built around the actor. In such cases, personality rights of the actor also exist in addition to copyright of the producer and can give rise to conflict in the absence of a contract governing such rights.

It is interesting to note that the Copyright Act does not expressly recognize such personality rights vested in the portrayal of a character by an actor. On the contrary, Section 38(4) of the Copyright Act, 1957 states that, “Once a performer has consented to the incorporation of his performance in a cinematograph film, the provisions of sub-sections (1), (2) and (3) shall have no further application to such performance.” In other words, once any kind of performance has been added to a cinematographic film with due consent, all rights shall vest with the producer.

Conclusion

Fictional characters are often as real as people with a beating heart and are etched in the minds of readers and cinephiles. Additionally, popularity of characters can often result in extremely high brand value as well as high turnovers, specially by way of merchandising. Hence, it becomes important to grant adequate protection to such significant fictional characters. The Indian jurisprudence on copyrightability of a character has come a long way from the case of V. T. Thomas and Ors. vs. Malayala Manorama Co. Ltd.[5], wherein in 1987 the Kerala High Court had restricted the Plaintiff from claiming copyright over characters and the Defendant was permitted to carry on the exploitation of the characters, even after termination of the employment contract. However, the current copyright regime still seems inadequate to give creators their due. The lacuna is being filled to a certain extent by the precedents set by Courts, as they are forming the guiding path for development of this jurisprudence.


[1] https://www.licenseindia.com/archives/article/how-chhota-bheem-has-scaled-upon-brand-licensing

[2] Raja Pocket Books v. Radha Pocket Books, 1997 (17) PTC 84 (Del)

[3] Arbaaz Khan v. North Star entertainment Pvt. Ltd,  2016 (67) PTC 525 (Bom)

[4] Star India Pvt. Ltd v. Leo Burnett, 2003 (27) PTC 81 (Bom)

[5] V. T. Thomas and Ors. vs. Malayala Manorama Co. Ltd., AIR 1989 Ker 49

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Looks Maketh Product: Evolution of Trade Dress Protection in India

Author: Manavi Jain

Introduction

Brand owners are coming up with interesting and unique ways to create a lasting impression on the consumers, be it by way of packaging of the product or by uniquely designing the product itself. It is such peculiar features that are remembered and associated with the brand – sometimes even more readily than the brand name itself! Such is the power of get-up and appearances, (or what we call “trade dress”), when it comes to businesses. Naturally, on account of bearing such strong associative value, “trade dress” forms the subject matter of IP protection.

Trade Dress and the Trade Marks Act, 1999

Trade dress is not statutorily defined in India. A ‘mark’ is defined under Section 2(m) the Trade Marks Act, 1999 as:

“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; (emphasis supplied)

From the above, it can be inferred that certain kinds of trade dress may overlap with and fall under the definition of a trade mark. For such trade dresses, a registration may be sought under the Trade Marks Act, 1999. For others (which do not squarely fall under the aforementioned definition of a “mark”), an action may still lie by way of a suit for passing off, as long as certain conditions are fulfilled.

Takeaways from Past Rulings

“The oldest and most traditional definition of trade dress was limited to the overall appearance of labels, wrappers, and containers used in packaging a product.”[1]

The following cases discuss the traditional notions of trade dress in India in the confines of the features/elements of packaging:

  1. Supreme Court made a few significant observations in its judgment in Parle Products (P) Ltd. v. J.P. and Co.[2], which discussed deceptive similarity in product-wrappers of competing biscuit brands. The Appellant’s wrapper (with its colour scheme, general set up and entire collocation of words) was registered under the erstwhile Trade Marks Act, 1940. Tabulated below are the specificities of the “wrapper” of the Appellant’s product as against that of the Defendant’s claims of minute dissimilarities thereof (as mentioned in paragraphs 3 and 5 of the judgement) – both products being biscuit packets:
Appellant’s wrapperDissimilarities claimed by the Respondent’s vis-à-vis its wrapper
Buff ColorDepicted a farm yard with a girl in the center carrying a pail of water, with cows and hens around herBackground of a farmyard house and treesDepicted a picture of a girl supporting with one hand a bundle of hay on her head and carrying a sickle and a bundle of food in the other handThe design of the building depicted is different The words printed on the wrapper are different

Photo is for representational purposes only and is sourced from here

The Representative’s assertions as regards dissimilarities in the wrappers were accepted both by the Trial Court as well as the High Court of Mysore to conclude that a case for infringement or passing off is not made out. The Supreme Court, overruling the findings of the Trial Court as well as the High Court, held “…we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fenceAnyone in our opinion who has a look at one of the packets to-day may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs’ goods, he might easily mistake the defendants’ wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs’. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants’ wrapper is deceptively similar to the plaintiffs’ which was registered. (emphasis supplied).

  1. Delhi High Court’s interim ruling in the case of Colgate Palmolive Company & Anr. v. Anchor Health and Beauty Care Pvt. Ltd.[3], wherein, it was held, “It is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging, etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, getup or layout appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one’s own goods as those of the other with a view to encash upon the goodwill and reputation of the latterColour combination, getup, layout and size of container is sort of trade dress which involves overall image of the product’s features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period.” (emphasis supplied).

Illustrative Cases: Evolving Scope of Protection

Trade Dress in the shape of a bottle

  1. In Gorbatschow Wodka Kg Vs. John Distilleries Limited[4], the Bombay High Court, while adjudicating on the issue whether the unique shape of the Gorbatschow Wodka bottle is eligible for trademark protection or not, observed that “…Section 2(zb) of the Trade Marks Act, 1999 defines the expression ‘trade mark’ to mean “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others” and to include the “shape of goods, their packaging and combination of colours”. Parliament has, therefore, statutorily recognized that the shape in which goods are marketed, their packaging and combination of colours form part of what is described as the trade dress.” (emphasis supplied).

[Photo is for representational purposes only and is sourced from here]

Trade Dress in the get-up of a toy

  1. In Seven Towns v. Kiddland[5], the Delhi High Court was posed with the task of adjudicating upon the unauthorized use of the trade dress in the famous Rubik’s Cube [a cube consisting of 6 different coloured stickers namely particular shades of green, red, blue, yellow, white and orange]. While adjudicating on an application for interim relief, the Court decided in favour of the plaintiff and observed “The arguments of the defendants are that no exclusivity can be claimed in basic colors or the color black which forms the border/cage. The said submissions have no force as the plaintiffs are not seeking protection in any single feature but in the combination of all these features which constitutes the get up of a product namely the combination of shape/size/color-combination/black border of the squares etc…There is also no force in the submission with regard to black grid not being distinctive. The main question being considered was whether the trade dress is inherently distinctive. In order to compare the two products with regard to trade dress, the overall look and appearance of the products and general “impression & idea” left in the mind by the consumer is to be kept in the mind.” (emphasis supplied).

[Photo is for representational purposes only and is sourced from here]

Trade Dress in the get-up of a shoe

  1. In Skechers USA Inc & Ors v. Pure Play[6] , the Delhi High Court had to adjudicate a case where the subject matter was a shoe, with certain “identifying” unique features such as – positioning of responsive points on the sole of the shoe in distinguishing colors, light weight of the shoe, Side “S” logo of Skechers and “Goga Mat” being used in the cushioning of the inside sole of the shoe. A few photographs with the shoe of the Plaintiff (pink) as against the Defendant (black) are given below:

While adjudicating on an application for interim relief, the Court decided in favour of the Plaintiff and observed  “…I am, prima-facie, satisfied that the visual impression gathered from the trade dress of the competing products is that trade dress of the plaintiffs product is substantially copied by the defendants which is likely to result in confusion. There is every likelihood that an unwary and gullible customer may get confused as to the source of origin of the shoes of the defendants, and may assume that the same come from the source of the plaintiff as the shoes of the defendants have a remarkable resemblance with those of the plaintiffsthe several aspects of trade dress are strikingly similar between the shoes of the plaintiffs and those of the defendants and the overall get up and trade dress is also markly similar…” (emphasis supplied).

Trade Dress in the get-up of a dinner plate

  1. In LA Opala R.G. Ltd. v. Cello Plast and Ors.[7], the High Court of Calcutta recognized the trade dress in the patterns on a dinner plate and held that “There is no doubt that the etchings or drawings on the rival plates look similar. The copying of the design is self-evident. All the essential elements of the trade dress, get up and design of the three plates of the petitioner have been copied by the respondent No. 1. It is quite apparent that the arrangements of the twigs, flowers, etc. are the same. The colour combinations are also, to a large extent, similar.” (emphasis supplied). Photographs of the competing products are reproduced below:

The Court also laid down some essential points in relation to enforcement of trade dress, viz., the three basic elements required to be established in a suit for trade dress infringement or passing off:

  • Existence of a protectable trade dress in a clearly articulated design or combination of elements that is either inherently distinctive or has acquired distinctiveness through secondary meaning;
  • Likelihood of confusion as to source, or as to sponsorship, affiliation or connection;
  • If the trade dress is not registered, it must be proved that the trade dress is not functional. If the trade dress is registered, the registration is presumptive evidence of non-functionality.

Conclusion

With brands exploring the different ways in which a product can be presented, the Courts have been forced to expand and liberally interpret the scope of protection of trade dress. What started with recognition and protection in the elements of conventional wrapping/packaging of a product has now evolved to cover that and much more – and the process is still evolving. As long as the “get-up” in question satisfies the above-mentioned conditions, and is proved to be a source identifier, it may fall under the umbrella of protection as a trade dress.

[1] Storck USA, L.P. v. Farley Candy Co. 14 F 3d 311, 29 U.S.P.Q. 2d 1431

[2] AIR 1972 SC 1359

[3] (2003) 27 PTC 478

[4] 2011 (47) PTC 100 (Bom)

[5] I.A. No.13750/2010 in CS(OS) No. 2101/2010

[6] I.A. No. 6279/2016 in CS(COMM) 573/2016

[7] 2018 (76) PTC 309 (Cal)

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Whose Line is it Anyway? Protectability of Slogan Marks in India

Author: Dishti Titus

Introduction

Brands constantly innovate to adopt multiple and unique ways to identify themselves with their offerings with the objective of creating a lasting impression in the minds of consumers. This includes adopting various features such as logos, product names, shapes, colours and even slogans.

The Cambridge online dictionary defines a slogan as ‘a short easily remembered phrase, especially one used to advertise an idea or a product’. A slogan may also be used to describe the character of an idea or product. Some popular slogans which have been adopted by brands over the years include –

  • Nike – “Just Do it”
  • Apple – “Think Different”
  • L’Oreal – “Because you’re worth it”
  • KFC – “It’s finger lickin’ good”
  • Coca-Cola – “Open Happiness”
  • Dunkin’ Donuts – “America runs on Dunkin’”
  • McDonald’s – “I’m lovin’ it”

The Division Bench of the Delhi High Court in the case of Procter & Gamble Manufacturing (Tianjin) Co. Ltd. and Ors. vs. Anchor Health & Beauty Care Pvt. Ltd., 2014(59)PTC 421(Del), has highlighted the following as regards protectability of slogans:

“…

(vii)…slogans or taglines … in advertisements, grab attention and are sometimes better known than the branded products themselves; such slogans/taglines/expressions are marketing and communication tools par excellence and directly impact the consumers by encouraging them to chose (sic) certain goods or services over others; such slogans/taglines/expressions, though may not directly designate particular goods or service but support it in commercial terms by enabling the public to link the slogan/tagline/expression to a specific company or to recall a brand—they are the first line of communication with the consumer;

(viii) The function of a slogan/tagline/expression is to crisply communicate the ability or nature of the goods or services; the same communicate to the consumers the qualities thereof; often it is found that it is such slogan/tagline/expression which lingers in the minds of the consumers and which remains as an after taste of an advertising campaign…

(ix) Slogans/expressions/taglines have indeed become an important tool in the branding and advertisement campaigns, specially in the visual media;

(x) An effective slogan/tagline/expression is memorable and impactful and make the customers feel good about what they are purchasing and foster more efficient purchasing decisions by creating distinction in consumers’ minds;

(xii) Slogans/taglines/expressions though can be descriptive but are not necessarily descriptive; it cannot however be lost sight of that the slogan/tagline, if descriptive, does not serve the purpose for which it is coined and does not justify the high cost incurred in conceiving and popularizing the same. A distinctive as compared to descriptive slogan, conveys the company’s and the product’s essence as well as what it aspires to be and conveys the commercial expression to the consumers. It promotes memory recall;

…”

Slogans and creation of Intellectual Property

As per the Trade Marks Act, 1999, a trade mark includes any device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof that is capable of being represented graphically as well as capable of distinguishing the goods or services of one person from those of others. On the other hand, copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings.

It is natural that when businesses adopt various features such logos, product names, shapes, colours, etc., there is creation of intellectual property. Owing to the investment of time, labour and money by a business towards creation of its intellectual property, the business would seek protection in respect thereof so as to prevent others from reaping benefits of the same. Likewise, businesses tend to allocate and invest a lot of funds for promotion of their brands and products by way of slogans. Such investment is not only limited to the creation of the slogans, but also towards promotion thereof so as to create an association with the brand and products. Given the nature of slogans and the investment that goes into the same, one pertinent question arises – are slogans or tag lines capable of protection under the intellectual property regime?

Judicial Trends Encompassing Protection of Slogans as Intellectual Property

The protectability of slogans under statutes governing trademark and copyright as well as under common law has been deliberated upon by different courts in India.

In Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors., 2003(27)PTC 305(Del), the question before the High Court of Delhi was whether the slogan “Yeh Dil Maange More” is subject to copyright protection. The Court held that advertising slogans are prima facie not protectable under copyright law and may instead be protected under the law of passing-off.

In the case of Reebok India Company v Gomzi Active, 2007(34)PTC 164(Karn), the Karnataka High Court considered whether the slogan “I Am What I Am” had acquired distinctive character owing to use by Gomzi Active. The Court stated that “It has to be established by the person claiming the benefit of distinctive usage that over a period of time the slogan has developed a secondary meaning and a goodwill.” and held that “the trade slogan “I AM WHAT I AM” being more in the nature of a generic phrase has not been shown to have acquired any distinctive character vis-a-vis the goods produced by the plaintiff.”

In Stokely Van Camp Inc. v Heinz India Private Limited, 2010(44)PTC 381(Del), the Division Bench of the High Court of Delhi, dealt with the question of infringement of the registered mark ‘Rehydrate Replenish Refuel’ in relation to energy drinks by the Defendant’s use of the slogan ‘Rehydrates fluids; replenishes vital salts; recharges glucose’. The Court observed “…both products are isotonic drinks. The trade liberally uses such like words or expression in one or the other form. The defendant’s use of the expression does not prima facie appear to be dishonest for the reason that these are words or expressions used commonly to describe what appears to be the functional utility of an isotonic drink.” and held “notwithstanding the fact that there is a registration in favour of the plaintiffs if, the expression which is registered or an expression similar to the one which is registered is used to describe the character of the product then, within the meaning of Section 30(2)(a) of the T.M. Act, 1999, the user will not be guilty of infringement.”

In the case of Godfrey Phillips India Ltd. vs Dharampal Satyapal Ltd. & Anr., 2012(51)PTC 251(Del), the High Court of Delhi, in response to the question – whether the slogans and/or phrases are copyrightable or not, held that “the slogan “Shauq Badi Cheez Hai”, being combination of common words, would not fall within the scope of “Artistic/literary work” under the Act. Slogan “Shauq Badi Cheez Hai” does not appear to be an outcome of great skill, inasmuch as, it uses the short stereo type combination of words. In fact, both the slogans, that is, “Shauq Badi Cheez Hai” as well as “Swad Badi Cheez Hai” are commonly spoken in Hindi language in day to day life. That apart, the slogans, in my view, are not copyrightable.”

Conclusion

Slogan marks find protection and remedies (for breach of rights) under both statutory and common law viz. through infringement and passing off actions. However, in order to claim such protection for rights in slogans (and enforcement thereof), the slogan(s) must satisfy some criteria laid down by the judiciary to qualify for protection in the first place.

Often slogans comprise of a combination of words that are commonly used in relevant trade channels and are devoid of distinctive character. Such slogans are construed as lacking any originality and therefore are generally not considered to be literary works. Accordingly, they do not qualify for protection under copyright law in India.

As for obtaining protection of a slogan under law of trademarks, a slogan is capable of falling within the definition of a mark as specified in the Trade Marks Act, 1999. For a slogan to qualify for trademark protection, it is subject to the same scrutiny as a non-slogan mark. Accordingly, one would need to show that the slogan mark is either inherently distinctive or has acquired distinctiveness as of on the date of application of the mark for registration.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Comparative Advertising – How to walk the tightrope without tipping over!

Author: Janaki Arun

Introduction

One of the biggest contributors to brand recognition is advertising, and for brands in the internet era, it has now become commonplace to take friendly jibes at competitors. However, the line between a friendly jibe and disparagement is as thin as a rail.

Comparative advertising is a marketing strategy in which a brand presents its product/service as being superior to a competitor’s product/service. More often than not, however, the competing product is shown in a disparaging light which then gives courts cause to intervene in order to prevent brands from indulging in unfair and unethical trade practices.

Interestingly, the ongoing pandemic has also not deterred brands from running comparative advertisements. Most recently, in June 2020, a single judge bench of the Delhi High Court, in Cerveciria Modelo De Mexico, S. De .C.V. v. Whiskin Spirits Pvt. Ltd [CS (COMM) 186/2020], granted an ex-parte ad interim injunction preventing the defendant from publishing and distributing an advertisement on the ground that that the plaintiff’s statutory and commercial interests will get jeopardised. The advertisement in question depicted bottles of alcohol maintaining social distance from the plaintiff’s CORONA beer.

Law governing comparative advertising

The Trade Marks Act, 1999 in Section 29(8) provides for instances wherein a trademark may be infringed by an advertisement. Section 29(8) states 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.

On the other hand, Section 30(1) of the Act, culls out an exception to trademark disparagement, by stating that:

(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.”

In addition to the statutory provisions under trademark law, protection against disparagement is also provided under provisions of the Consumer Protection Act, 2019 which places restrictions on unfair trade practices.

In India, the Advertising Standards Council of India (ASCI), a self-regulatory voluntary organization of the advertising industry, whose functions have been recognized by the Supreme Court, also adjudicates upon objectionable advertisements. In its Code for Self Regulation in Advertising, the ASCI provides guidelines on fair competition in advertising, including the ones below:

  1. It is clear that the subject matter of comparison is not chosen in such a way as to confer an artificial advantage upon the advertiser or so as to suggest that a better bargain is offered than is truly the case
  2. the comparisons are factual, accurate and capable of substantiation, there is no likelihood of the consumer being misled as a result of the comparison, whether about the product advertised or that with which it is compared,
  3. the advertisement does not unfairly denigrate, attack or discredit other products, advertisers or advertisements, directly or by implication, etc.

Landmark jurisprudence on comparative advertising

In one of the earliest judicial pronouncements on disparagement in comparative advertising, the Calcutta High Court, in Reckitt & Colman of India Ltd v. MP Ramchandran & Anr. [1999 PTC (19) 741] laid down the following guiding principles on comparative advertising:

i.    a tradesman is entitled to declare his goods to be the best in the world, even though the declaration is untrue.

ii.    He can also say that his goods are better than his competitors’, even though such statement is untrue.

iii.   For the purpose of saying that his goods are the best in the world or his goods are better than his competitors’ he can even compare the advantages of his goods over the goods of others.

iv.   He however, cannot, while saying that his goods are better than his competitors’ say that his competitors’ goods are bad. If he says so, he really slanders the goods of his competitors. In other words he defames his competitors and their goods, which is not permissible.

v.     If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.

In Pepsi Co. Inc. & Ors. v Hindustan Coca Cola Ltd. [2003 (27) PTC 305 (Del)], the Delhi High Court observed that “to decide the question of disparagement we have to keep the following factors in mind namely: (i) Intent of commercial (ii) Manner of the commercial (iii) Story line of the commercial and the message sought to be conveyed by the commercial. Applying these principles, the Court held that the manner of the respondent’s advertisement calling the cola drink of the appellants – “Yeh Bachhon Wali Hai, Bachon Ko Yeh Pasand Aayegi” (this is a children’s drink and only children will like this) was clearly derogatory to the appellant’s product, and is intended to and would cast a negative impression of the appellant’s products in the minds of the consuming public.

In Dabur India Limited v. Colgate Palmolive India Ltd. [2004 (29) PTC 401 (Del)], the defendants aired an advertisement on television wherein a Bollywood actor educated consumers of a ‘lal dant manjan’ powder (red tooth powder) of its ill-effects by demonstrating its harsh effects on a consumer’s spectacles. Thereafter, in the same advertisement, he goes on to endorse the defendant’s COLGATE tooth powder as being 16 times less abrasive than the red tooth powder. The Delhi High Court, while granting an injunction to the plaintiff held that “…generic disparagement of a rival product without specifically identifying or pin pointing the rival product is equally objectionable.” and that “the advertisement campaign on the visual media has an immediate impact on the viewers and possible purchaser’s mind particularly when a well known cinestar is endorsing it.

Thus, the judgements in the Pepsi Co. and Dabur cases took into consideration an extremely important angle to disparagement suits, viz. the impact of the advertisements on a consumer’s psyche and perception of products.

In Gujarat Cooperative Milk Marketing Federation Ltd. v. Hindustan Unilever Ltd. and Ors. [2019 (2) ABR 401], an appeal was preferred by the Gujarat Cooperative Milk Marketing Federation(popularly known as Amul, one of the leading manufacturers of dairy products in India) against an order restraining it from broadcasting two television commercials, in which it compared its ice cream with generic frozen desserts and stated that its products contain 100% milk, whereas the frozen desserts are manufactured using hydrogenated vegetable oils. Although there was no specific reference to the trademark of the respondent, viz. KWALITY in the commercials, the respondent contended that the commercials had an effect of disparaging frozen desserts in general, majority of which are manufactured by it. The appellant contended that at least 30% of the manufacturers of frozen desserts use hydrogenated vegetable oils and therefore, the commercial was based in fact. The division bench observed that the appellant has itself admitted that only 30% of the manufacturers of frozen desserts use hydrogenated vegetable oils (which are allegedly harmful to health), which meant that 70% of the manufacturers do not use hydrogenated vegetable oils. Accordingly, the division bench, in upholding the decision of the single judge bench, held that the appellant had attributed negative qualities to frozen desserts in general and, thereby dissuaded consumers from purchasing frozen desserts (including that of the respondent).

Conclusion

Brands that are looking to explore comparative advertising as part of marketing strategy must keep in mind that courts have over the years come to attribute more and more importance to the impact of advertising on consumer behaviour and purchase patterns. Therefore, the advertisements must be tailored to avoid any disparagement of the competitor’s products/services. Moreover, even while relying on facts, as was done by Amul in the above case, it is important to not pick out facts that will suit the brand’s products, but to ensure that by doing so, it does not inevitably result in miseducation of consumers, resulting in disparagement.

While consumers of above average intelligence are able to discern and appreciate healthy rivalries in advertising, such as those of Burger King and Mc Donald’s, Apple and Samsung, etc., the test to be applied while discerning whether an advertisement is disparaging is the impact it has on an average consumer of average intelligence and the impact on their purchase patterns.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Nature and extent of overlapping protection under trademark and design laws in India

Author: Pranay Bali

Shapes, designs, patterns, etc. applied to products can be protected under trademark laws as well as design laws. Depending upon the nature of use and purpose, a proprietor of such a shape or pattern may choose to protect the same under either of these statutes, viz. the Trade Marks Act, 1999 or the Designs Act, 2000. Once the intellectual property has been registered under a specific statute, it can be protected and enforced solely as per the provisions contained thereunder. However, there has been some uncertainty as to whether and to what extent the relief of passing off (being a common law remedy) can be availed in respect of a registered design, in addition to the relief of infringement of design.

Relevant provisions under the respective statutes

The confusion regarding overlapping protection stems in part from the broad definition of a trademark under the Trade Marks Act, 1999 – “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colour” (emphasis supplied). It is, therefore, evident that visually, the same subject matter could qualify for trademark or design protection. Of course, the essential ingredient for being a trademark, which clearly differentiates it from a mere design is that it must be “capable of distinguishing the goods or services of one person from those of others”. Therefore,only in scenarios where the graphical representation or shape fulfils this requirement, can it be protected as a trademark and remedies of infringement and passing off [under Sections 29 and 27(2) of the Trade Marks Act, respectively] can be available in respect thereof.

The definition of a “design” under the Designs Act clarifies its distinction from a trademark – ““design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means,…but does not include…any trade mark…”. This provision clarifies that a trademark cannot be registered as a design and therefore, simultaneous protection under the statutes is not permissible.

Unlike the Trade Marks Act, the Designs Act does not contain any provision for the relief of passing off. Regardless, there has been longstanding confusion and debate regarding whether the common law remedy of passing off is available in respect of designs or not.

Judicial precedents

The Delhi High Court’s judgment in Tobu Enterprises Pvt. Ltd. v. Megha Enterprises [1983 PTC 359] was one of the earliest decisions on the aspect of concurrent trademark and design protection. The Plaintiff sought a permanent injunction against the Defendant on the grounds of infringement of its registered designs and passing off. The Court held as follows:

“The right against ‘passing off’ is a common law right. But that right is subject to the provisions of a particular statute. In the present case, Section 53 of the Act deals with the remedy of injunction and claim of damages and rendition of accounts. That does not provide for any remedy against any alleged passing off…

Had there been any intention of the Legislature that the passing off would entitle a plaintiff to obtain an injunction, that could have been so expressly stated as had been done in section 27 of the Trade and Merchandise Marks Act, 1958…Therefore, in cases designs are registered under the Act, the doctrine of passing off has no application…” (emphasis supplied)

The Court very clearly stated that the relief of passing off cannot be claimed in respect of a registered design and there is no scope of overlap between these laws. However, in Smithkline Beecham Plc. And Ors. v. Hindustan Lever Limited And Ors. [2000 (52) DRJ 55], the Delhi High Court, while referring to Tobu Enterprises, arrived at a contrary conclusion:

The Plea that concept of passing off cannot be made applicable to a case of design is…without merit…Infringement right accrues on the basis of the provisions of the Design Act whereas the passing off rights accrue on the basis of Common Law rights… It is true that there is no similar section to that of section 27 of the Trade and Merchandise Marks Act in the Design Act. Section 27(2) of the Trade and Merchandise Marks Act gives a statutory recognition to the passing off rights making the said rights a statutory right as well but that does not mean that in absence of a similar provision to that of the provisions of Section 27 in the Trade and Merchandise Marks Act the right of passing off would not be available to a case of design.” (emphasis supplied)

These two judgments, both delivered by Single Judges of the Delhi High Court, had therefore, taken contrary positions on the issue of availability of passing off in respect of registered designs.

In 2013, this issue came up before a three-judge bench of the Delhi High Court in Mohan Lal & Ors. v. Sona Paint and Hardwares [AIR 2013 Delhi 143]. The Plaintiffs, being the owners of design registrations, claimed design infringement as well as passing off. The Court held that

“…a design can be used as a trade mark and if by virtue of its use, goodwill is generated in the course of trade or business, it can be protected by an action in the nature of passing off

…having regard to the definition of a design under Section 2(d) of the Designs Act, it may not be possible to register simultaneously the same mater as a design and a trade mark. However, post registration under Section 11 of the Designs Act, there can be no limitation on its use as a trademark by the registrant of the design. The reason being: the use of a registered design as a trade mark, is not provided as a ground for its cancellation under Section 19 of the Designs Act.” (emphasis supplied)

Accordingly, the Court held that the remedy of passing off would be available to the owner of a registered design if it is being used as a trademark and has become the source identifier of the proprietor’s products. However, the Court held that design infringement and passing off are different causes of action, incapable of being unified in a single suit.

Thereafter, the issue whether the actions of design infringement and passing off of trade dress can be consolidated in a single composite suit was dealt-with comprehensively by a five-judge bench of the Delhi High Court in Carlsberg Breweries A/S. v. Som Distilleries and Breweries Ltd. [AIR 2019 Delhi 23]. Carlsberg had filed the suit seeking reliefs of infringement of design and a decree for injunction against passing off of the trade dress, get up, and label of its bottle for the beer ‘Tuborg’. The Defendant relied on the judgment in Mohan Lal, to contend that design infringement and passing off cannot be unified in a single suit.

After perusing the judgment in Mohan Lal, the Court made an important observation – “if the registered design per se is used as a trade mark, it apparently can be cancelled…however,…as long as the elements of the design are not used as a trademark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a “passing off” claim can include but is also broader than infringement of a trademark, the cause of action against such use lies. (emphasis supplied)

This judgment has clarified that use of a registered design as a trademark is a ground for  cancellation of the design registration under Section 19 of the Designs Act and therefore, passing off cannot be claimed in respect of the exact subject matter forming part of the design registration. It has further clarified that passing off may be claimed in respect of the larger get up, trade dress and presentation of the product. Composite suits for claims of design infringement and passing off have been held to be maintainable.

Recently, in Crocs Inc. USA v. Bata India Ltd. & Ors. [RFA(OS)(COMM) 22/2019 & CM APP No. 22655/2019], Crocs had filed separate suits for design infringement and passing off of the trademark/trade dress in the shape of its ‘Crocs’ footwear. The Single Judge dismissed the passing off suits as not maintainable on the ground that no passing off action is available with respect to a registered design. Crocs appealed against this decision.

During pendency of the appeal, Crocs sought a limited interim relief to the effect that during the pendency of the suit, the judgment of the Single Judge should not prevent the Plaintiff from filing similar passing off suits against other parties.

After a detailed reading of the judgments in Mohan Lal and Carlsberg, the Division Bench granted the interim relief sought by the Plaintiff, holding as follows –

The Single Judge misinterpreted the majority judgment in Mohan Lal to mean that a registered design cannot be protected as a trademark at all…

…during the pendency of these appeals, the impugned judgment of the learned Single Judge will not…bar other STSs of the Plaintiff, whether pending or to be filed against parties (other than the Respondents/Defendants in these appeals) seeking the relief of restraint of passing off qua its registered design used as a trademark/trade dress, get up, presentation of the products.” (emphasis supplied)

The formulation developed in Carlsberg was applied in this order and has generally clarified this aspect significantly in India.

Conclusion

Based on the judicial precedents, the current position on the overlap of trademark and design protection can be summed up as follows:

No passing off claim is available in respect of the exact subject matter forming part of a design registration, because if such subject matter is used as a trademark, the design registration would be liable to be cancelled, as per the Designs Act. A passing off claim may be available in respect of the overall trade dress, get-up, shape, features, combination of colours, etc. of the product (if the same qualify for trademark protection), which are beyond the specific elements of the product registered as a design. Passing off claims of the above nature can be made even during the subsistence of the design registration and can be combined with a suit for design infringement.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

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