Chapter 1

INTRODUCTION

In an era where the whole world is considered as one global village, Trademarks play an
important role to distinguish the products of one business house from another.

“A Trademark is an emblem or motto that conveys limited property rights in a certain word,
phrase or symbol. Its aim is to identify the source of a product which helps the customer to
identify the product placed with products of similar kinds.”1

A trademark not only identifies the product of its origin but also guarantees its unchanged quality
and further helps to build a brand image by advertising the products. In a rat race to present their
products as the best, companies adopt advertising techniques that make use of Trademarks,
tradenames and other trade symbols combining informational and persuasive elements.

In advertising and public interest2 Ralph Brown argues that trademarks by themselves were
worthless to the public; it was only the public interest inhered in the ability of trade symbol to
inform and prevent confusion. He further asserts that the legal protection surrounding trademark
should be driven by analysis of the degree to which advertising itself served public interest. The
public’s chief interest lay in the promotion of competition through advertising, Ralph insisted by
providing information to potential consumers about the products they choose to consume.

Where the law enhanced or protected advertising informative function, it encouraged

competition and advanced the public interest. According to him, the focus of law should be to
protect the integrity of Trade Symbol in order to prevent consumer confusion/deception that
would protect the ability of product sellers to supply information through advertising3.

The main crux of Ralf’s analysis was that trademarks alone had no legitimate intrinsic value
apart from the symbolized information they provided about the products they accompanied.
However, looking today at the way companies use their trademarks to promote their symbols, the

1
Per J Kozinski in New Kids on the Block v. New Am. Pub., Inc., 971 F.2d 302, 305, 23 U.S.P.Q.2d (BNA) 1534,
1536 (9th Cir. 1992)
2
Ralph S. Brown Jr, , Advertising and Public Interest, Legal Protection of Trade Symbols, Yale Law Journal,
1165,1206(1948)reprinted in YLJ 1619,1659(1999)
3
Jessica Litman,Breakfast with Batman : Public Interest in the Advertising Age , The Yale Law Journal ,Volume
108,No. 7,(May,1999), pp 1717-1735
aforesaid assumption seems untrue. Nowadays, consumers seem to attach a lot of value and faith
to the trademark and attach a lot of value and faith to the trademark and the product it is
associated with.

Since a trademark is an Intellectual Property owned by a company, it has all the rights to protect
itself from being misused. Any unauthorised use by a competitor in which it seeks to ride on the
coat tails of the mark and benefit from the mark’s goodwill and reputation results in the dilution
of the mark.

A competitor can use his rival’s Trademark in accordance with the honest practice in industrial
commercial matters and as long as such use does not take unfair advantage or is detrimental to
the distinctive character or reputation of the mark. It must be kept in mind that even though the
company is allowed to puff up its product and declare it as the best in the world while comparing
it with its rival products, it cannot in anyways depict that the products of its rivals are bad.

Chapter 2

COMPARATIVE ADVERISEMENT AND ITS RELATION TO TRADEMARK

VIOLATION-AN ANALYSIS OF THE INDIAN STATUTE

The opening up of Indian economy has led to a plethora of brands in the markets with each one
out to capture a portion of the market. While comparative advertisement may be one of the best
ways of relaying information to the consumers, advertisers should tread carefully as it often leads
to a clash of legal and ethical principles. Honest, non-misleading and fair comparative
advertising is generally viewed positively by law as well as public, but the danger creeps in
where the companies began to address the demerits and inadequacies of competing goods and
services, and were tempted to denigrate their rival companies or derive unfair advantages.

In this chapter, the researcher shall be dealing with the Indian constitutional and legal
perspectives for comparative advertisements, relationship between Comparative advertisement
and Trademark infringement and concept of disparagement.
 (1) EXPLANATION OF COMPARATIVE ADVERTISEMENT AS PER INDIAN
CONSTITUTION:

As we know that under Article (19)(1) (a)4 of the constitution of India, right to freedom of
speech and expression is provided, and many advertisements can argue the same. It is very
important to analyse Article (19)(1)(a) of the constitution in relation to comparative advertising.
As we know that freedom under this article is available for public speaking, radio, television and
press but the freedom of speech and expression has limitations and the same are restricted by
imposing reasonable restrictions by the state under Article 19(2)5 of the constitution.

Now the question arises whether commercial speech can be protected under Art 19(1)(a) of the
constitution.

In the case of Hamdard Dawakhana (Wakf) Lal v. Union of India6, the SC held that the sale of
prohibited drugs was not in the interest of public, and that the advertisement of such drugs
therefore “could not be speech” within the meaning of speech and expression under Article 19(1)
(a) of the constitution. The Supreme Court held that in this case, advertising by itself would not
come under Article 19(1)(a) of the constitution. Advertisements for non prohibited drugs would
be protected as free speech but certain advertisements which are prohibited by various statutes,
codes,rules and regulations in India would not be considered as protected.This is for the reason
that Article 19(2) permits reasonable restrictions on the freedom of speech and expression
guaranteed under Article 19(1) of the constitution. Hence any prohibition or restrictions on
advertisements as stipulated by various statutes, codes, rules and regulations may be considered
as reasonable restriction.

Conversely in the case of Tata Press Ltd v. Mahanagar Telephone Nigam Ltd7, a three judge
bench of the Supreme Court differed from the view expressed in Hamdard Dawakhana case and
held that “commercial advertisement was covered by Article 19(1) (a).
4
Article 19(1)- All citizens shall have the right to (a) freedom of speech and expression
5
Article 19(2)-Nothing in sub clause (a) of clause(1) shall affect the operation of any existing law or prevent the
state from making any law, in so far as such law imposes reasonable restrictions on the exercise of the right
conferred by the said sub clause in the interests of sovereignty and integrity of India, the security of the state,
friendly relations with foreign states, public order, decency or morality or in relation to contempt of court,
defamation or incitement to an offence.
6
Hamdard Dawakhana (Wakf) Lal v. Union of India, 1960 AIR 554;1960 SCR(2) 671
7
Tata Press Ltd v. Mahanagar Telephone Nigam Ltd, 1995 AIR (SC)2438
In this case a suit was instituted by the Mahanagar Telephone Nigam Ltd And the Union of India
against Tata Press Ltd for the declaration that they alone have the right to print or publish the list
of telephone subscribers and that the same cannot be printed or published by any other person
without the express permission of Nigam/Union of India.

A further declaration was sought to the effect that Tata Press Ltd has no right whatsoever to
print, publish and circulate the compilation called the ‘Tata Press Yellow Pages’. A permanent
injunction was sought from the court. The three judge bench argued that the commercial
advertisement is related to the dissemination of information regarding the product and should
therefore be protected under the constitution. The court however made it clear that the
government could regulate the commercial advertisements that are deceptive, unfair, misleading
and untruthful.

(2) CODIFIED SOURCES: ASCI

The basic principles of advertising law are regulated by the Advertising Standards Council of
India (ASCI) which is a self-regulatory body and lays down a code to be followed by the
advertising industry. With respect to Comparative Advertisement the code lays down as follows-

(i) Advertisements containing comparisons with other manufacturers or suppliers or with other
products including those where a competitor is named are permissible in the interest of vigorous
competition and public enlightenment provided that-

(a)It is clear what aspects of advertiser’s product are being compared with what aspects of
competitor’s product.

(b)The comparisons are facual, accurate and capable of substantiation.

(c) There is no likelihood of consumer being misled as a result of the comparison, whether about
the product advertised or that with what it is compared.

(ii) Advertisements shall not make unjustifiable use of the name or initials of any other firm, nor
take unfair advantage of the goodwill attached to the Trademark or symbol of another firm or its
product or goodwill acquired by its advertising campaign.
(iii) Advertisements shall not be similar to any other advertiser’s earlier run advertisements in
general lay out, copy, slogans, visual presentations, visual or sound effects so as to suggest
plagiarism8.

(3) TRADEMARK

Trademark means a mark capable of being represented graphically and which is capable of
distinguishing the goods and services of one person from those of others and may include shape
of goods, their packaging and combination of colours9.

The primary purpose of a Trademark is to ‘distinguish the goods of one person from another’.
Therefore a trademark enables a customer to identify the goods and their origin. Hence,in case if
an advertiser uses a competitor’s trademark to make a comparison between his goods and those
of a competitor and in the process disparages them, then such an act on the part of the advertiser
would not only invoke issues relating to Comparative Advertisement and product disparagement,
but would also invoke issues relating to TM infringement.

(4) TRADEMARK INFRINGEMENT

The basic issue regarding Trademark Infringement centers on consumer confusion. “Is one mark
so close to another that an ordinary purchaser is likely to be confused, mistaken or deceived
regarding the source of goods or services?”

To make a judgement with regard to infringement the courts would like to know what is in
consumer’s mind; how is he reacting to the two marks and thus whether he is likely to be
deceived. While consumer confusion has been in most circumstances the major issue with regard
to Trademark infringement there are two other sources of confusion which relate to the trade
rather than the consuming place: Trade Confusion and passing off10.
8
Hemant Goyal & Jitender Jain, Advertising Law In India Part-I, Global Jurix,Advocates and Solicitors, available
at http://www.mondaq.com/india/x/192384/advertising+marketing+branding
9
Section 2(z)(b) of Trademarks Act of India 1999
10
Passing off action is derived from common law in which case infringement of a trademark is carried out in a
manner where in the mark is not only similar but is also deceptively to mislead and confuse the end users.
Evidence of trade confusion has been considered very valuable in infringement cases since
members of the trade would not be expected to be deceived or confused as readily as ordinary
customers. Evidence of “passing off” where the trader knowingly and deliberately attempts to
pass one product off as another is also considered valuable in law suits.

(5) COMPARATIVE ADVERTISEMENT AND TRADEMARK INFRINGEMENT

The primary purpose of a Trademark is to distinguish the goods of one person from another.
Therefore a trademark enables a consumer to identify the goods and their origin. Hence, in case
if an advertiser uses a competitor’s trademark to make a comparison between his goods and
those of his competitors and in the process disparages them. Such an act on the part of the
advertiser would not only invoke issues relating to advertising and product disparagement but
also invoke issues relating to TM infringement.

(6) PROVISIONS UNDER THE INDIAN LEGAL SYSTEM

MRTP Act, 1969

In the legal framework governing comparative advertising, there has been a shift from curbing
monopolies to encouraging competition. The MRTP Act 1969 was drafted with the initial
purpose of controlling monopolies and prohibition of restrictive trade practices.11However the act
was amended several times to suit the changing circumstances until it was finally rendered
obsolete by the economic reforms of 1990’s as stronger pro competition laws were required. In
1984 it was amended to add a chapter on unfair trade practices. Section 36-A was inserted which
lists several actions to be an unfair trade practice.

Section 36A (1)(x) - Definition of Unfair Trade Practice:

11
Monopolies and restrictive Trade Practices(Act No. 54 of 1969),Statement of Objects and Reasons
‘Unfair Trade Practice’ means a trade practice which, for the purpose of promoting the sale, use or
supply of any goods or for the provisions of any services adopts any unfair method or deceptive
practices ,namely

(1) The practice of making any statement, whether orally or in writing or by visible representation
which-

(x) gives false or misleading facts disparaging the goods, services or trade of any person.

(7) CREATION OF DGIR

A body was created under this act named Director General of Investigation and Registration
(DGIR).The power and function of DGIR was that it will be on a complaint or on its own can
investigate matters relating to a restrictive or unfair trade practices in India. A judicial body was also
created under it named MRTPC12.The commission’s work is to deal with the cases which are
brought by DGIR.The commission, on judging a practice to be an unfair trade practice, could order
the offending party to cease and desist the practice. Actions which constitute unfair trade practice
are laid down under Sec 36 of the act.

(8) CONCEPT OF DISPARAGEMENT

USE OF TRADEMARK- DISPARAGEMENT OF GOODS

Section 36A of the MRTP Act showcases the issues on unfair trade practices which ultimately lead
to the cause of disparagement of goods and services of another person. There is no specific
definition of disparagement of goods but in the new International Webster’ Dictionary it implies
dishonour or degrading, depreciating or disvaluing of the goods and bringing discredit to the
company. In any electronic media, the disparaging concept is shown by the repeated advertisements
of various commercials so as to make a lasting impression in the minds of the consumers.

THE TRADEMARKS ACT 1999

12
Monopolies and Restrictive Trade Practices Commission
 The Trademarks Act 1999 enunciates situations when the use of trademark in advertising constitutes
infringement. It says that any advertisement which is not in honest practices or is detrimental to the
distinctive character or to the repute of the mark shall be an act constituting infringement.13

At the same time Section 30 (1) makes an exception in relation to Comparative Advertisement to
acts constituting infringement under section 29.It provides that any advertisement which is in honest
practices, and does not cause detriment to the distinctive character or repute of the Trademark will
be permissible and will not constitute infringement.

It is important to take a brief look at the provisions relating to comparative advertising under The
Trademarks Act 1999 –

Section 29(8) — (a) The primary objective of Section 29(8) and Section 30(1) of the Trademarks
Act 1999 is to permit Comparative Advertising.

(b) As long as the use of competitor’s mark is honest, there is nothing wrong in telling the merits
of competing goods or services and using registered Trademarks to identify them.
(c) The onus is on the registered proprietor to show that the factors indicated in the provisions to
the section are applicable.
i. There will be no infringement unless the use of the mark is not accordance
with honest practices.
ii. The test is objective. What would a reasonable reader be likely to say, upon
being given the advertisement that is honest.
iii. The advertisement should be considered as a whole.
iv. If the background of an advertisement as a whole, justifies the description,
that even if it is misleading for interlocutory purposes, it should be permitted.

Section 30(1)- Trademark Act 1999 permits Comparative Advertising u/s 30(1) which reads as
follows –

Nothing in section 29 shall be preventing the use of a registered Trademark by any person with the
purposes of identifying goods or services as those of the proprietors provided the use —
13
Ryder Rodney D, Brands, Advertisements and Advertising (LexisNexis Butterworths, New Delhi) 2003, p 326.
 a) is in accordance with the 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 Trademark.
But with certain limitations which are provided under Section 29(8) of the Trademark Act 1999
which reads as:

A registered TM is infringed by any advertising of that Trademark if such advertising –

(a) Takes unfair advantage and is contrary to the honest practices in industrial or commercial
matters or
(b) Is detrimental to its distinctive character or
(c) Is against the reputation of the Trademark14

The Trademarks Act 1999 provides protection against ‘passing off’ for registered Trademarks as
well as unregistered Trademarks. The essence of an action of passing off is confusion. The
proprietor thereby has a statutory alternative to the common law action of passing off.
Needless to say that the Trademark Act 1999 answered the issues which the MRTP Act could not,
with respect to the use of registered TM. The Trademark Act 1999 was more progressive by nature
and clearly dealt with the issue of the scope of liability in Comparative Advertising at a time when
the Indian Economy saw a boom with the markets opening up as a part of liberalization of
liberalization of trade and commerce and international business intercourse in the global economic
scenario with more and more brand owners entering the Indian market.

The MRTP Act was slightly more stringent in approach as it primarily dealt with the issue of puffing
or disparagement only as long as the product puffed or disparaged was identified as setting a link
with the main product to the public or customers at large. In order to understand how the principles
enunciated in these Acts have been applied by the various Indian courts, it is important to study the
landmark judgments in the Indian Legal system.

Chapter 3

14
V.K. Ahuja, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS, Lexis Nexis Buttersworths,
Chapter 37
LEGAL BATTLES FOUGHT ON COMPARATIVE ADVERTISEMENT: LANDMARK
CASE STUDIES IN THE INDIAN JURISDICTION

In order to understand the concept of Comparative Advertisement in India, it is important to take a

close look at the cases in India and how the courts have approached it. As it can be seen from the
previous chapters, Comparative Advertising in India was initially covered by the MRTP Act, 1984
as being potentially unfair trade practice. It was only after the recent enactment of Trademarks Act
1999 that some headway was made in the direction of Comparative Advertising vis a vis intellectual
property jurisprudence.

However, as the said Act was only made enforceable in 2003, Comparative Advertising case law in
India is yet to truly develop. There are a significant number of Comparative Advertisement cases
decided by the courts under the MRTP regime.

While the focus of these cases was largely on the protection of the consumer rather than the use of
infringed Trademarks, they provided the groundwork for the present legal stance towards the
Comparative Advertising in India. The leading judgments under MRTP Act in this respect were the
following –

(1) Reckitt and Colman of India Ltd v. Kiwi T.T.K Ltd15

In this case it was a big advertisement war between the two liquid polish companies namely Reckitt
and Colman of India Ltd.- hereinafter named as the plaintiff and Kiwi T.T.K Ltd. hereinafter known
as the defendant. The plaintiff’s product, Cherry Blossom Premium Liquid Wax Polish comprised of
the Carnaula wax from Brazil, which has a rich wax content formula and therefore marketed as
better shoe polish than any other similar product in the market to the extent of 65% of share in the
market. The other reason for such marketing was because of the fact that the defendants used the
chemical Montana, which had more acrylic content compared to wax that was harmful for the shoes.

Secondly, cherry blossom comprised of a high quality applicator imported from abroad that fitted
properly into the angular neck bottle structure which was easy to use and such design of the bottle
was also registered under the law. Now the defendant (Kiwi TTK Ltd) while promoting the product
through electronic advertisements stated “KIWI” on one side of the white surface and “OTHERS”
15
Reckitt and Colman of India Ltd v. Kiwi T.T.K Ltd, 1996, PTC(16) 393
on the other side with their respective liquid wax. The advertisement showed the wax which was
used to write “OTHERS” dripped from the surface while the “KIWI" one would stick properly.

To add to that, the bottle named “Brand X” used to write “OTHERS” was that of the same shape as
that of the registered designed bottle of Cherry Blossom coupled with a red blob on top of the bottle
surface, which was symbolic of Cherry. This advertisement was used vehemently both in electronic
media as well as ‘the point of sale posters’ at every market and shops that sold this product. The
icing on the cake in this advertisement was that, the imported application that was used by the
plaintiff was referenced as a ‘faulty one’. So naturally a plea for injunction was filed by the plaintiff
for stopping this advertisement of the defendant company. The plaintiff felt that such advertisements
were purely designed to slander their product. The plaintiff rightly felt that the defendant had made a
false claim in this regard by claiming that the defendant’s product had more wax than any other
liquid shoe polishes present in the market at that point of time.

In brief, the plaintiff was of the opinion that the false and malicious content in the advertisement
would cause irreparable loss to the plaintiff’s repute and goodwill in the market scenario. The
defendant opposed the claim of the plaintiff by counter affidavit and counter claims to prove that
their advertisement was not disparaging by nature in any way.

In the very beginning, though the defendant withdrew all the point of sale posters and also got rid of
the red blob that was depicted as the implied form of the Cherry. The lawyer on the behalf of the
plaintiff also contended for a chemical test to show the chemical used by the defendant was superior
to that of the chemical used by the plaintiff. In furtherance of that, the plaintiff alleged that the
advertisement of the defendant was misrepresentative in nature and a derogatory one.

The court held that the defendant was disparaging the goods of the plaintiff and was told to restraint
from advertising the competitor’s product in a disparaging manner. 16 The Delhi High Court also
added that the advertiser can puff the goods of make statements that his goods are of superior quality
but this should not disparage or defame the repute of the competitor.17

16
Priya Bansal : “Use of Trademark in Comparative Advertising : Situation in India”; Intellectual
Property Law, Dated-May 4, 2006
17
Lien Verbauwhede, Intellectual Property And Advertising, available at http://www.wipo.int
/sme/en/activities/india_nift_5/advertising_lien.ppt332, 5 Internet and Digital Technologies, April 2,2009, (Last
visited April 16,2017).
 (2) Reckitt and Colman v. M.P. Ramachandran18

The Calcutta High Court took a step further in this case. As per the facts of the case the plaintiff’s
were engaged in the manufacturing of blue whitener under the name of ‘Robin Blue’ for which they
had a designed registration over the bottle. The defendants who were in the same business, issued an
advertisement comparing their products to others stating that not only was their product, but also
more effective. In this depiction they compared their product to a bottle having the same shape and
pricing as that of the plaintiff’s product, the Calcutta High Court laid down five principles in aiding
the grant of injunction in such matters, stating that –

(a) A tradesman is entitled to declare his goods to be the best in the world, even though the
declaration is untrue
(b) He can also say that my goods are better than his competitor’s, even though the declaration is
untrue.
(c) 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;
(d) He, however cannot, while saying his goods are better than his competitors, say that his
competitor’s 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.
(e) 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.

These principles were used in the much publicized case:

(3) Pepsi Co. Inc. v. Hindustan Coca Cola Ltd19

However, this case differed from the cases aforementioned in respect of the fact that herein the
Delhi High Court also dealt with copyrights and trademark related issues.

The plaintiff in the instant case claimed disparagement of trademark and copyright in two
advertisements of the defendants. Both advertisements allegedly desecrated the plaintiff’s products
18
Reckitt and Colman v. M.P. Ramachandran 1999 PTC (19) 741
19
Pepsi Co. Inc. v. Hindustan Coca Cola Ltd., 2001 (21) P.T.C. 722
with derogatory remarks. One of the advertisements depicted a thinly veiled substitute of Pepsi as a
“bachhon wali drink” while mocking Pepsi’s advertising slogan by saying “Yeh Dil Mange No
More”20.The entire commercial conveyed to the viewers that kids should prefer ‘Thums Up’ over
‘Pepsi’ if they want to grow up. The court while using the principles laid down in the two
aforementioned cases also went onto state that in order to decide questions of disparagement, the
following factors have to be kept in mind, namely21,

1. Intent of the commercial;

2. Manner of the commercial;
3. Story line of the commercial and the message sought to be conveyed by the commercial.

Although it is unclear whether these factors are to be read conjunctively or disjunctively, the Delhi
High Court used the second factor as the determining one. It ruled that if the manner in showing the
commercial is only to show that the product is better without derogating somebody else’s product,
then no actionable claim lies. But if the manner of the commercial is ridiculing or condemning the
product of the consumer then it amounts to disparagement. In essence, this is reflective of the ratio
of the Reckitt & Colman cases. Therefore, the Court while concluding that there was no
disparagement also went onto hold, without precedent, that Pepsi’s advertising slogan was
copyrightable. The Court however also mentioned that mere use of the trademark protected Pepsi
logo and parody of the slogan does not give rise to ipso facto infringement.

The other advertisement was alleged to have copied substantial portions of the plaintiff’s
commercial thereby amounting to copyright infringement by the defendants 22. The plaintiff also
20
Hindustan Coca Cola and others endorse their product with the help of a commercial wherein the lead actor asks a
child which is his favourite drink. He mutters the word “Pepsi”, which can be seen from his lip movement though
the same is muted. The lead actor thereafter asks the boy to taste two drinks in two different bottles covered with
lids and the question asked by the lead actor is that “Bacchon Ko Konsi pasand aayegi?” After taste the boy points
out to one drink and says that that drink would be liked by the children because it is sweet. In his words he says.
“Who meethi hain, Bacchon ko meethi cheese pasand hai”. He preferred the other drink which according to him
tastes strong and that grown up people would prefer the same. And later the stronger one came out be “Thums Up”,
and one which is sweet, word “Pappi” is written on the bottle with a globe device and the colour that of the “Pepsi”.
The boy feels embarrassed about the fact that he chose “Pepsi”, which he himself felt was a childrens’ drink.
21
Navpreet Panjrath and Kanwardeep Singh, Comparative Advertising: Things You Can Do and Things You Can’t,
available at http://news.indlaw.com/guest/columns/default.asp?navpreet. (Last visited on April 15, 2017).

22
The advertisement was concerning a roller coaster, of which portions were identically copied by the defendant in
the advertisement for their product ‘Sprite’. The copied commercial went to the extent of copying whereby even the
characters wore the identical clothes as compared to those in the ‘Pepsi’ commercial, The Famous Cola War
 went on to claim that the portrayal did not constitute fair use or claim to be a parody. The court
concluded that the commercial was nothing but a literal imitation of the plaintiff’s work subject to
minor and insufficient changes. As the commercial squarely violated the meaning of copyright under
the statute23, the court granted an injunction to the effect that the defendant should be refrained from
showing the advertisement in its present form.

(4) M Balasundaram v. Jyothi Laboratories Ltd

In the case of M Balasundaram v Jyothi Laboratories Ltd., (Regaul v. Ujala), the commission
explained the meaning of section 36 A of the MRTP Act. In this the facts were that  advertisement
promoting Ujala liquid blue showed that two-three drops of this brand were adequate to bring striking
whiteness of clothes while several spoons of other brands were required for the same effect. A lady
holding a bottle of Ujala was looking down on another bottle without any label, exclaiming ‘chhi,
chhi, chhi!’ in disgust. The manufacturers of Regaul, a competing brand, complained to the
Commission that the advertisement was disparaging its goods. The commission held that in order to
bring home a charge under clause (x) of Section 36A (1) 24 it must be established that the
disparagement is of the goods, services or trade of another the words ‘goods of another person’ have a
definite connotation. It implies disparagement of the product of an identifiable manufacturer.The
Commission was of the view that ‘a mere claim to superiority in the quality of one’s product’ by itself
is not sufficient to attract clause (x). In the advertisement, neither did the bottle carry any label nor did
it have any similarity with the bottle of any other brand. The Commission, thus, was of the opinion
that it could not be classified as a case of disparagement of goods.

(5) Colgate Palmolive India Ltd v. Hindustan Unilever Ltd-(The famous Colgate v
Pepsodent war)

The Delhi High Court by its judgment dated August 21, 2013 dismissed the injunction petition filed
by Colgate against Pepsodent. The Pepsodent-Colgate ad war had started on August 9, 2013 with the
release of Pepsodent's latest advertisement that used Colgate's name in their ad claiming 130% better
protection. This led Colgate to file a case in Delhi High Court on August 13, 2013. The court was
(Copyright of Advertisement Phrases and Themes), TIFAC BULLETIN, May 2004, available at http://
www.pfc.org.in/fac/may04.pdf. (Last visited April 17,2017)
23
Section 14, Indian Copyright Act, 1957
24
M Balasundaram v Jyothi Laboratories Ltd., 1995 (82) CC 830 (MRTPC)
not satisfied that Pepsodent's latest advertisement denigrated Colgate or has showed that it is better
than Colgate.

I. Facts of the case

Colgate Palmolive (India) Ltd. ("Colgate") filed a suit against Hindustan Unilever Ltd. ("HUL")
on August 13, 2013 for an interim injunction. HUL had launched its Pepsodent Germicheck's
advertisement on August 9, 2013 which compared the toothpaste's germ attack power with Colgate
Strong Teeth claiming that Pepsodent Germicheck has "130% superior" germ attack power over
Colgate Strong Teeth after four hours of brushing. Colgate claimed the interim injunction against
HUL on the following grounds:

The claim made by HUL that Pepsodent Germicheck had 130% attack power was a false statement
and in violation of several provisions of the Code of Advertising Standards Councils of India, 1985
("ASCI") as well as the Drugs and Cosmetics Act, 1940 as it amounted to "misbranding". The TV
commercial commenced on August 9, 2013 and print advertisement appeared in the front page of the
Delhi edition of "Hindustan Times" dated August 11, 2013 portrayed bad image of Colgate's product
and falsely conveyed that the use of Colgate could cause cavities. The advertisements were viewed
in the Court several times during the course of arguments and the observation made was that the TV
commercial portrays that Triclosan an ingredient in Pepsodent stays in the mouth four hours after
brushing and qualifies a "preventive cavity test". But Colgate contended that no such test exists in
the world. Then again, the Colgate Boy was shown brushing his teeth in an improper manner, whose
teeth had cavities and he seemed to be unhappy which implies that Colgate's toothpaste could cause
cavities.
Colgate contended that HUL's past record showed that HUL has made a habit of introducing false
and misleading advertisements and increase its market share dishonestly. It had a history of making
false claims in respect of its products. Cases such as: Reckitt Benckiser (India) Ltd. v. Hindustan
Unilever Ltd.25(hereafter Dettol vs. Lifebuoy case), Reckitt Benckiser (India) Ltd. v. Hindustan
Unilever Ltd26.(hereafter Dettol Liquid case) and Reckitt Benckiser (India) Ltd. v. Hindustan

25
Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 200 (2013) DLT 563
26
Ibid
Unilever Ltd.27were cited. It was argued that the words "Pepsodent now better than Colgate Strong
Teeth" in the print advertisement were meant to convey that Colgate Strong Teeth was no longer a
good product. Also, the word "Attaaaack" used in the ad was an attack on Colgate and not on the
cavity causing germs. Colgate apprehended a loss of market share if the HUL was not restrained
from circulating these ads. The submissions made by HUL in reply to the case filed were as below:

In this regard, the decision in Dabur India Limited v. Colortek Meghalaya Pvt. Ltd 28. was cited to
show that courts have allowed comparative advertising. HUL asked the court not to adopt a hyper
technical view and not to analyse an advertisement like a statute or a clause of an agreement. As
their intent was not to denigrate the product or the brand of Colgate. HUL submitted that the whole
purpose of these advertisements was to compete with Colgate at the price segment at which it was
selling Colgate Strong Teeth and the aim of HUL was to show that the superior product that Colgate
could offer was always marketed as a premium product.

II. Judgment

On the basis of the judgments given in the earlier cases such as Dabur India Ltd. v. Colortek
Meghalaya Pvt.Ltd. 29and Reckitt and Colman of India Ltd. v. M.P. Ramachandran.30the Court
dismissed the case by saying that HUL is not denigrating the product of Colgate. It said that it is
unable to identify any unfairness in this practice that may attract the clauses of ASCI Code.
Comparative advertising is permissible as long as the competitor's product is not derogated and
disgraced while comparing.

In the case Dabur India Ltd v. Colortek Meghalaya Pvt. Ltd.31, it was held that certain factors
have to be kept in mind while deciding a question of disparagement. These factors are (i) intent

27
Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 151 (2008) DLT 650
28
Dabur India Limited v. Colortek Meghalaya Pvt. Ltd, 2010 (42)PTC 88(Del.)
29
see supra 28
30
Ibid
31
see supra 33,
of the commercial; (ii) manner of the commercial; and (iii) storyline of the commercial and the
message sought to be conveyed. Further, in the case Reckitt and Colman of India Ltd. v. M.P.
Ramchandran 32, it was held that (i) a seller is entitled to declare his goods to be best in the
world, even though his statement is not true; (ii) He can say that his goods are better than his
competitors' goods, even though his statement is not true; (iii) he can compare the advantages of
his goods over the goods of others; (iv) however, he cannot say that his competitors' goods are
bad.

According to the court too much could not be read into the expressions of each individual character
in the advertisements. Also, the court noticed that the teeth of the Colgate Boy had not been zoomed
into and no gaps or cavities could be seen. The expressions and effects used in the advertisement
only showed that Pepsodent was a better product but did not disparage Colgate's product. Also, the
court said that as there is a comparison of products and an attempt to show that one is better than the
other, then obviously both boys cannot have happy faces. Also, the court held that the word "attack"
in the print ad was related to Pepsodent's germ fighting capability and was not an attack on Colgate.

III. Analysis

The ASCI has adopted a Code in 1985 for Self-Regulation in advertising. It is a commitment to
honest advertising and to fair competition in the market place. ASCI Code deals with the various
provisions pertaining to advertisements. Colgate claimed that HUL has violated the provisions of
chapter IV of ASCI Code. Chapter IV of the Code pertains to the fairness in competition. The broad
aspects covered by it are as under:
Advertisements containing comparisons with other manufacturers or suppliers or with other
products including those where a competitor is named are permissible in the interests of vigorous
competition and public enlightenment, provided:
It is clear what aspects of the advertiser's product are being compared with what aspects of the
competitor's product. 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. The comparisons are factual, accurate and capable of substantiation.

32
see supra 28
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. The advertisement does not unfairly denigrate
attack or discredit other products, advertisers or advertisements directly or by implication.
Advertisements shall not make unjustifiable use of the name or initials of any other firm, company
or institution, nor take unfair advantage of the goodwill attached to the trade mark or symbol of
another firm or its product or the goodwill acquired by its advertising campaign. Advertisements
shall not be similar to any other advertiser's earlier run advertisements in general layout, copy,
slogans, visual presentations, music or sound effects, so as to suggest plagiarism. As regards matters
covered by sections 2 and 3 above, complaints of plagiarism of advertisements released earlier
abroad will lie outside the scope of this Code except in the under-mentioned circumstances:
The complaint is lodged within 12 months of the first general circulation of the
advertisements/campaign complained against. The complainant provides substantiation regarding
the claim of prior invention/usage abroad.

Keeping in view the above points, it cannot be concluded that HUL disparaged the product of
Colgate. However, in the case of Tata Press Ltd v. Mahanagar Telephone Nigam Ltd33 , the
Supreme Court opined that it is not good to declare own goods to be the best and better than his
competitors' but if it does so, the advertiser must have some reasonable factual basis for the
assertion made. In the case, Marico Limited (Saffola) vs. Adani Wlmar Ltd. (Fortune) the
plaintiff claimed that the defendant denigrated Saffola by making false, unsubstantiated and
misleading claims that Fortune RBO is healthier than Saffola but the learned Judge declined the
injunction saying that the intent, manner and message of the ad of defendant is of its product
containing a higher quality of Oryzano sufficient to meet the daily requirement of human body of
Oryzanol, and which the other products do not. Hence, after taking into consideration all the
above judgments ASCI contended that comparative advertising by means of using other's
products is known to be admissible; however, while doing so, the advertiser should not in any
way disparage the goods or services of the other. Comparative advertisement is different from
disparagement. Disparagement of a competitor's product may be specific or generic without
specifying rival; both are equally objectionable in a court of law. Comparative advertising is
something that the challenger brand should undertake. A brand owner has to keep in mind how

33
Tata Press Ltd v. Mahanagar Telephone Nigam Ltd 1995 AIR (SC)2438
strong the competition is. You have to be in a disadvantageous position in order to challenge and
comparison should result in some loss of reputation, goodwill or business. Changes in the market
take place and competitors need to stay on top of this change. Comparative advertising is bound
to get more and more aggressive and competitive. Most brand owners say that it is their right to
keep consumers informed. If Pepsodent is superior to Colgate by a precise 130%, it is
Pepsodent's right and duty to keep consumers informed.

Chapter 4

JUDGMENTS UNDER THE TRADEMARK ERA –

Dabur India Ltd. v. Colgate Palmolive India Ltd.34- The facts delineated an open-shut case of
clear disparagement. The sum and substance of the commercial showed a film actor rubbing the
plaintiff’s dental powder on the surface of a purchaser’s spectacles, leaving marks and depicting
it to be akin to sandpapering. The advertisement went onto to show how the defendant’s product
was sixteen times less abrasive than the plaintiff’s product and thereby less damaging to the
teeth. Using the principles laid down through judicial precedent in the pre-Trademarks Act era,
the court stated that this was a straightforward case of disparagement, which could not be
allowed under any circumstances.

However, the decision in the case of Dabur India Ltd. v. Emami Limited35 has possibly set the law
governing comparative advertising down a potentially dangerous path. In the judgement the court
ruled that even if there is no direct reference to the product of a competitor and only a reference is
made to the entire class in a generic sense, a case of disparagement in such circumstances is still
possible.
As per the given facts, an advertisement issued by the defendant stating that consumers should not
use “Chayawanprash” in the summers but use the defendant’s product, which was more effective in
the summer months. Although no insinuation was specifically made against the plaintiff’s product,
the court went onto issue an injunction stating that the commercial denigrated Dabur’s product.

34
Dabur India Ltd. v. Colgate Palmolive India Ltd, 2004,PTC 401
35
Dabur India Ltd. v. Emami Limited, 2004 (29) P.T.C. 1
 In Dabur India Ltd. v. Wipro Limited, Bangalore36 the judiciary added a new dimension to the
existing tests for determining disparagement. The court stated that in comparative advertising, the
degree of disparagement should be such that it would be tantamount to, or almost tantamount to
defamation.28 Only at such levels of disparagement would the court interfere with the marketing
strategies employed.

The decision in Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd.37 was reflective of what the courts
thought honest comparative advertising to mean. In the case, the defendants advertised their product
‘Mortein’ which was meant to kill both cockroaches and mosquitoes and the commercial highlighted
this aspect. The plaintiff claimed that this disparaged their product ‘Hit’, which had two separate
versions for killing cockroaches and mosquitoes. The court in its judgment stated that the advertiser
has a right to boast of its technological superiority in comparison with product of the competitor.
Telling the consumer that he could use one single product to kill two different species of insects
without undermining the plaintiff’s products, by no stretch of imagination amounted to disparaging
the product of the plaintiff.

Chapter 5

WHERE DID IT ALL GO WRONG?

As a direct consequence of the liberalization and globalization of the Indian economy, the Indian
consumer is now faced with an onslaught of products and services. Foreign brands are pouring in
and their Indian counterparts, both new and old are bidding to gain a foothold in the market leaving
the consumer drowning in a sea of choice. In such a scenario comparative advertising gives scope to
the consumer to resolve some of the ambiguity and facilitates in the making of more informed
choices.
In comparative advertising the underlying assumption is that the consumer is made aware of
differences in features/prices/utility etc. between the compared products. However, while
aggressively and vigorously promoting their products and services, firms have often disregarded
truthfulness and fairness of representation. The United States Federal Trade Commission legalized
comparative advertising in 1971 with the intention that increasing the awareness of consumers
36
Dabur India Ltd. v. Wipro Limited, Bangalore 32, P.T.C. 677
37
Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd 2006 (32) P.T.C. 307
would allow them to make more well informed choices. Comparative advertising was legalized in
India for the same reasons. What needs to be examined is whether the law has succeeded in fulfilling
what it set out to do.
Amongst numerous instances, the most illustrative example of contemporary comparative
advertisement in India would be the recent Cola War campaigns. These advertisements are
subverting the very essence of comparative advertisement and are degenerating it into mere
mockery. In their game of one-upmanship the cola companies have reduced themselves to merely
puffing up their products and not providing the consumer with any useful information about the
product itself. Unfortunately this form of comparative advertising seems to be a growing trend in
advertising today.

In the landmark decisions of Reckitt-Colman of India Ltd. v. Kiwi TTK and Reckitt Coleman of
India Ltd. v. M.P. Ramachandran2, the courts have encouraged this disturbing development by
allowing mere puffing up without any basis whatsoever. The focus has only been on the prohibition
of disparagement. The attitude of the courts has been such that the promotion of hot air is allowed
just so long as a competitor is not denigrated. While focusing on unfair trade practices and the
protection of intellectual property rights, the courts seem to have disregarded the consumers’
interest. This can be seen in a recent Madras High Court case, wherein Justice Banumathi opined
that comparative advertisement at present involved a balancing of interests of advertisers in
promoting their products on one hand and the interest of those who might be damaged by
competitor’s attacks on their products on the other3.

CONCLUSION

Section 29(8) and Section 30(1) of the Trademarks Act, are adequate to address issues related to
trademark infringement, made in the garb of comparative advertising. Judicial pronouncements
on the issue have also made it clear that there is no harm in comparing your goods with those of
a competitor, but the comparison should be fair and should not bring disrepute to the
competitor’s products or trademark, i.e. comparative advertising is permissible, but comparative
advertising leading to product disparagement is not permissible. The position is more or less the
same in almost all the countries, which allow use of another’s trademark in comparative
advertising. No doubt that comparative advertising is beneficial as it increases consumer
awareness and therefore, it should be allowed. Moreover, it enables an advertiser to establish his
brand in the market by stating his superiority over the established brands. But, at the same time
there have to be regulations, to check abuses. If the courts had accepted the proposition that trade
rivalries should be settled in the market (as the courts are not equipped to decide which product
is better), it would have caused great prejudice to public interest; as the question is not of
deciding which product is better, but of public awareness. Because, as we say that comparative
advertising increases public awareness, misleading and disparaging advertisement should not
mislead the public.

The vast majority of the viewer of the commercial advertisement on electronic media are
influenced by the visual advertisements as these have a far reaching influence on the psyche of
the people, therefore, discrediting the product of a competitor through commercial would amount
to disparagement as has been held by the High Courts and the Supreme Court of India as well as
the Law laid down by Courts in U.K. & U.S.A.

In the authority of Pepsi Co. Inc. and Anr. v. Hindustan Coca Cola and Ors. , which was decided
in 2001, court dealt with the issue whether use of trademark in comparative advertising amounts
to trademark infringement or not and decided it in negative as infringement occurs when two
essentials are fulfilled that is, if the defendant has used the substantially similar mark and that too
for passing off his own goods as that of the plaintiff’s. In comparative advertising one or both
may be absent sometimes. As it may be possible that only a reference is made to the mark and
not the substantially similar mark is used. And the mark is not used to pass off the goods but to
compare both the goods.

Whereas now the position of law in India in respect of disparaging advertisements of rival
products is well settled. Although a tradesman is entitled to make an untrue declaration that his
goods are the best, better than his competitors, and for that purpose can even compare the
advantages of his goods over the goods of the others; he cannot say that his competitors’ goods
are bad. Further, such use generally/specifically of a proprietor's product for a comparison with
the rival product of another proprietor violates the first proprietor's intellectual property rights.
But if a competitor makes the consumer aware of his mistaken impression, the Plaintiff cannot be
heard to complain of such action.

BIBLIOGRAPHY:

P. Narayanan, Law of Intellectual Property (Eastern Law House, Fourth Edition, 2007)

Dr. V K Ahuja, Law Re;ating to Intellectual Property Rights (Lexis Nexis, Third Edition 2017)

Lione Bentley and Brad Sherman, Intellectual Property law (Oxford University Press)
Dr. Elizabeth Verkey, Intellectual Property Law and Practice, Edited by Abhinandan Malik
(Eastern Book Company, 2015)

Dr. B L Wadhera, Law Relating to Intellectual Property, (Lexis Nexis, Fifth Edition 2018)

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