Author: Geethika Katakam, student of Alliance School of Law, Bengaluru
Abstract
“Intellectual Property Rights” this concept was not given much importance a decade ago but in the present day this concept is in everyone’s mouth, the need and importance for this concept is growing at high pace in today’s technology driven society. In this paper first I will be giving a simple and brief introduction to the concept of Intellectual Property, then after will discuss about the concept of Trademarks in IPR, followed by the concept of advertisement in Trademark and the intersection between IPR and Advertisement particularly referring to Trademarks. Due to the expansion of the worldwide marketplace and the widespread use of digital media, trademarks are now extremely important in advertising plans. This study explores the complex function of trademarks in advertising, looking at how they are useful tools for differentiating a brand, establishing customer trust, and brand recognition. It also highlights the legal and regulatory frameworks that govern the use of trademarks in advertising and shows how crucial it is to preserve trademarks in order to stop infringement and dilution. This paper explains the strategic value of trademarks in advertising campaigns and the possible risks connected with trademark misuse or theft through case studies and examples.
This paper intends to provide practical advice for businesses and marketers to effectively use trademarks while ensuring compliance with legal requirements and ethical standards. It does this by throwing light on the close connection between IPR and advertising.
Key words: Intellectual Property Rights, Trademarks, Advertisement.
Introduction:
What is Intellectual Property Rights?
“Intellectual Property Rights” this concept was not given much importance a decade ago but in the present day this concept is in everyone’s mouth, the need and importance for this concept is growing at high pace in today’s technology driven society. So what is Intellectual Property? It comes from two words intellect which means the mind and property means something which you have ownership of, in simple terms the property or a product which is an outcome of your skill, mind, money, time and labour is called intellectual property and the exclusive rights given to the author (the person who created the product or the person who gave a tangible form for an idea) of the work to protect his work from being copied are called “Intellectual Property Rights”.
Trademarks under Intellectual Property Rights and its importance:
A trademark is an essential component of intellectual property rights in India; it offers names, symbols, or other indicators that set one company’s products or services apart from another legal protection. Trademark registration, regulation, and protection in India are governed by the Trademark Act of 1999. The objectives of this Act are to protect trademark owner’s rights, stop fraud, and distinguish between common and well-known trademarks. Due to their ability to distinctively identify goods and services, trademarks are essential to branding since they increase brand value and recognition.
Did you ever wonder what is the symbol of ‘TM’ or ‘R’ above the names of your favourite brands? So the mark ‘TM’ is provided to the brand name once they applied for registration of their name or logo and the mark ‘R’ is provided once the registration is successful, brands register their logo or name though trademark to get an extra protection for their brand name so that no other brand will copy their name or logo, this protection of brand name and logo becomes very important because once a brand is well established, we as the consumers start recognising the brand’s products by its name and logo and the goodwill of the brand is known through this trademark so if some other brand uses the brand name and logo of another brand we usually see confusion in the consumers mind, dilution of the brand name, loss in the goodwill of the brand and fall in the sales and revenue of the brand. So trademarks are important to protect the brands, they serve as fundamental pillars in the world of business, safeguarding brand identity, consumer trust, and intellectual property. Trademarks play a crucial role in establishing brand recognition, facilitating business growth, ensuring consumer protection, fostering business reputation, differentiating products in the market, and unlocking licensing and franchising opportunities. Additionally, trademarks enhance brand equity, contribute to a company’s overall value, and act as long-term assets for businesses.
The Role of Trademarks in Advertising in India:
Trademarks, comprising names, logos, symbols, or slogans, serve as unique identifiers for businesses and their products or services. In the cluttered marketplace, trademarks help consumers distinguish between various brands and make informed purchasing decisions. Effective trademarks not only differentiate brands from competitors but also convey attributes such as quality, reliability, and authenticity.
The legal protection afforded to trademarks under the Trademarks Act, 1999 ensures that businesses can safeguard their brand identity and reputation. Registered trademarks grant exclusive rights to the owner, preventing unauthorized use by third parties and reducing the risk of brand dilution or infringement. Advertisers rely on trademark protection to build brand equity and maintain consumer confidence in their products or services.
Maintaining trademark consistency in advertising promotes consumer trust and brand recognition5. Customers gradually form connections between trademarks and the qualities or ideals that the brand represents. Robust trademarks elicit favourable feelings and opinions, affecting the tastes and loyalty of customers. Trademarks are used by advertisers to build enduring relationships with customers and gain a competitive edge in the marketplace.
Trademarks facilitate market expansion and globalization by enabling brands to establish a distinct identity across diverse geographical regions. Through international trademark registration mechanisms such as the Madrid Protocol, businesses can protect their trademarks in multiple countries, facilitating cross-border trade and expansion. Advertisers capitalize on trademarks to enhance brand visibility and credibility in both domestic and international markets.
1.1 Trademark clearance in advertising:
This is a very important step. Before registering any trademark there has to be a search conducted through all the databases, sources to check if the trademark is already registered or not, this is an important step because you can use a trademark which is already in existence, it will lead to many legal consequences, and this is done it to safeguard the trademark This searching of the trademark across many internet sources is called the trademark clearance search. There are different types of searches which has to be conducted, they are: Indian Trademark Office Website Public Search, Ministry of Corporate Affairs (MCA), Company/LLP Name Search, International Applications Designating India under Madrid Protocol, and Common Law Search.
There is no pre-approval body for advertisements in India, and the lack of a single regulator and consistent advertising laws has made it more difficult to protect consumers and other advertising sector stakeholders. Due to the substantial expansion of the Indian market, regulations pertaining to advertising were enacted; nevertheless, the lack of a unified legal framework poses difficulties for the efficient execution of these restrictions.
Because they make it simple for customers to recognise and differentiate between rival products, trademarks are essential to advertising because they lower the cost of consumer searches. By allowing customers to identify a mark as being associated with a certain supplier of goods or services, trademark law safeguards these marks.
1.2 Trademark infringement in advertising:
Trademark infringement in advertising is when a business uses a trademark that is confusingly close to or identical to the trademark of another business without permission, deceiving or confusing consumers. The Trademarks Act, 1999 regulates trademark infringement in India by giving registered trademarks legal protection and prohibits unauthorised use by third parties.
Under the Trademarks Act, 1999, trademark infringement is defined as the unauthorized use of a registered trademark that is identical or deceptively similar to another registered trademark in relation to goods or services that are identical or similar to those for which the trademark is registered. Section 29 of the Act outlines various scenarios that constitute trademark infringement, including the unauthorized use of a mark in advertisements.
Trademark infringement in advertising can lead to consumer confusion regarding the source or quality of goods or services. When consumers encounter similar trademarks used for different products or services, they may mistakenly believe that there is a connection between the two entities or that the products or services come from the same source.
In addition to statutory infringement, advertising activities may also give rise to common law action for passing off. Passing off occurs when a trader misrepresents their goods or services as those of another trader, leading to damage to the goodwill or reputation associated with the genuine goods or services.
In case of trademark infringement in advertising, the aggrieved party may seek various remedies under the Trademarks Act, 1999, including injunctions to restrain further use of the infringing mark, damages or an account of profits, and seizure or destruction of infringing goods or materials.
Trademark infringement in advertising can have significant legal and financial consequences for both the infringer and the aggrieved party. Therefore, it is essential for advertisers to conduct thorough trademark clearance searches and obtain proper authorization before using any trademarks in their advertising campaigns.
1.3 Comparative Advertisement:
The technique of directly or indirectly contrasting one’s products or services with those of rival companies in promotional materials is known as comparative advertising. The Trademarks Act of 1999, the Consumer Protection Act of 2019, and directives from regulating bodies like the Advertising Standards Council of India (ASCI) and the Ministry of Consumer Affairs are just a few of the laws and rules that control comparative advertising in India.
Comparative advertising is allowed in India as long as it is truthful, not deceptive, and doesn’t disparage the products or services of rival companies. Comparative advertising that satisfies these requirements is permitted by Section 29(8) of the Trademarks Act, 1999, as long as it doesn’t violate the Consumer Protection Act of 2019 by being an unfair trade practice.
Advertisers need to make sure that the comparisons they present in their ads are factual, accurate, and verifiable. To protect customers from being misled, all claims and statements in comparative advertising should be backed up by solid data.
Comparative advertising is permitted, but it shouldn’t unduly belittle or degrade rival companies’ products or services. Advertisers are prohibited from participating in unfair commercial practices or making false or deceptive claims about the products of their rival
Advertising Standards Council of India (ASCI) and other regulatory bodies keep an eye on commercials to make sure they abide by relevant laws and regulations. It is expected of advertisers to abide by the relevant legislation governing comparison advertising as well as ASCI’s Code for Self-Regulation in Advertising.
Advertisers must use caution when using comparative advertising, even though it can be a successful marketing tactic, to avoid facing legal issues and regulatory penalties. Advertisers may take use of comparison advertising’s advantages while lowering their exposure to legal risk by abiding by the standards of justice, truthfulness, and openness.
Comparative advertising must be based on objective criteria that are verifiable and relevant to the goods or services being compared. These criteria may include price, quality, performance, features, or other measurable attributes.
1.4 Trademark Dilution in advertising:
The term “trademark dilution” describes the unapproved use of a well-known trademark in a way that lessens its reputation or distinctiveness, especially in cases where there is little chance of confusion or rivalry between the unapproved user’s goods and services and those linked to the well-known mark. The Trademarks Act, 1999 in India recognises and safeguards the notion of trademark dilution, offering owners of well-known trademarks legal recourse against dilutive practices.
Section 29(4) of the Trademarks Act, 1999 recognizes trademark dilution as a form of infringement and provides protection to owners of well-known trademarks against unauthorized use that may dilute the distinctive character or reputation of their marks. This provision allows famous trademark owners to prevent third parties from using their marks in a manner that could weaken their uniqueness or tarnish their reputation.
In order to prove trademark dilution, the owner of the well-known mark must show that the defendant’s unauthorised use is likely to dilute the mark’s distinctiveness or repute. Dilution is determined by taking into account various factors, including the degree of resemblance between the marks, the degree of inherent or acquired distinctiveness of the renowned mark, and the extent of recognition of the mark by the relevant public.
Dilution of a trademark can take many different forms, such as tarnish and blurring. Unauthorised use of a well-known mark can cause tarnishment when it tarnishes its favourable reputation by linking it to inferior or bad attributes, whilst blurring happens when it lessens its distinctiveness by being associated with unrelated goods or services.
Famous trademark owners may pursue remedies for trademark dilution, such as corrective advertising or other steps to lessen the harm caused by dilution, damages or an accounting of profits resulting from the dilutive activities, or injunctive relief to prevent further use of the infringing mark.
Famous trademark’s unique identity and reputation are seriously jeopardised by trademark dilution in advertising. Businesses and advertisers need to be careful not to engage in dilutive actions that violate trademark owners’ rights and put them in legal hot water.
Judicial cases:
1. DRS Logistics v. Google:
One very famous case law related to trademark infringement in advertising is the case of DRS Logistics v. Google. In this case, the Delhi High Court ruled that Google could not claim immunity under the Information Technology Act, 2000, for trademark infringement through its AdWord program. The court held that Google’s active involvement in using trademarks as keywords made it liable for trademark infringement, emphasizing the importance of fair competition and protecting trademarks in online advertising.
2. Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr. :
The famous case of Pepsi and Hindustan Coca-Cola in comparative advertising is Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr., which was decided in 2001. The case dealt with the issue of whether use of a trademark in comparative advertising amounts to trademark infringement or not. The court held that comparative advertising cannot be permitted if it discredits or denigrates the trade mark or trade name of another company. The case involved Pepsi filing a suit against Coca-Cola for using its trademark wrongfully and disparaging their products in an advertisement. The commercial in question showed an actor asking people about their favorite drink and they all point to a drink whose packaging was similar to Pepsi. The actor then says that they like this better because it’s too sweet and meant for kids, and that Coca-Cola is for grown-ups because it is strong. The court held that the defendant had infringed on the trademark protection of PepsiCo. Inc.’s products through disparagement and depreciating their goodwill.
Conclusion
Trademark clearance, infringement, comparative advertising, and dilution are crucial aspects of intellectual property rights, particularly in the realm of advertising in India. Conducting thorough trademark clearance searches before registering a trademark is essential to avoid legal consequences and safeguard intellectual property. Trademark infringement in advertising occurs when a business uses a trademark similar to another without permission, leading to confusion among consumers. Comparative advertising, while permissible under certain conditions, must be truthful and non-disparaging to competitors’ products. Trademark dilution occurs when a well-known trademark’s distinctiveness or reputation is weakened by unauthorized use. Legal cases such as DRS Logistics v. Google and Pepsi Co. Inc. v. Hindustan Coca Cola Ltd. illustrate the importance of protecting trademarks in advertising. Overall, adherence to trademark laws and regulations is crucial for advertisers to maintain brand integrity and consumer trust in the competitive marketplace.
FAQS
1. What is the role of trademarks in advertising?
Trademarks help consumers identify and distinguish brands, conveying qualities like reliability and authenticity, and promoting brand recognition and trust.
2. How does the Trademarks Act, 1999 protect trademarks?
The Act grants exclusive rights to trademark owners, preventing unauthorized use, reducing brand dilution, and offering remedies like injunction and damages.
3. Why is trademark clearance important?
It ensures a trademark is not already registered, preventing legal disputes. Searches include Indian Trademark Office, MCA Name Search, and Madrid Protocol database.
4. What is trademark infringement in advertising?
It occurs when a mark identical or similar to a registered trademark is used without permission, causing consumer confusion. Remedies include injunction, damages, and destruction of infringing goods.
5. What is comparative advertising, and is it allowed?
Comparative advertising, which compares products with competitors, is allowed if it is truthful, not misleading, and doesn’t disparage rivals.
6. What is trademark dilution?
Dilution is the unauthorized use of a well-known trademark, weakening its reputation or uniqueness, even without consumer confusion. Remedies include injunctions and damages.
