CHAPTER-II

SCHEME OF SURROGATE ADVERTISING AND

COMPARATIVE ADVERTISING

2.1 Introduction to Surrogate Advertising

Surrogate advertising is a technique, in which products are clandestinely advertised by

companies or advertisers due to the prohibition and restraint imposed by the law of the
land.24 Companies or advertisers use surrogate products like soda, drinking water,
playing cards, juices, audio cassettes, etc. of the same brand name which is prohibited or
banned.25 Surrogate advertising uses the technique of substituting brand image of one
product to advertise another product generally of the same brand that is stopped from
being advertised. Such products that are forbidden from being advertised are banned due
to their negative and harmful effect on the health of people. The concept is also known as
trade mark diversification or indirect advertisements.26 The high revenue generated from
such products makes indirect advertising lucrative. Circumvention of existing laws by
surrogate advertising makes it a popular form of advertising in the domain of products
that are banned or restrained. On viewing surrogate advertising, the viewer instantly
relates the advertisement to the product banned from being advertised. The consumer
perhaps can identify the brands associated with liquor and cigarettes, due to prior
knowledge. This representation of banned products in surrogate advertisements
increases sales of such commodities. Ultimately, it channelizes generation of high
revenue for the companies.

The origin of surrogate advertising is said to be have been in Britain. In Britain, a protest
started against liquor advertisements by housewives since their husbands were getting
influence by such surrogate advertisements. This objection by the wives, ascended and

24
See, http://shodhganga.inflibnet.ac.in/bitstream/10603/129440/9/09_chapter%201.pdf page 37 (last
visited on April 20, 2019).
25
Dr. Seema H Kadam, ―The Study of Surrogate Advertising with An Indian Perspective‖ 3 Indian
Journal of Applied Research (2013).
26
Vasundhara Majithia, Surrogate Advertisements: The dark side of Trade marks? available at:
https://spicyip.com/2017/01/surrogate-advertisements-the-dark-side-of-trade-marks-part-i.html (last
visited on April 20, 2019).

20
resulted in ban on liquor advertising. For a way out, companies and advertisers promoted
soda and fruit juices under the same brand. This concept ultimately emerged as Surrogate
Advertisements.27 Surrogate advertising is not only practised in India but it is also
practised in numerous other countries of the world. The basic idea behind surrogate
advertising is to advertise those products which are banned or forbidden from
advertising. The concept of Surrogate Advertising deduces its basic sense from the word
surrogacy which is explained to be ―the act of performing some function in the place of
someone else‖.28

Moreover, in an attempt to reduce consumption, the products most taxed remain to be

liquor and cigarettes in the country. The tussle of revenues versus morality surrounding
surrogate advertising undoubtedly, still surfaces between the government and liquor
industry. According to a survey, five million deaths are caused by the use of tobacco
worldwide. Unfortunately, the figure is expected to increase to around eight million
deaths by 2030.29

Though India has statutory legislation for restricting advertising of alcohol but it has not
been very effective and has been working to prevent a ban on surrogate advertising due
to the liquor lobby. However, Ukraine has banned alcohol advertisements while
Bangladesh and Israel have no control.

The relation between tobacco products with pernicious, inherent viciousness and harmful
effects is well established and is not only accepted medically but in judicial
pronouncements as well. It has been accepted and documented that the use of tobacco
products and ailments such as cancer, cardiac and respiratory diseases etc. has a link. The
manufacturers desire and put in the effort to attract young and gullible people of the
world. Their motto is to ―Catch them young‖ and they portray the use of tobacco
products as being synonymous with adulthood, modernity, affluence, elegance, etc.
Further, ban and prohibition on direct advertisements of tobacco products prompted

27
Ms. Deepa Nathwani, Impact of Surrogate Advertising, Journal for Contemporary Research in
Management (2016).
28
Bryan A. Garner (ed.), Black‟s Law Dictionary (WEST, USA, 2009).
29
Surrogate tobacco ads may be banned, Times of India, 4.4.2011.

21
indirect methods or surrogate advertisements to be adopted by manufacturers and traders
to achieve the same result.30

2.1.0 Mask Another Product under Same Brand Name

Certain products advertisements have been banned because of the nature of the product
being addictive and their ability to have harmful effect on the customer. The category
consists of products such as tobacco, liquor and other intoxicating products which the
Government stops by notification, rules and legislations banning such advertisements.
However, a manufacturer cannot be expected to invest in the production of any item and
ultimately not advertise it. Ergo, ban imposed producers find out ways to circumvent the
law, surrogate advertisements being one such technique.

Liquor, cigarette and tobacco products are commonly seen product lines experiencing
surrogate advertising. Generally, they are products such as bottled drinking water, music
CD, sports goods, soda, fruit juices, etc. The basic purpose behind such surrogate
advertising is to promote banned products and increase sales. Some examples for
surrogate advertising are Aristocrat whisky, 8 PM,31 Kingfisher packaged drinking water,
Manikchand chai keeps tobacco and liquor names going on and one of the most popular
beer brands, the Royal Challenge sells mineral water under the same brand in its
advertisement.

Some of the players that predominantly use surrogate advertising for their strategically
promotional element are:

30
Mr. Mahesh Bhatt and Kasturi and Sons v. Union of India (UOI) 147(2008) DLT561.
31
8PM Whisky and Aristocrat launched apple juice and advertised their brand by apple juice, available
at: https://www.dailymotion.com/video/x5uabcs and https://economictimes.indiatimes.com/surrogate-
advertising-liquor-firms-are-game/articleshow/42788581.cms?from=mdr (last visited on September
21, 2019).

22
2.1.1. Social Responsibility under Surrogate Advertising

Surrogate advertising involves creative skills by advertisers along with camouflaging a

brand or product message inside an advertisement which is apparently meant for another
brand or product. This camouflage technique does take the advertisements as an example
for social responsibility. Some companies who wish to build their image in respect of
social responsibility may use surrogate advertising for such purpose.

Circumventing the law and advertising forbidden products and services by means of
social responsibility of businesses is a common way to advertise. This is a smart way of
advertising forbidden products. It is employed by a number of companies for various
reasons. By sponsoring sports teams or community events or issuing public service
announcements, companies advertise the masked product under another product of the
same brand name. Though these techniques make the consumer familiar with the
company's branding but at the same time they do not violate the ban on direct
advertising. For example, public service announcements or representations issued by
cigarette companies relating to lung cancer. Such advertisements have company logos or
distinctive brand identification marks; the company's brand is exhibited without it being
directly included in the advertisement.

Children and youth are the more vulnerable targets of surrogate advertising since it
creates an impression on their mind. Around 55,000 children in India start using tobacco
every day and that shows the level of influence.32 The trigger for aspiration of a better
lifestyle is often associated with the Surrogate advertisement of tobacco products and
liquor brands.33

2.2. Regulation Associated with Surrogate Advertising in India

Surrogate advertising can be said to be advertising with a proxy or substituted product.

The concept evolved after the statute imposed ban on direct advertisement of liquor,
tobacco, cigarettes and other intoxicating products. For example, Wills Lifestyle clothing

32
Dutta, Soumya and Gangopadhyay, Saswati, ―Surrogate Advertising on Satellite Television: Indian
Experience‖ 4 Journal of Business Management, Commerce & Research (2015).
33
Id. at 5.

23
line which belongs to companies in the tobacco industry is engaged in surrogate
advertising in India. From the liquor industry, Bagpiper Soda & Haywards Soda are
engaged in surrogate advertising. Surrogate advertising includes sports, leisure, cultural
events sponsored by liquor brand name. Prohibiting surrogate advertisements isn‘t
uncomplicated rather it has become an extremely sensitive and controversial.
Manufacturers view that they are permitted to do business by government and they pay
heavy taxes from its profits. However, by banning advertisements government restrains
this important tool of increasing sales and revenue.

In the mid-1990‘s the concept of surrogate advertising came to India post the
enforcement of Cable Television Networks (Regulation) Act, 1995 and Cable Television
Rules, 1994.

2.2.1. The Cable Television Networks (Regulation) Act, 1995

It prohibits transmission or re-transmission of any advertisements by cable service if the

advertisement is not in conformity with the prescribed advertisement code.34 The code is
exemplified in the Cable Television Network Rules, 1994.The advertisement code
prescribed in Cable Television Rules, 1994, bans advertisement of tobacco, liquor and
cigarettes. Imposing ban on tobacco, liquor and cigarettes was a way to curb the influence
of surrogate advertisements and reduce ill effects of the products. To defeat and
circumvent the chief purpose of ban, surrogate advertisement was used by companies that
dealt in liquor, tobacco, and other intoxicating products. In India, mainly, the tobacco and
liquor industry use surrogate advertising to advertise their products to masses. The Act
metes out punishment if any of the provisions of the Cable Television Networks
(Regulation) Act, 1995 are contravened. The punishment prescribed is as following:

● Imprisonment for a term up to two years or fine up to Rs. 1000/- or both, for first
time offenders,
● For subsequent offence, the imprisonment prescribed is for a term extendable up to
five years or fine up to Rs. 5000/- or both.35

34
The Cable Television Networks (Regulation) Act 1995, s. 6 provides that transmit or re-transmit of
advertisements by cable service is subjected to the advertisement code.
35
The Cable Television Networks (Regulation) Act 1995, s. 16.

24
2.2.2. The Cable Television Networks Rules, 1994

According to Rule 7 (2) (viii) the advertising code provides that promotion of products
like cigarettes, wine, tobacco products, alcohol, liquor, or other intoxicants, its
production, sale or consumption by advertisement are not permitted to be carried in the
cable service.36 This includes advertisements that directly or even indirectly promote
these products.

This rule had closed the door of surrogate advertising since it does not permit indirect
advertisement. However, the proviso which was inserted in 2009 enables surrogate
advertising of these products in certain conditions. It excludes cigarettes, wine, tobacco
products, alcohol, or other intoxicants, advertisement. The conditions laid are required to
be followed by advertisements carried on cable services which are using the brand name
or logo of a product that is also used by companies that deal in cigarettes, tobacco
products, wine, alcohol, liquor, or other intoxicants. Fundamentally, these conditions are
ones to be followed by surrogate advertisements, they are:

a. the story board or visual of the advertisement must not advertise the prohibited
product in any manner and depict only the product being advertised,
b. there should not be any direct or indirect reference to prohibited products in the
advertisement,
c. the advertisement must be free from any nuances or phrases promoting prohibited
products,
d. layout or presentations or the colors used in the advertisements should associated
with prohibited products,
e. while advertising the other product, the advertisement should not carry situations
typical for promotion of prohibited products.

The advertisers are further required to submit an application, proposed advertisements

copy and a registered Chartered Accountant‘s certificate that the product carrying the
same name as cigarettes, wine, tobacco products, alcohol, liquor or other intoxicants is
distributed in reasonable quantity and is available in a substantial number of outlets.

36
The Cable Television Network Rule, 1994, r. 7 (2) (viii) (A).

25
Where other products of the same category are available and the proposed expenditure
on such advertising should be in proportion and not above the actual sales turnover of the
product. Also, the Central Board of Film Certification has to preview and certify all such
advertisements, found to be genuine brand extensions by the Ministry of Information and
Broadcasting to be suitable for unrestricted public exhibition and are in accordance to the
first proviso‘s sub-clause (i) to (v), before the telecast or transmission or retransmission
of the advertisements.

Further, if the surrogate advertisements are examined closely with the proviso of Rule
7(2) (viii) (A) which give such advertisements a breather. It shows that the provision is
not followed in strict and stringent way, until cigarettes, wine, tobacco products, alcohol,
liquor or other intoxicants are being projected or promoted in the surrogate
advertisements. Additionally, the Ministry of Information and Broadcasting issued a
directive in 2010 to all the Television Channels. The directive ceased telecast of
surrogate advertisement that uses brand names or logos which is used for cigarettes,
tobacco products, wine, alcohol or other intoxicants.

The author views that unless the laws remove the exception for surrogate advertising, it
will persist. It is undeniable that surrogate advertisements have outstretched
consequences. The undertones of surrogate advertisements imbue aspirations to better
lifestyle among viewers. Even though Indian law prohibits advertisements of tobacco,
cigarettes and other intoxicants, advertisers have been successful in manipulating the law
and guidelines. Broadcasters, advertisers and companies must face stringent deterrence
and punishment for manipulating the law and guidelines. Broadcasters can‘t turn a blind
eye or give a cold ear to the rules, regulations and guidelines. Due to the broadcaster‘s
service of carrier, the advertisers or companies are able to use manipulative or indirect
techniques of advertising prohibited products. Statutory warnings should be made
mandatory in case of surrogate advertisements even if they are allowed to be aired by
way of exception to the provision. If prohibited products are indirectly or aired by twist
and manipulating the restraint imposed on them. Consequently, the audiences have to be
made aware about the manipulation in advertisements and the need for new legislations
on surrogate advertisements.

26
2.2.3. Cigarettes and Other Tobacco Products (Prohibition of Advertisement and
Regulation of Trade and Commerce, Production, Supply and Distribution)
Act, 2003 (COTPA)37

According to s.5(1) provides that cigarettes or any other tobacco products38 should not be
advertised by any person engaged in, or purported to be engaged in the production,
supply or distribution of cigarettes or any other tobacco products. Also, persons having
control over the medium should not let advertisement of cigarettes or any other tobacco
products pass through that medium. Advertisements, which directly or indirectly39,
suggests or promotes, the use or consumption of cigarettes or any other tobacco products
should not be included. The provision categorically prohibits any person from doing the
following directly or indirectly for pecuniary benefit:40

● It prohibits any person from displaying or authorizing or permitting to display

advertisement of cigarettes or other tobacco products.
● Selling, authorizing or permitting the sale of videotape or film containing
advertisement of cigarettes or other tobacco products is prohibited.
● Distribution41 or exhibition of advertisement of cigarettes or other tobacco products
on structures42 or vehicles is prohibited.

However, this sub-section will not be applicable to the following:

37
Hereinafter referred as COTPA.
38
The COTP Act 2003, s. 3 (p) states that the tobacco products mean the products which are listed in the
schedule of the COTP Act 2003. It includes cigarettes, cigars, cheroots, beedis, cigarette tobacco, pipe
tobacco and hookah tobacco, chewing tobacco, snuff, pan masala or any chewing material having
tobacco as one of its ingredients (by whatever name called), gutka and tooth powder containing
tobacco.
39
According to Rule 2 of the COTPA Rules, 2005, Indirect advertisement means (i) the use of a name or
brand of tobacco products for marketing, promoting or advertising other goods, services and events,
(ii) the marketing of tobacco products with the aid of brand name or trade mark which is known as, or
in use as a name or brand for other goods and services, (iii) the use of particular colours and layout
and/or presentation those are associated with particular tobacco products, and (iv) the use of tobacco
products and smoking situations when advertising other goods and services.
40
The COTPA s. 5(2).
41
Distribution includes distribution of any leaflet, hand-bill or document to the public which is or which
contains an advertisement of cigarettes or any other tobacco product.
42
Structures include any land, building, wall, hoarding, frame, post or structure.

27
a. an advertisement of cigarettes or any other tobacco products in or on a package
containing cigarettes or any other tobacco products,
b. advertisement of cigarettes or any other tobacco product which is displayed at the
entrance or inside a warehouse or a shop where cigarettes or any other tobacco
products are offered for distribution or sale.

Further, the Act provides power to order to any authorized officer43 to prohibit
transmission of advertisement in public interest, if such advertisement is flouting the
advertisement code prescribed under section 6 of the COTPA. Further, transmission shall
be prohibited if the program is likely to disturb public tranquility or likely to promote
feelings of enmity or disharmony or hatred or ill-will44on the ground of religion,
language, race, community or caste or any other ground.45 The provision gives authority
to any authorized officer to prohibit transmission of program if it is in violation of the
above-mentioned factors. The authorized officer may be for a particular tenure so that
shuffling happens.

Moreover, the Central Government also has power to prohibit transmission of programs
in violation of the advertisement code.46 The Central Government may do so by issuing a
notification in the Official Gazette. However, the Central Government does not exercise
its power. The Central Government should delegate this to the Advertising Standards
Council of India. But the ultimate power shall still be vested with the Central
Government. Therefore, any order by ASCI to prohibit transmission of advertisement on
the grounds discussed above may be executed after the ratification of the Central
Government. This means that the ASCI will do ground level probing and its findings will

43
The COTPA s. 2 (a) defines an authorised officer to be an officer within his local limits of
jurisdiction: (i) a District Magistrate, or (ii) a Sub-Divisional Magistrate, or (iii) a Commissioner of
Police. It also includes any other officer notified in the Official Gazette, by the Central Government or
the State Government, to be an authorised officer for such local limits of jurisdiction as may be
determined by that Government.
44
Promote feelings of enmity or disharmony or ill-will or hatred between different religious, linguistic,
racial, or regional groups or communities or castes.
45
The Cable Television Networks (Regulation) Act, 1995 s. 19.
46
The Cable Television Networks (Regulation) Act, 1995 s. 20 (3).

28
be submitted to the Central Government for action as the actual power lies with the
Central Government.47

Additionally, Rule 2 of the COTPA Rules 2005 explains the meaning of the term indirect
advertisement stated in section 5 of the COTPA. It provides that the use of a name or
brand of tobacco products for marketing, promoting or advertising other products would
constitute ―indirect advertisement‖.

Hence, the COTPA and the Rules both prohibit advertisement of cigarettes and other
tobacco products, in any form, advertised directly or indirectly.

2.2.3.1 Punishment for Advertisement of COTP

The punishment for advertisement of cigarettes and other tobacco products (COTP)
under section 5 of the COTPA, makes a person liable for imprisonment up to two years
or impose a fine which can extend to one thousand rupees or both on first conviction. For
second or subsequent conviction, the imprisonment can extend to 5 years and the fine
might go up to five thousand rupees.

Few amendments were proposed in the past48 but the Bills have lapsed. In the 2014 Bill,
the advertisement of tobacco products was prohibited even in the shops at the point of
sale and in warehouse. It is expected that these changes will help in reducing the
consumption of tobacco and educate the citizenry about the ill-effects of tobacco use.

Further, the Bill propositioned restrictions on the use of trade mark by tobacco companies,
ultimately making surrogate advertisements impossible for tobacco products.49 This Bill was
introduced in the public to seek suggestions from the public as part of the pre-legislative

47
The Central Government also has the power to make rules to carry out provisions of the Cable
Television Networks (Regulation) Act, 1995 in matters of the advertising code. The power to make
rules has been vested in the Central Government under section 22 of the Cable Television Networks
(Regulation) Act.
48
The Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and
Commerce, Production, Supply and Distribution) Amendment Bill, 2014 (Bill No. 74 of 2014) and the
Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and
Commerce, Production, Supply and Distribution) Amendment Bill, 2016 (Bill No. 280 of 2016).
49
The Cigarettes and Other Tobacco Products (Prohibition Of Advertisement And Regulation Of Trade
And Commerce, Production, Supply And Distribution) Amendment Bill, 2014 to insert s. 7A which
provides that every package of cigarettes or any other tobacco product shall comply with the following
conditions, namely - (i) the business or brand or company name, trade mark or any other mark shall
appear-(a) on the outer surface of the package not more than once, (b) in not more than one line; and
(c) horizontally below the specified warning with such font size and font style as may be prescribed.

29
process. Despite receiving over 2,000 views from the public, the Parliamentary Standing
Committee proposed that the mandatory 85% pictorial warning on the packaging of tobacco
products be reduced to 50%. This Bill has not seen the light of day.50

Since, the COTPA and Rule specifically prohibit advertisement of tobacco related
products like cigarettes and other tobacco products. The quantum of punishment needs to
be revised and the fine should be calculated based on the total amount spent on
advertisement. The author’s emphasis is that the Advertising Standards Council of India
(ASCI) should be referred to before the publication or broadcasting of any advertisement
of prohibited products is made. The advertiser shall not be allowed to publish the
advertisements of prohibited products directly or indirectly through any media channel.
Therefore, advertisements of associated products of the same brand should also seek
clearance and opinion from Advertising Standards Council of India (ASCI).

2.2.4. Advertising Standard Council of India on Advertisements of Cigarette &

Other Tobacco Products

Commonly called as ‗ASCI‘, it has been elaborately dealt with in later chapters.51
However, Chapter III of the self-regulation code of advertising is being referred to here,
which deals with indirect advertising. The code of advertising deals with the promotion of
those products, which are largely harmful or hazardous to the society. Cigarettes, tobacco
products, wine, alcohol or other intoxicants that use surrogate advertising as a channel for
promotion and sale come under the ambit of such harmful or hazardous products.52 This

50
Supra note 26.
51
See, chapter IV ASCI: Role and Contributions in Administering Advertisements for details.
52
Code of Self-Regulation in advertising, Chapter III Against Harmful Products/Situation guideline 3.6-
Advertisements for products whose advertising is prohibited or restricted by law or by this Code must
not circumvent such restrictions by purporting to be advertisements for other products the advertising
of which is not prohibited or restricted by law or by this Code. In judging whether or not any
particular advertisement is an indirect advertisement for a product whose Advertising is restricted or
prohibited, due attention shall be paid to the following:(a) Whether the unrestricted product which is
purportedly sought to be promoted through the advertisement under the complaint is produced and
distributed in reasonable quantities, having regard to the scale of the advertising in question, the media
used and the markets targeted. (b) Whether there exist in the advertisement under complaint any direct
or indirect clues or cues which could suggest to consumers that it is a direct or indirect advertisement
for the product whose Advertising is restricted or prohibited by law or by this Code. (c) Where
Advertising is necessary, the mere use of a brand name or company name that may also be applied to a
product whose Advertising is restricted or prohibited, is not a reason to find the advertisement
objectionable provided the advertisement is not objectionable in terms of (a) and (b) above.

30
provision states that advertisement of products prohibited or restricted by the law or by
this code should not purport in advertisement of other products that are not prohibited or
restricted by law53 or this code and must not circumvent the restrictions.54

2.2.4.1. ASCI Complaint case of Vimal Pan Masala55

The complaint stated that the alleged advertisement was understood to be surrogate
advertising. This advertisement enables the general public to believe that consumption of
pan masala is healthy. Further, there would be wrong impression on the minds of gullible
viewers by the alleged pan masala advertisement. Since, the advertisements claimed
goodness of saffron in the product which is grossly misleading. The issues raised in the
complaint are-

a. The youth of this country can be lured to consume such hazardous products and lead
to an unhealthy nation as the product is endorsed by a celebrity.
b. As a celebrity has a moral responsibility, Mr. Ajay Devgan too is morally responsible
to not lead today‘s youth into such hazardous habits.
c. The celebrity endorsing must be aware about the rising cases of oral cancer and do
they have any moral responsibility or not?
d. Does Mr. Ajay Devgan or his family/friends consume this product with Kesar; from
Vimal Pan Masala? If yes, then in how much quantity?
e. Why is the product promoted by a celebrity like Mr. Ajay Devgan, when the product
requires a health warning?
f. ―Daane Daane Mein Kesar ka Dum” implies that the product contains high amount
of saffron in it. What is the proportion of saffron in each pack and has there been any
independent test reports that substantiate such claims of the product? Please
comment.
g. What are the other ingredients of Vimal Pan Masala? What is the effect of such
ingredients on human health?

53
See, Code of Self-Regulation in advertising, Chapter III Against Harmful Products/Situation guideline
3.5-Advertisements shall not propagate products, the use of which is banned under the law.
54
Id. at 10.
55
Vimal Pan Masala is a product of Vishnu Pouch Packaging Pvt Ltd.

31
The decision taken regarding the advertisements suggested immediate withdrawal of the
advertisement. However, upon reviewing, the complaint was not upheld.

The chief purpose of Advertising Standard Council of India is vitiated due to the review
order of the complaint. There were no fetters imposed on the advertisement in review
stage. Since the case involves grave breach of self-regulatory code and law of land, the
decision of Advertising Standard Council of India should have been upheld in the
review. On the pretext of saffron, pan masala is advertised and Advertising Standard
Council of India gives it a clean chit. Such cases raise questions on the veracity of
Advertising Standard Council of India.

2.2.5. The Indecent or Surrogate Advertisements and Remix Songs (Prohibition)

Bill, 2013 and the Surrogate Advertisements (Prohibition) Bill, 2016:

It was introduced in Lok Sabha on 22.02.2013 the current status of which is lapsed. It
defined surrogate advertisement as an advertisement which shows a substitute product in
the guise of the real one, which otherwise cannot be legally advertised through the print
and electronic media.56 Section 3(1)(a) the Bill prohibited the publication or telecast or
cause to be published or telecast or arrange to take part in. The publication, telecast or
exhibition of or sticking, writing or painting any surrogate advertisement and
contravention of the said provision would draw punishment with imprisonment for a
term not less than five years but which may extend up to ten years along with a minimum
fine of three lakh rupees which may extend up to seven lakh rupees.57

The Indecent or Surrogate Advertisements and Remix Songs (Prohibition) Bill, 2013
lapsed later. The 2016 Bill i.e. the Surrogate Advertisements (Prohibition) Bill, 201658
also lapsed. Both the Bills have defined surrogate advertisement and have given the same
definition to surrogate advertisement.59 Further, both the bills prohibit publication or

56
The Indecent or Surrogate Advertisements and Remix Songs (Prohibition) Bill, 2013, s. 2(1) (g).
57
The Indecent or Surrogate Advertisements and Remix Songs (Prohibition) Bill, 2013, s. 5.
58
Bill No. 20 of 2016 introduced in the Lok Sabha by private member- Boora Narsaiah Goud Dr.
59
The Indecent or Surrogate Advertisements and Remix Songs (Prohibition) Bill, 2013, s. 2 (g) and the
Surrogate Advertisements (Prohibition) Bill, 2016, s. 2(d) defines surrogate advertisement as an
advertisement which shows a substitute product in the guise of the real one which otherwise cannot be
legally advertised through the print and electronic media.

32
telecast or cause to be published or telecast or arrange to take part in the publication,
telecast or exhibition of or sticking, writing or painting any surrogate advertisement and
contravention of the said provision.60 The Surrogate Advertisements (Prohibition) Bill,
2016 proposed higher punishment than the Indecent or Surrogate Advertisements and
Remix Songs (Prohibition) Bill, 2013. The 2016 Bill proposed imprisonment for a term
not less than five years but which may extend up to ten years along with a fine of
minimum five lakh rupees which may extend up to seven lakh rupees.61 Only the
minimum amount was increased in the 2016 Bill. The author suggests the punishment
proposed in the Surrogate Advertisements (Prohibition) Bill, 2016 to be more
appropriate.

In 2017, another Bill on surrogate advertisement was introduced in the Rajya Sabha,
known as the Surrogate Advertisements (Prohibition) Bill, 2016.62 All the three Bills
have given the same definition to surrogate advertisements. The Bill prohibits telecast or
publication of surrogate advertisement by the person telecasting or publishing or causing
or taking part in arrangement of telecast or publication of surrogate advertisement.63
Under this Bill the punishment has been reduced to imprisonment of three years up to ten
years with a fine of three lakh extended up to ten lakh.64 The punishment proposed under
this Bill should have been similar to that of the Indecent or Surrogate Advertisements
and Remix Songs (Prohibition) Bill, 2013 and the Surrogate Advertisements
(Prohibition) Bill, 2016 (Bill No. 20 of 2016).

These Bill were significant and need of the hour, since existing law and self-regulatory
code are ineffectual in handling and operationalizing surrogate advertising. But the
gravity required to tackle surrogate advertising is being unheeded by legislator‘s time
and again.

60
The Surrogate Advertisements (Prohibition) Bill, 2016, s. 3.
61
The Surrogate Advertisements (Prohibition) Bill, 2016, s. 5.
62
The Surrogate Advertisements (Prohibition) Bill, 2016 Bill No. LXXIII of 2016 was introduced by
private member T. Subbarami Reddy Dr. in the Rajya Sabha, which stand pending.
63
The Surrogate Advertisements (Prohibition) Bill 2016, Bill No. LXXIII of 2016, s. 3.
64
The Surrogate Advertisements (Prohibition) Bill 2016, Bill No. LXXIII of 2016, s. 5.

33
There is no objectivity behind introducing Bills to restrain and regulate surrogate
advertising time and again, if ultimately the Bills will lapse and not be taken up
seriously. Such lax attitude of legislators can be observed at the cost of consumer,
society and economy. Moreover, the Surrogate Advertisements (Prohibition) Bill, 2016
(Bill No. LXXIII of 2016) should either be reintroduced or include suggestions to
replace section 3 and 5 from that of 2013 Bill.

2.2.6. International Conventions

India has ratified the WHO tobacco control convention, the Framework Convention on
Tobacco Control (FCTC) on 5th Feb 2004 which came into force on 27th Feb 2005. This
convention was developed as a result of widespread growth of tobacco epidemic
globally.

2.3 Decisions of Various Courts in India Dealing with Surrogate

Advertising

The Allahabad High Court‘s division bench has broadly defined surrogate65
advertisement in the case of Struggle Against Pain through its President v. State of U.P.
and Others66

“Surrogate means a substitute. Surrogate advertisements are like

Advertisements which duplicate a product‟s brand image to promote that
of another product from the same brand. The surrogate or substitute
product may either resemble the original product or altogether be a
different product, but it is marketed under the original established brand
name. Product Owners resort to surrogate advertisements to promote and
advertise the products and brands in case the original product cannot be
advertised on mass media”

65
The earliest brand that took surrogate advertising was Bagpiper in 1993. It introduced the slogan
‗Khoob jamega rang jab mil baithenge teen yaar, Aap mein aur Bagpiper.‘ See,
http://www.indiantelevision.com/mam/marketing/mam/indias-advertising-clampdown-leaves-alcobev-
industry-hungover-180725.
66
Public Interest Litigation Number - 12510 of 2006.

34
In this case, the Struggle Against Pain (a registered society) alleged defiance of statutory
provisions of the Uttar Pradesh Intoxicating Liquor (Objectionable Advertisements) Act,
1976.67 One of the key aims of Struggle Against Pain was to eradicate social evils such
as intoxication, alcoholism etc. In light of which the Struggle Against Pain organized
various programmes like awareness camps, workshops, etc. Under the realm of Article
4768 of the Constitution of India, the State has a duty to prohibit the consumption of
intoxicating drugs apart from using for medicinal purposes. In furtherance to this the
UPIL Act, 197669 was enacted with the intent of prohibiting liquor advertisements by
cinematographic walls, exhibitions, hoardings and buildings in public places and other
conspicuous places. The UPIL Act, 1976 section 3 read with section 4,6 prohibits and
provides punishment for advertisement of intoxicating liquor products. Brands of liquor
were displayed by various advertisements in media like print or electronic through
posters, sign boards, etc. which was alleged to be in violation of the UPIL Act, 1976 by
the Struggle Against Pain. The Struggle Against Pain stated that advertisements in
electronic media, newspapers, magazines, etc. published by liquor manufacturing and
seller regularly promoted consumption and sale of liquor. Additionally, these companies
spend a huge amount on sponsoring various events and shows such as sports events or
musical night, etc. in the name of their liquor brands. These blatantly violated statutory
provisions of the UPIL Act, 1976. An example was placed on record in support of the
contentions raised by the Struggle Against Pain, which represented that,

“The copy of invitation card issued in respect of a musical programme

organized on 19th December 2005 on 7:00 P.M. at Railway Stadium,
Charbagh, Lucknow with tag Chhaya Sunidhi Ka Jadoo with a
monogram, Seagram's Imperial Blue. The monogram of Seagram's
Imperial Blue was printed on a card which also mentioned the word
Superhits and in very small fonts, difficult to read, words Cassettes and

67
Hereinafter referred as UPIL Act, 1976.
68
The Constitution of India 1949 a. 47- Duty of the State to raise the level of nutrition and the standard
of living and to improve public health The State shall regard the raising of the level of nutrition and
the standard of living of its people and the improvement of public health as among its primary duties
and, in particular, the State shall endeavor to bring about prohibition of the consumption except for
medicinal purposes of intoxicating drinks and of drugs which are injurious to health.
69
Uttar Pradesh Intoxicating Liquor (Objectionable Advertisements) Act, 1976.

35
 CDs have been mentioned. On the back of card, terms and conditions
were mentioned. There also, monogram of „Seagram's Imperial Blue‟
was mentioned and here also the words „Cassettes and CDs‟ were so
small that it is difficult to read with naked eyes‖

Source: https://www.thehindu.com/2005/11/24/stories/2005112404370200.htm

Inter alia, McDowell and Company Limited, Triumph Distillers and Vintners Private
Limited, Shaw Wallace Distilleries Ltd and Herbertsons Limited, 70 asserted that
sponsoring entertainment activities such as musical, sports events, etc. and advertisement
or any invitation issued for promotion of these events cannot be alleged to violate UPIL
Act, 1976 section 3. The significant view in issue of the court was that there is a clash of
interest every time for the State, since as the State it needs to maintain a balance between
the constitutional goal71 and the reality. Constitutional goals enshrined under Article
47 of the Constitution of India envisages a total prohibition and ban on tobacco and
liquor products. However, the main revenue for the State comes from activities relating
to excisable items like, liquor, tobacco, etc. The court observed that respondent dealt

70
Respondents number 3, 7, 8 and 9 respectively filled a composite counter affidavit.
71
Constitutional goals enshrined under the Constitution of India, art. 47.

36
with manufacture and sale of liquor products. Further, it was apparent that few
advertisements were advertising something else than what was pretended to be
advertised. Further, the court was satisfied that the alleged advertisements were
prohibited by section 3 of the UPIL Act. The State of U.P. Excise Commissioner, Police
authorities were directed by the court to ensure that alleged advertisements were not
displayed within the territory of the State of U.P. or circulated or shown on television or
cinema halls or published in any magazines and newspapers, etc.72

In the case of Mr. Mahesh Bhatt and Kasturi and Sons v. Union of India (UOI) and
Anr.73 the constitutional validity of Cigarettes and Other Tobacco Products (Prohibition
of Advertisement and Regulation of Trade and Commerce, Production, Supply and
Distribution) Act, 2003 (COTPA) was questioned. Mahesh Bhatt alleged that the
amended rules of COTPA violated freedom enshrined under Article19(1)(a) of the
Constitution of India i.e. freedom of speech and expression and are not covered under
Article19(2) of the Constitution of India. Further, it was also stated by Mr. Bhatt that
doing business and use of tobacco is neither illegal nor is it res extracommercium
meaning a thing outside the realm of commerce. The court‘s finding represents that
indirect or surrogate advertisements have been included in commercial advertisement. It
has been used for promoting and encouraging the use of tobacco products.
Article 19(1)(a) of the Indian Constitution does not protect expressions of commercial
advertisements of tobacco products. The Apex Court, upheld the constitutional validation
of COTPA. It was emphasized that commercial advertisements are subjected to public
interest. Entitlement of protection under Article 19(1)(a) of the Indian Constitution will
be subjected to public interest. Commercial advertisements have been considered to be
different and distinct from news. Therefore, commercial advertisement promoting
tobacco products even if carrying any sort of news cannot be treated as news. The court
apprehended that restraining electronic media and cinematographic films to prevent
publication of brand logos, names, of tobacco products is reasonable and justified in
larger public interest.

72
Struggle Against Pain through its President v. State of U.P. and Others on 14 March 2019 Public
Interest Litigation (Pil) No. - 12510 of 2006.
73
147(2008) DLT561.

37
Surrogate advertising has been condemned many times, like, the recommendations
submitted by Smt. Vibha Bhargava, Secretary, Press Council of India to Ministry
recommended to discourage surrogate advertising in point 5(e).74

Indian Premier League is not far from the class involving surrogate advertising. In the
Public Interest Litigation filed against the Indian Premier League team of Bangalore
named ―Royal Challengers‖ alleged surrogate advertising of ―Royal Challenge‖. Royal
Challenge-the liquor brand was being promoted in an overt and obvious by the same
company. Yet, the Apex Court identified that the Indian Premier League team is not
named as ‗Royal Challenge‘ but it is named ‗Royal Challengers‘. Therefore, it would just
attract alcoholics, drinkers, it will not impair the non-drinkers and non-alcoholics. The
concept was liberal interpreted by the court considering the facts before it and exercised
its judicial acumen in this decision.75

A ban on surrogate advertising was sought by filing a public interest litigation in the
Delhi High Court on September 3, 2014. This public interest litigation plead for banning
tobacco and liquor products technique of indirect advertising, i.e., surrogate advertising.
This matter was withdrawn due to unknown reasons.76

However, it is in 2013 surrogate advertisement was banned by the Apex Court for
tobacco products. This was done by lifting an interim order of the Bombay High Court,
which was seven-year-old. In 2006 a petition was admitted by the Bombay High Court,
which challenged few provisions of the Cigarettes and Other Tobacco Products
(Prohibition of Advertisement and Regulation of Trade and Commerce, Production,
Supply and Distribution (Amendment) Rules, 2005 by manufacturers and had stayed
Rule 2(e) that of tobacco products.77 However, in 2017 the plea that sought ban on

74
Awdhesh Singh Bhadoria v. Union of India and Others, the High Court of Madhya Pradesh, 2013(2)
JLJ199.
75
See, http://naiknaik.com/surrogate-advertising-in-india-permissible-or-not/ (last visited on January 19,
2016).
76
The PIL was filed by social activist Teena Sharma. It was alleged that all advertisements must be
previewed and certified by the Central Board of Film Certification (CBFC). After such advertisements
were found to be genuine by Ministry of Information and Broadcasting. See, www.mondaq.com (last
visited on January 15, 2019).
77
SC bans surrogate ads for tobacco products, available at: https://timesofindia.indiatime
s.com/india/SC-bans-surrogate-ads-for-tobacco-products/articleshow/21257960.cms (last visited on
May 3, 2017).

38
surrogate advertisements was rejected by the Apex Court. This plea was filled by a law
student for directing the Centre to frame guidelines to ban surrogate advertisements. The
bench headed by the then Chief Justice of India J S Khehar dismissed the plea. The
bench was also comprised of D Y Chandrachud and S K Kaul J.J. who stated,78

―Do you think that these soda advertisements make people drink alcohol
more? We don't think so...Sorry‖

The author’s emphasis is that like the government, the Apex Court has taken a lenient
view towards surrogate advertising.

Additionally, few high courts have brought the conflict of interest of the State between
imposing ban on surrogate advertisements and earnings from advertisements and
promotion of tobacco and liquor products to light. The Apex Court should admit and
address the issue of surrogate advertising. This will unbox a plethora of ill effects caused
by surrogate advertising, which indirectly promotes the sale and consumption of tobacco
and liquor products. Ultimately, it is the people of the society who are lured towards
tobacco and liquor products. Innocent minds are trapped by these advertising techniques,
resulting in them consuming tobacco and liquor products, ignoring the ill effects,
especially on the health. The Apex Court should holistically weigh the ill effects of
surrogate advertisements on the health of the consumer. Moreover, surrogate
advertisements build a perception among the viewers that by using tobacco and liquor
products one gets associated with a particular social class and fame. If unattended
surrogate advertisements can solicit teenagers and young minds into grave addiction to
consume tobacco and liquor products, it should be curbed with the intervention of the
Apex Court by having effective guidelines to monitor and regulate surrogate advertising.
Surrogate advertisements have been contemplated, studied and evaluated by the division
bench of the Allahabad High Court. It should be referred and cited to invoke affirmative
action against surrogate advertisement on the judicial side. The pronouncement by the
Allahabad High Court is a good development in restraining the surrogate advertising.
However, there is a deficiency in identifying the significant ill effects and in the

78
Supreme Court junks plea seeking ban on surrogate advertisements, available at: https://www.busines
s-standard.com/article/current-affairs/supreme-court-junks-plea-seeking-ban-on-surrogate-advertiseme
nts-1170428010481.html (last visited on May 3, 2019).

39
implementation of restrain on surrogate advertising which can be controlled by the Apex
Court.

2.4 Notable Initiatives to Curb Surrogate Advertising by Government

The Government and Ministries have identified the menace of indirectly advertising
tobacco and liquor products. Although, they haven‘t taken any effective step in curbing
the menace but their actions and direction represent that they have identified the menace
of indirectly advertising tobacco and liquor products. The actions include issuance of
suggestions, recommendations, request or direction by authorities to restrain surrogate
advertising and demotivate celebrities for associating with such advertising. They have
tried to restrain advertising of tobacco and liquor products. A few instances are:

2.4.1 Directions Issued by State Government to Celebrities

Bollywood actors Shah Rukh Khan, Ajay Devgan, Govinda, Arbaaz Khan and Sunny
Leone have been seen endorsing pan masala brands. The Delhi Government in January
2016 wrote to these actors suggesting them not to endorse pan masala brands which
contain areca nut and rather join its anti-tobacco campaign. Pan masala containing areca
nut are considered to be a cancer-causing agent. Many of the pan masala brand
advertisements serve as surrogate advertisements of tobacco products promoted by
manufacturing companies. As the youth follows and gets easily influenced by Bollywood
actors and adopt their action, lifestyle and other traits, these advertisements make the
youth more vulnerable to consumption of tobacco.79

2.4.2 Steps taken by the Food and Drugs Administration (FDA)

The Food and Drugs Administration (FDA), Maharashtra, in November 2015 took steps
against celebrities endorsing tobacco or paan masala products or surrogate
advertisements that subtly promote gutkha consumption. It also promised to take action
against celebrities endorsing tobacco or paan masala products or surrogate
advertisements. A report of the WHO on gutkha consumption within the territory of
79
Delhi government requests Bollywood actors like Shah Rukh Khan, others not to endorse pan masala,
available at: https://economictimes.indiatimes.com/industry/cons-products/tobacco/delhi-government-
requests-bollywood-actors-like-shah-rukh-khan-others-not-to-endorse-pan-masala/articleshow/506118
01.cms (last visited on May 3, 2019).

40
Maharashtra, undertaken jointly with the Johns Hopkins University's Bloomberg School
of Public Health and the Centre for Communication and Change, India (in December
2014) showed that after the ban was imposed there was a decrease in gutkha
consumption. However, 36% of users still managed to buy gutkha from nearby States.
This also led to smuggling of gutkha from other states.80 Therefore, the study highlights
that there exists a relation between imposing ban and consumption of gutkha.
Subsequently, the consumer explores nearby territories where gutkha is not banned to
procure gutkha for consumption.

2.4.3 Measures taken by Ministry of Consumer Affairs

In 2015, the Consumer Affairs Ministry tried to be tough with channels and looked for
ways to curb surrogate advertising prevalently among alcohol and tobacco companies.
The main forethought of the Ministry was that surrogate advertising is misleading as the
intention of surrogate advertising is principally to promote the flagship brand rather than
the extension. The Consumer Affairs Ministry has been successful by bringing novel
Consumer Protection Act which repeals the 1986 Act. However, the intervention of the
Apex Court cannot be precluded to set the rule of law relating to surrogate advertising in
place.81

2.4.4 Notice issued by Information & Broadcasting Ministry

The Information & Broadcasting Ministry banned 12 advertisements around August

2002, further it issued show-cause notice to various TV channels, including Zee, STAR,
Sony and Aaj Tak. The show-cause notice was sought for reason of carrying liquor
product‘s surrogate advertisements by Television channels. Further, the channels were
ordered to strictly observe the Cable Television Networks (Regulation) Act 1995 and
Cable Television Networks Rules, 1994. For this, a private monitoring agency was also
hired by the I&B Ministry for the purpose of keeping a watch on all advertisements
violating provision of the Act. Leading television (TV) broadcasters were ordered by
Information and Broadcasting (I&B) Ministry of India in June 2002 to ban telecast of
80
―Celebs endorsing gutkha to face the heat; FDA will act against Bollywood stars promoting tobacco
and paan masala through surrogate advertisements‖ DNA, November 5, 2015.
81
Surrogate ad law being strengthened, available at: https://www.business-standard.com/article/econom
y-policy/surrogate-ad-law-being-strengthened-115032500035_1.html (last visited on May 2, 2019).

41
two liquor brands‘ surrogate advertisements namely Gilbey's Green Label and
McDowell's No. 1. Few other brands were on the watch list such as, Hayward's 5000,
Smirnoff Vodka, Royal Challenge Whiskey and Kingfisher beer.82

These instances corroborate that the Government has identified surrogate advertisement
as an issue, moreover, it has a reverse opinion with regards to surrogate advertising than
that of the Apex Court. The Apex Court has ruled out the fact that surrogate
advertisement can make people consume tobacco or liquor.83 Even though in the past,
courts have taken strict action against surrogate advertising. It can be opined that the
Government is conspicuous on regulation of advertisements every now and then, rather
than holistically regulating all issues, breaches and violations done by advertisements.
Under the garb of one issue, it puts issues like patriarchal or indecent representation of
women and/or issues affecting children in the black box. Moreover, the Apex Court
should contemplate adopting this vision, rather than looking at the matter in light of an
issues that require direct regulation.

2.5 Role of Disclaimers in Advertisements of Tobacco Products

A disclaimer is generally used to reduce legal liability and as a defensive measure to

protect from unwanted liability. Disclaimer is a kind of advertisement that carries a
social message. They cannot be put in the bracket of commercial advertisements.

The Cigarettes and Other Tobacco Products (Prohibition of Advertisement and

Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003,
section 7, provisions for display of health warnings on tobacco product packaging. A
minimum of 40 % of the front panel‘s principal display area of cigarettes or any other
product containing tobacco should be occupied by the health warnings. The packaging
should carry a health warning in accordance with the schedule, at the same time they
need to be prominent and legible.

82
Banning Liquor Surrogate Advertising: Banning Liquor Advertisements–Again, available at: http://w
ww.icmrindia.org/free%20resources/casestudies/Banning%20Liquor%20Surrogate%20Advertising1.h
tm (last visited on January 19, 2016).
83
Supra note 78.

42
Further, clause (1) of the schedule, states the specification for formulating health
warnings, pictorial representation of ill effects of tobacco use and health messages. The
health warning specified in clause (2) of the schedule, are as below:

Images: Health warning for tobacco products meant for smoking

Image: Health warning for tobacco products meant for chewing or used in smokeless
form

Subsequently the punishment for violation of section 7 is prescribed under section 20 of

the COTPA. The violation draws punishment of imprisonment for a maximum of 2 years
or a fine that can extend to five thousand rupees or both. In case of a second or
subsequent offence, the imprisonment may go upto 5 years and upto Rs. 10,000/- fine
may be imposed. These punishments are prescribed for any person be it a producer or a
manufacturer who doesn‘t comply with the labeling or packaging norms and mention
nicotine and tar content on the packet of cigarettes and other tobacco products.

When such an offence is committed by a seller or a distributor, such a person is liable to

be imprisoned for a maximum period of one year or to pay a fine of up to thousand
rupees or both. For the second or subsequent offence, such seller or distributor will be

43
liable for punishment with imprisonment of maximum 2 years and with fine which can
extend up to three thousand rupees.

2.5.1 Smoking Disclaimer in Films

The Ministry of Health and Family Welfare along with Information and Broadcasting
Ministry issued a circular, pertaining to scenes in films and TV programmes showing
smoking.84 The guidelines provided in the circular requires an audio-visual disclaimer of
minimum 20 seconds, representing ill effects of tobacco, be made mandatory for films
that have smoking scenes in it. Such disclaimers shall be shot with the actor shown to be
smoking in the particular movie scene. Further, the disclaimer should be played at the
beginning, during the interval of the films and when the products or their use is displayed
in the films as a static warning.85

Image: Nawazuddin Siddiqui in Gangs of Wasseypur II is shown to be constantly

smoking cigarettes or ganja throughout the movie.

(Source: Image courtesy IBNLive.com)

In Bobby Art International86 the Apex Court, viewed that since there is no
comprehensive ban on smoking in our country, banning smoking scenes in films and
television is unreasonable. It will restrain artistic expression, creative freedom and be
unreasonable due to excluding actual depiction of life.

84
Ministry of Health & Family Welfare, in consultation with the Ministry of Information &
Broadcasting, has agreed to amend the Notification issued vide GSR 786(E) dated 27.10.2011. See
also http://pbhealth.gov.in/6d.pdf.
85
Why warnings against smoking could be injurious to health, available at: https://teekhapan.
wordpress.com/tag/chillum/ (last visited on May 3, 2018).
86
Bobby Art International v. Om Pal Singh Hoon, (1996) 4 SCC 1.

44
Disclaimers during the smoking scene draws varied opinions which are also stated in the
notification issued by the Government of India Ministry of Information and Broadcasting.87
The notification stated that the objective of film certificate is to ensure that the ‗creative
freedom and artistic expression are not unduly curbed‘.88 The film must be ―judged in its
entirety from the point of view of its overall impact‖.89 It must also be judged in the light of
the period depicted and the contemporary standards of the people to whom it relates,
moreover, it shall not deprave the morality of the audience.90 Hence, it‘s not important to
highlight the smoking disclaimer during the smoking scene as it curtails creativity.

However, the principles must be interpreted in light of public interest. If showing the use
of tobacco and liquor products promotes its use or sale, it should be subjected to
warnings. Disclaimers are warnings, they don‘t operate to restrain or prohibit the
smoking scene. Such disclaimers will nowhere come in conflict with the creative or
artistic work of the film. It is a good step towards warning and educating the audience
about the harm of smoking.

2.6 Realm of Indian Statutes Dealing with Regulation of Surrogate

Advertisements: A Brief

Besides being misleading, false and dishonest, surrogate advertisements are harmful to
consumer interests. To regulate and address the issues surrounding surrogate
advertisements, the Government of India banned direct and indirect advertisements of
cigarettes and liquor mainly through,

 The Cable Television Network (Regulation) Act, 1995,

 The Cable Television Rules, 1994
 Guidelines laid in the Advertising Standard Council of India (ASCI) Code,

87
See, https://www.tobaccocontrollaws.org/files/live/India/India%20-20Cinematograph%20Rules.pdf (l
ast visited on May 4, 2019).
88
Objective 1 clause (a) of the Government of India Ministry of Information and Broadcasting New
Delhi, notification, 1991.
89
Principle 3 clause (i) list Board of Film Certification to ensure aspects for the film provided in the
Government of India Ministry of Information and Broadcasting New Delhi, notification, 1991.
90
These aspects were stated in the Government of India Ministry of Information and Broadcasting New
Delhi, notification dated December 6, 1991.

45
 The Cigarettes and Other Tobacco Products (Prohibition of Advertisement and
Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003
(COTPA),
 The World Health Organisation FCTC 2005.

Even the repealed Act, Monopolistic and Restrictive Trade Practice Act, 196991 reckoned
unfair trade practices to include deceptive, fraudulent or unethical methods. The
Monopolistic and Restrictive Trade Practice Commission was empowered to take action
against direct or indirect acts of unfair practices. It was contemplated under Monopolistic
and Restrictive Trade Practice Act, 1969 section 36A(1)(x) that could action be taken
against factually correct statements, which can be misleading and disparagement by
MRTP Commission. It was affirmative in Win Medicare v. Reckitt Benckiser, 2002 (24)
PTC 686 MRTPC that action can be taken by the MRTP Commission.92

In spite of the array of provisions in various statutes, manufacturers of liquor, cigarette,

tobacco and other harmful products resort to surrogate advertisement. A Bill was
proposed ergo to seek complete ban on advertisement of liquor, tobacco and other
harmful products and forbids direct and indirect sponsorship of sports and cultural
events. The Surrogate Advertisements (Prohibition) Bill, 201693 is pending which was
introduced in the Rajya Sabha in March 2017. The principal objective of introducing this
Bill was that Surrogate Advertisements are not a genre of misleading advertisement but
are dishonest and false. A total ban on surrogate advertising of tobacco, liquor and other
harmful products is proposed in the Bill. It includes prohibition on direct or indirect
sponsoring of cultural and sports events by manufacturers of tobacco, liquor and other
harmful products.

According to the Bill, surrogate advertisements is defined as advertisement of products

which are legally prohibited from being advertised through the electronic and print

91
The Monopolies and Restrictive Trade Practices (MRTP) Act, 1969 has been repealed with effect
from 01.09.2009 and MRTP Commission has been dissolved with effect from 14.10.2009. See, at
http://www.mca.gov.in/Ministry/pdf/lok_unstarred_ques_1099_04122015.pdf.
92
Pratyayee Saha and Rudrani Sengupta, Comparative Advertising and generic disparagement: A probe
into its status in the Indian Legal System in the Light of recent cases 23. See, http://docs.manupatra.in/
newsline/articles/Upload/34D9D421-622C-49A1-8D5B-3CF9BF421947.2-B__IPR.pdf.
93
Bill No. LXXIII of 2016, introduced by private member Shri. Dr. T. Subbarami Reddy, M.P.

46
media by using other substitute products in the pretext of the real product in the
advertisement.94

The publication and telecast of surrogate advertisements by any person is prohibited

under the Bill.95 Nevertheless, publication and telecast of advertisements aimed at
educating the general public or a specific group are not prohibited if in the public
interest.96 The Bill imposes punitive liability on the firm, company, other associations of
the individual or any person who was in-charge at the time of the offence will be guilty
of the offence.97 The Central Government is empowered to make rules for the execution
of the Act98 under the Surrogate Advertisements Bill. Moreover, agencies may be
designed for effective implementation of the provisions of the Bill by appropriate
Government.99

With surrogate advertising being so widespread, passing this Bill is the need of the hour.
Companies use trade mark of a product for the purpose of substituting one product for
the other. The Bill is silent on comprehensive intellectual property rights exploitation by
surrogate advertisements. Although it prohibits this and punishment is meted out if one is
guilty of committing the acts prohibited under the Bill.

94
The Surrogate Advertisements (Prohibition) Bill, 2016, s.2(d).
95
The Surrogate Advertisements (Prohibition) Bill, 2016, s.3.
96
The Surrogate Advertisements (Prohibition) Bill, 2016, s.8 (1).
97
The Surrogate Advertisements (Prohibition) Bill, 2016, s.5 and s. 6.
Section 5 provides punishment for whoever contravenes the provisions of this Act shall be punished
with imprisonment for a term which shall not be less than three years but which may extend up to ten
years and with fine which shall not be less than three lakh rupees but which may extend up to ten lakh
rupees.
Section 6 specifically provides penalty for offences by Companies, firms and other associations.
Where an offence under this Act has been committed by a company, firm or other association of
individuals, every person who, at the time the offence was committed, was incharge of, and was
responsible to the company, firm or association for the conduct of the business of the company, firm
or association, as the case may be, shall be deemed to be guilty and shall be liable to be proceeded
against and punished accordingly.
98
The Surrogate Advertisements (Prohibition) Bill, 2016, s.9.
99
The Surrogate Advertisements (Prohibition) Bill, 2016, s. 4.

47
2.7 Conclusion: Surrogate Advertising in India

Surrogate advertising is used for products that are banned from being advertised due to
the harm caused to the consumer by perusal of the products. However, there is no blanket
rule of ban prevalent for all categories of advertisements. It is a form of deceptive or
false advertising that advertisers camouflage banned products in to advertise them. Due
to the nature of surrogate advertising and its direct link to sales of the product, it has
been considered a sensitive issue.

To tackle the issue of surrogate advertising, the list or class of products that use this
technique of advertising need to be categorized. The categorization can be spread into
three statuses like ban, allow or allow with restriction respectively for each class or list
of products. This will bring clarity on how to treat surrogate advertising of products
banned and otherwise. It will support different departments, officials and other
individuals involved in implementation. They will be able to take effective and
corrective action.

There are not only policy related limitations, but also at a resource and infrastructural
level. There is a lack of support from the police, unawareness, ineffective guidelines and
inflict supply from neighboring territories.

For instance: According to regulation 2.3.4 of the Food Safety and Standards
(Prohibition and Restrictions on Sales) Regulations of 2011, of the Food Safety and
Standards Act, gutkha and paan masala containing tobacco are banned. The Apex Court
directed all States and Union Territories to ban the manufacture and sale of gutkha and
paan masala containing tobacco. This ordered was directed by the Apex Court in the case
of Ankur Gutkha v. Indian Asthma Care Society.100 In 2015, the court observed that
gutka was being sold illegally in the states of Delhi, Uttar Pradesh and Maharashtra.101
Due to the powerful gutka lobby, connivance of FDA officers and police officials,
gutkha was smuggled from neighboring states. Tobacco products worth Rs. 114 crores

100
SLP No. 16308 of 2007.
101
Gutkha ban: Supreme Court seeks compliance report from states, available at: https://www.Downtoea
rth.org.in/news/gutkha-ban-supreme-court-seeks-compliance-report-from-states-40766 (last visited on
May 4, 2019).

48
have been claimed to be seized in between 2013-2018 by concerned authorities.102 The
menace of sale and manufacturing of gutkha exists even after the ban. Therefore, the
Government needs to cater to this issue from a wider lens and monitor such illegal
activities associated with Gutka or other tobacco products. However, the Government
shall make proper arrangements of employment for the people who are affected by
temporary or permanent ban as and when implemented in full swing. Additionally,
manufacturers operating or entering in this sector should be demotivated. This may
eventually result in businesses avoiding promotion of their products by advertisement.
However, manufacturers and sellers may get diverted to techniques of indirect
advertisements. This will depend on the market conditions, government regulations and
competition of manufacturers and sellers to rely totally on surrogate advertising.
Therefore, with effective regulation to curb manufacturing and sale of gutkha, the
technique to promote its use, sale and visibility must be tapped into.

Hefty budgets are set aside for advertising by companies so that the customers do not
forget that liquor and tobacco brands are banned from advertising. The recall rate,
visibility and existence of liquor and tobacco brands is achieved by the advertising. But
the ban on advertising of these products turns the manufacturer and seller to indirect
advertising, popularizing surrogate advertising. Legal challenges and inadequate
enforcement causes serious setback on the ban imposed on indirect advertisements of
tobacco products. Liquor and tobacco product companies engage in sponsoring and
contribute in organizing fashion shows, music and bravery awards, among other events
in an attempt to be socially acceptable. Even today, controversy and sensitive issues lurk
around the ban of surrogate advertisements. Companies opine that it is the government
that allows manufacturers and sellers of tobacco and liquor products to do business. The
government imposes heavy taxes on manufacturers and sellers of tobacco and liquor
products. On the other side, the government bans direct or indirect advertisement by the
seller of tobacco and liquor products, leaving no resort for the companies to boost sales
by adopting legal and permitted advertising practices and rules. Moreover, the tones of
surrogate advertising are alarming as they also appeal to the aspirations of a better

102
State govt. makes selling gutka non-bailable offence, available at: https://www.thehindu.com/ news/ci
ties/mumbai/state-govt-makes-selling-gutka-non-bailable-offence/article22971047.ece (last visited on
May 4, 2019).

49
lifestyle. Even though there are certain guidelines provided by Indian law to restrain
advertisements of harmful products like tobacco and alcohol, surrogate advertisements
have easily manipulated the law. Punishments have to be stringent to deter companies,
broadcasters, and advertisers from resorting to surrogate advertisements. Each Television
channel carrying surrogate advertisement should be made accountable for accepting
surrogate advertisements.

The consumption of alcohol and intake of tobacco products is on a rise among the
younger generation which is a grave concern for the nation. Subsequently, these harmful
products are being stereotyped as the companion of a classy lifestyle and good times.

The exhibition of statutory warning mandatory to represent alcohol intake and tobacco
consumption on television is of zilch value. Till the time surrogate advertisements are
freely aired. Corporates massively use surrogate advertisements because the spirit of the
legislation to control this menace is heavily diluted. To tackle this problem, the
Government must ban the products completely and remove them from the market or
forbid companies to use circuitous methods to make use of their brand names by making
stringent provisions. Further, greater awareness of the audience about the indirect
advertising technique is required with a need for new legislations on surrogate
advertisements.

Beside surrogate advertising, a form of indirect advertising, advertisers or companies

resort to comparative advertising to promote and advertise their products. In both
techniques, the trade mark of the brand or product plays a vital role. Surrogate
advertising is common among liquor and tobacco products which are banned from
advertising. On the other hand, the technique of comparative advertising is common
among FMCG companies. It is used for products, which are not prohibited by the
law, however, both the techniques employ trade mark of the brand to leverage the
advertisement. This has been dealt with, in detail, in the forthcoming part of the
chapter.

50
2.8 Introduction to Legal Regulation of Comparative Advertising in
Advertisements

Liberalisation, privatization and globalization lead to a profusion of opportunities,

competition for multinational corporations and started the manufacturing of various
products. This gave new impetus to advertising and forms of advertising, especially to
comparative advertising. Although, comparative advertising is not a new form of
advertising, it can be traced back to the beginning of commerce itself. Traders have
always attempted to draw pecuniary benefits from comparing some features of their
product or services with that of the competitor‘s product or services.

According to the Black‘s Law Dictionary, comparative advertising is defined as

“advertising that specifically compares the advertised brand with another

brand of the same product.‖103

Comparative advertising identifies the competition for the purpose of claiming

superiority or enhancing perceptions of the sponsor's brand, as opposed to advertising
that promotes one's product solely on its own merits. The comparison may be in anyway,
subtle, or it may show or name a specific competitor. Few definitions explaining the
concept of comparative advertisement, as namely the:

“Superiority claimed or enhancement in perceptions of the sponsor's

brand is identified as competition, which is opposed to advertising where
promotion is channelized solely to one's product on its own merits.104
“Comparison is based on some specific attribute related to the product
like the price or taste, though the comparison can be a general, all-
encompassing one.105

103
Bryan A. Garner (ed.), Black‟s Law Dictionary (WEST, USA, 2009).
104
James K E and Hensel P J, Negative advertising: The malicious strain of comparative advertising
20(2) Journal of Advertising (1991).
105
Dhruv Grewal and Larry D. Compeau, Comparative Price Advertising: Informative or Deceptive? J.
Pub. Poly & Marketing 52 (1992).

51
 “Although comparative advertising is looked upon as being more
offensive, less believable, less honest or highly incredible than is non-
comparative advertising.”106

“Any advertising which explicitly or by implication identifies a competitor

or goods or services offered by a competitor.”107

In advertising technique of comparative advertising employed by advertisers, involves

the comparison of products and services advertised by one seller with that of another
seller based on the price, quantity, quality, durability, free gifts, etc. Commonly, a known
or recognizable brand from similar generic product class is compared to a lesser known
or famous products or services based on specific attributes.108 The key motivation of a
seller behind using this technique is to generate higher profits, increase sales and
visibility of the product and services in the market. It envisages depiction of key features
and focuses on the attributes of the product.

Comparative advertising is conceived to be beneficial for consumers and is effective in

stimulating initial attention for small firms on comparison with big brands.

The research study lays emphasis on effectiveness of comparative advertising of

products and services and determining the acceptable ambit of comparative advertising
which doesn‘t amount to infringement. The effect of comparative advertising on
competition, practice, and the impact on consumer rather than just being a tool of
marketing will also be elucidated.

2.8.1 Forms of Comparative Advertising

Direct and indirect comparative advertisements are the classification of comparative

advertisements. Indirect form of comparative advertising includes comparing features of
one product/brand with all the rival products/brands. The comparison is not directly with
one particular product/brand, moreover, the manner of comparison so that it is favorable

106
Supra note 104.
107
See, EU Directive 97/55/EC, OJ L290 23/10/1997 at pg. 8.
108
Debra Scammon, Comparative Advertising: A Reexamination of the Issues 12 The Journal of
Consumer Affairs (1978).

52
to the product/brand comparison with competitor. However, in direct form of
comparative advertisement there is direct comparison of the attributes and features of
one product with the similar attributes or features of another specific competitor.

Further, comparative advertisement is bifurcated in to positive and negative results. The

advertiser reaps advantage and benefit by depicting features and attributes of the product
while comparing. This comparison is positive, as depicted is considered favourable for
the product/brand. The defective practices used in comparative advertisement to
misguide the customers by degrading the value and quality of the products and services
of the competitor are negative comparative advertisement.109

The concept of comparative advertisement has no accurate or specific definition under

Indian law unlike the UK law which provides explicit or implicit identification of the
competitor or identification of goods or services in the advertisement.110

2.8.1.1 Focal Areas of Comparative Advertising

Consumers, competitors, and competition are the three focal areas affected by
comparative advertising. These focal areas have implication on formulating public policy
relating to the use of comparative advertising. This technique i.e. comparative
advertising is presumed to improve and enhance competitive environment in a market.
This encourages brand evaluation by consumers along with providing factual and
relevant product information to the consumer.

2.8.2 Genre of Comparative Advertising

Comparative advertising involves comparison of diverse categories to show an edge over

the product being compared. Certain comparative advertising techniques used to describe
or project the product or services uniquely by the advertiser in the advertisement are:

109
Lawdit Solicitors, ‗Comparative Advertising and Trade Mark Infringement‟, Law Society of England
and Wales. See, http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/Comp
arative%20Advertising%20and%20Trade%20Mark%20Infringement.htm (April 17, 2009).
110
Semila Fernandes, ‗Comparative Advertisement and It‘s Relation to Trademark Violation – An
Analysis of The Indian Statute‘ 2 JBM&SSR 68 (2013).

53
● Better in class: The product advertiser claims its product or service to be better as
compared to product or services of a particular category or class.
● Better than other product or services: The product or service is posited to be better
than the other product or service in the market. Advertiser may or may not cite
another product or service.
● Compare features of the product or service: In this category a particular feature of a
product or services are compared with that of the competitor‘s product or services.
● Stating deficiencies of competitor product or services: Product of advertiser is
compared by asserting the deficiency of competitor products, giving the advertised
product an edge over the product being compared to.
● Comparing by blurred trade mark: The advertiser compares its product with the
competitor‘s product by blurred trade mark. Even though the trade mark is blurred in
the ad, the viewer can identify the trade mark being compared to.
● Direct comparison: The product compared directly claims to be better than that
specific product of the competitor.

Advertisers commonly use the trade mark of the competitor product or a unique feature
linked to the trade mark of the competitor to compare in the ad, so that the viewer
perceives the product better. The legitimate interest of the trade mark owner is damaged
and impacted due to the comparison asserted by the advertiser to project its product or
services as the better one.

2.9 Overview of Infringement in Comparative Advertising

The regulation of comparative advertising would fall under the jurisdiction of Trade
Mark Act, 1999. According to the Act, the underlined meaning of honest practices of
comparative advertising, seeks to:

● Keep the consumer informed about the product and services

● Supports in promoting market transparency, by,
● Lowering prices and improving the goods,
● Stimulating competition in a fair manner.

54
However, comparative advertising should not be allowed if it is engaged only to protect
the interest of competitors or to stimulate competition. Since, in comparative advertising
a competitor would mislead, create confusion or even discredit.

The possession of goods is not entail the with an unauthorized trade mark for comparison
to be viewed as infringement, according to the Act. Likewise, comparative advertisement
not discrediting or denigrating competitors‘ trade mark or trade name does not amount to
disparagement. Use of registered trade mark in comparative advertising composes
infringement, entitling the plaintiff for interim injunction. However, the plaintiff would
not be entitled to an injunction if, impugned advertisement does not use or suggest the
link between the goods of plaintiff and defendant or uses trade mark of the plaintiff in
the course of business/trade.111

At present, comparative advertising is commonly used in competitive scenario of India

by the following:112

● Salt,
● Beverages- Horlicks v. Boost, Viva,
● Cold Drinks- Pepsi v. Cola,
● Automobile- Hyundai v. Maruti, GM, Honda, Skoda,
● Detergents- Rin v. Wheel and Ariel v. Tide, Surf Excel,
● Shampoo- Clinic Plus v. Head and Shoulders, Pantene,
● Sanitary Napkins-Whisper v. Carefree,
● Air Conditioners- Onida v. LG, Philips, Godrej, BPL,
● Televisions- LG v. Akai, Onida, Samsung, BPL, Others,
● Refrigerators- Whirlpool v. LQ Godrej, BPL, Others, and
● Washing Machines- LG v. Onida, Godrej, Philips, BPL.

Since there are many products reaching the saturation or maturity stage of the product
life cycle, competition has become severe in market pace. Companies are exhausting

111
Pepsi Co., Inc. v. Hindustan Coca Cola Ltd., 2003 (27) PTC 305 (Del-DB).
112
See, the case of TATA v. Captain Cook, in the alleged advertisement of captain cook compared its
free-flowing salt was compared with that of the competitor i.e. Tata Salt. See, http://shodhganga.inflib
net.ac.in/ bitstream/10 603/63262/9/09_chapter%201.pdf.

55
all marketing, promotion and advertising tactics to fight competition and maintain
visibility.

2.9.1 Disparagement and Puffing-up in Comparative Advertising

Initially, comparative advertising was limited to puffery though gradually the notion of
disparagement was included in the fundamentals of comparative advertising. Therefore,
traders exercise puffery or disparagement as comparative advertising techniques, both
being facets of comparative advertising.

Puffery is described as,

―the act or practice of puffing or fulsome public praise or commendation”

in Reckitt Benckiser (India) Pvt Ltd v. Gillete India Ltd.113

Black‘s Law Dictionary states puffery to be,

―the expression of an exaggerated opinion, as opposed to a factual

misrepresentation with the intent to sell a goods or service. It involves
expressing opinions, not asserting something as a fact. Although, there is
some leeway in puffing goods, a seller may not misrepresent them or say
that they have attributed that they do not possess.‖114

Black‘s Law Dictionary states disparaging to be,

―the derogatory comparison of one thing with another, the act or

an instance of castigating or detracting from the reputation of, esp.
unfairly or untruthfully a false and injurious statement that discredits or
detracts from the reputation of another's property, product or
business.‖115

Illustration on puffing- Statement by X is that his goods are better than Y‘s. This
statement is not entitled for action because it simply denotes that the best goods in the

113
CS(OS) 251/2016.
114
Bryan A. Garner (ed.), Black‟s Law Dictionary (WEST, USA, 8th edn).
115
Ibid.

56
world are of X‘s. On the other side, statement is actionable when X states his goods are
better than Y‘s as X‘s are rubbish.116 X puffs its product in the initial statement. In the
second statement X puffs his product by comparing with Y‘s product and defaming or
denigrating Y‘s product. Hence, the second statement is actionable.

―The expression of an exaggerated opinion as opposed to a factual

misrepresentation with the intent to sell a goods or service can be said to be
Puffing. It involves expressing opinions, not asserting something as a fact.
Although, there is some leeway in puffing goods, a seller may not misrepresent
them or say that they have attributed that they do not possess.‖117

Disparagement and puffing up are used while comparing products in advertisement

based on the various attributes of a product. They can be identified as the elements of
comparison used in comparative advertisement. Although, it may be important to note
that presenting one‘s product better than that of others by puffing is not an actionable
claim per say.

Referring to the report of a publication titled ‗The Interaction of Advertising and

Evidence‘118 the Delhi High Court viewed, that advertising affects the mental state of a
viewer to believe the attributes of a product and strengthen their purchasing intention.
This is not dependent on immediate acceptance of advertised propositions but on a
confirmatory diagnosis of product experience. The reference pertains to the law of
disparaging advertisement as it does not deprive the consumer from experiencing the
goods of the competitor.119 Further, it has been viewed that the ordinary meaning of
advertising must be seen from the perspective that is the claim being made seriously by a
reasonable man. Same words may be understood differently by one person than what is
understood by another person and the author may intend to convey some other
meaning.120 Thus, to determine the permitted scope of comparative advertisement, it

116
White v. Mallin,1895 AC 154.
117
Bryan A. Garner (ed.), Black‟s Law Dictionary (WEST, USA, 9th edn).
118
The Interaction of Advertising and Evidence 11 TJCR 763-770 (1984).
119
Procter & Gamble Home Products Private Limited v. Hindustan Unilever Ltd. 2017(69)
PTC528(Del).
120
Vodafone Group Plc v. Orange Personal Communications Services Limited (1997) F.S.R. 34.

57
should not be limited to the literal meaning of words used in comparing products. The
impact and understanding of the words are different for two individuals. Therefore, the
balance between public interest and market competition has to be maintained when it
comes to comparison with the competitor‘s product in advertisements.

2.9.1.1 Attributes Determining Infringement Due to Disparagement in Advertisements121

The elements of disparagement need to be established in the alleged case by the plaintiffs
to succeed in an action for infringement. They are, namely:
● there was misleading or false statement made by a defendant about the facts of the
plaintiff‘s products,
● a substantial segment of consumers can be deceived, and are capable of being
deceived by misleading or false statement,
● the deception is material because the depiction is capable or is likely influencing the
purchase decision of the consumer.

Beside the aforesaid, other principles to decide disparagement in comparative

advertisements122 are intent of the commercial, manner of the commercial, and the
message being conveyed by the storyline in the commercial. Greater emphasis is laid on
the manner of the commercial out of all the stated principles.

2.9.2 Difference Between Passing Off and Disparagement

Comparison in cases of passing off is different from disparagement cases. In the case of
passing off the owner or seller intends to pass off his goods as those of more popular or
famous mark. Familiarity is depicted and the establishing mark exploits the awareness and
goodwill of the famous mark. The comparison here is with rival products having a similar
trade mark, get-up or trade dress to pass goods as that of the famous or established goods.
Unlike passing off, there is derogation, discredit or inferiority in disparagement.

121
Reckitt & Colman India v. M.P. Ramachandran, 1999 PTC 741.
122
See, Annamalayar Agencies v. VVS & Sons, 2008 (38) PTC 37 (Mad). The court after reviewing the
case law laid down 11 principles. The plaintiff in the case is the distributor of Marico a company that
manufacturers ‗Parachute‘ coconut oil. The defendant produces VVD gold coconut oil and disparaged
the product of Marico (Parachute) packed in blue bottles. The defendant projected that the blue bottle
products of coconut oil are inferior to those which are packed in green bottles, the latter representing
his product. The court granted an injunction in respect of two advertisements out of three
advertisements slicked by the plaintiff.

58
Hence, comparison of product that is derogatory to the compared product is
disparagement and passing off goods as that of competitor is passing off.

Consequently, an average person‘s perspective shall be taken into account having imperfect
recollection in relation to product comparison. However, the person shall be selected from
the section of users, which allegedly sought to be slandered or disparaged.123

2.10 Judicial Perspective on Comparative Advertisements in India

The Indian high courts have exemplified and given interpretation to comparative
advertising. This section will project the various views and opinions of different high
courts in India. Even though high court judgments are persuasive in nature they have
established potential insights on comparative advertising. The judicial pronouncement
has elucidated that comparative advertising is allowed unless it is not misleading.

2.10.1 Comparison of All Features to be Honest Advertisement

The issue was alleged in the case of Havells v. AmritanshuKhaitan & Ors.124 In the alleged
advertisement, Eveready (defendant) compared its LED Bulb with competitor‘s i.e. Havells
LED Bulb. This lead to a suit of disparagement filed by Havells LED Bulb along with an
application for interim relief. The advertisement included tag line ‗Switch to the brightest
LEDs‘ and a chart providing price and lumens comparison with other rival brands. Havells
LED Bulb was listed at the last out of the seven names listed in comparison chart. Havells
alleged that the advertisement violated the Trade Marks Act, 1999 s. 29(8)125 and 30(1)126
along with the code127 of the ASCI Code. Since these provisions and rules prescribe

123
Reckitt Benckiser (India) Ltd. v. Hindustan Lever Limited (2008) DLT 650.
124
2015 (62) PTC 64 [Del].
125
The Trade Marks Act, 1999, 29(8) states that any unfair advantage of and is contrary to honest
practices in industrial or commercial matters taken of a registered trade mark is infringed by any
advertising of that trade mark. Additionally, if the advertising is detrimental to its distinctive character
it will amount to infringement. Even the advertising against the reputation of the trade mark will
amount to infringement.
126
The Trade Marks Act, 1999, s.30 (1) nothing in s. 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 is in accordance with honest practices in industrial or commercial matters, and is not such
as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
127
See, chapter IV ASCI: Role And Contributions in Administering Advertisements for details on
fairness of competition.

59
practices in industrial or commercial matters which are honest to be followed by commercial
advertisements. Thus, Havells submitted that comparison limited only of two features
enables consumer to be misled. Even if Eveready LEDs were brighter they were lesser on
factors like power and over all life. However, Eveready argued that comparison made on two
parameters does not make advertisement misleading or dishonest. There were certain
explanations cited by Eveready in this regard. Eveready said that all information suggested
by Havells LEDs were not present on its packaging. Havells LEDs packaging mentions only
about brightness of their LED bulbs. Eveready further stated that brightness is the most
significant aspect for bulbs since the brightness dispels darkness. It also mentioned that the
law does not necessitate comparison based on all features of a product. Comparison and
emphasizing on benefits of the product than that of rival is legitimate. Lastly, by relying on
Philips India Pvt. Ltd. v. Shree Sant Kripa Appliances Pvt. Ltd.128Eveready submitted that
without case for special damages an action for disparagement was not sustainable.

(Source: https://spicyip.com/2015/03/comparative-advertising-%E2%80%95-havells-v-eveready-whos-
the-brightest-of-them-all.html)

The court viewed that there is no rule limiting comparison based on all features of a
product in comparative advertisements. The test of honest advertising as per the Trade

128
CS (OS) No.1913/2014.

60
Marks Act, 1999 section 29(8) and 30(1) depends on an objective test of reasonable
audience. Further, it held that for advertisements to mislead consumers, it requires
determination and satisfaction of two elements, they are:

―The misleading advertisement must be or potentially deceive persons to

whom it is targeted,” and

“The consequence of misleading advertising due to deception must harm

a competitor of the advertiser or likely to affect the public‟s economic
behaviour.”

Lastly, the court held that due to difference from manufacturer to manufacturer and
consumer to consumer, there is not much possibility to define an exhaustive list of
parameters for comparative advertising.

2.10.2 Refrain from Advertising Competitor’s Product

In the case of Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd.129 the goods of Reckitt
& Colman was held to be disparaged by KIWI (defendant). KIWI (defendant) was
refrained from advertising competitor‘s product in a disparaging manner.130 In the
alleged advertisements, KIWI claimed its liquid polish superior to Cherry Blossom
premium liquid polish. It stated that Cherry Blossom contained more acrylic content
than wax, which caused cracks and eventually damaged the footwear. KIWI on its
website represented two bottles of shoe polish. One which drips marked as brand X, and
a bottle of KIWI that does not drip. The red blob shown on brand X was similar to
Reckitt‘s product, Cherry. KIWI circulated posters representing faulty applicator of
brand X, the applicator being similar to Cherry Blossom. The court, opined that
advertiser‘s statements claiming superior quality or puff goods shall not amount to
disparagement.131 But in the process of promoting the manufacturers own goods,

129
63 (1996) DLT 29.
130
Priya Bansal, ―Use of Trademark in Comparative Advertising: Situation in India‖ Intellectual
Property Law (2006).
131
See, Lien Verbauwhede, ‗Intellectual Property and Advertising‘, WIPO, available at: http://www.wip
o.int/sme/en/activities/meetings/indianift05/advertising_lien.ppt#332,5, Internet and digital technologi
-es.

61
statements made regarding similar goods of competitors, portraying the latter in a bad
light will be considered as disparagement.132

2.10.3 Puffery as a Facet of Comparative Advertising

In a different case of Reckitt & Colman of India (L) for the first time dealt with the role
of puffery as an aspect of comparative advertising. In the concerned matter of Reckitt &
Colman of India Ltd. v. M.P Ramchandran133 related to manufacturers of cloth whitener
brands Robin Blue and Ujala, respectively. Reckitt & Colman of India Ltd, selling its
blue whitener product for clothes by the brand-Robin Blue which was disparaged by
Ujala. A registered trade mark and design of Robin Blue, has its unique style promoted
by Reckitt & Colman of India Ltd. It was contended that Ujala disparaged Robin Blue in
the advertisement. Ujala‘s alleged depiction of the competitor‘s (Robin Blue) whitener
claimed it to be expensive and an uneconomical product. Further, the advertisement
stated that the plaintiff‘s (Robin Blue) product was of obsolete technology and
ineffectively dissolved in water, eventually leaving patches on clothes and damaging
them. However, they were relying on the argument that the advertisement did not bear
resemblance to Robin Blue. Additionally, the objective behind such depiction by Ujala
was merely to assert the technological superiority over other competing products. The
court relying on common law denied disparagement of Robin Blue in the advertisement.

By relying on various arguments and international cases cited in Reckitt & Colman of
India Ltd. v. M.P Ramchandran,134the Calcutta High Court gave principles appearing to
be law on the subject. The five principles are as follows:135

a) Even if a declaration which is not true, is allowed if ones‘ goods are declared to be
the best in the world,
b) A tradesman perhaps states his/her goods are better than those of his/her rival party
competing, even if the statement is not true,

132
Reckitt Colman 1, 1996 P.T.C. 193 T 399.
133
1999 PTC (19) 741.
134
Ibid.
135
Ibid.

62
c) As a replacement for claiming goods to be better than those of the rival or claiming
to be best in the world, the advantages of the goods over that of the competitor‘s
goods can be stated by a tradesman.
d) In the process of stating one‘s goods to be better than the competitors, the tradesman
is not permitted to mention goods of the competitors are bad. The latter will slander
and defame the competitors and their goods.
e) for recovery of damages cause of action lies or even for an order of injunction only in
case of defamation which court may grant to restrain repetition of defamation.
Although no action lies when defamation of goods or manufacturer is missing.

2.10.4 Three Aspects to Determine Disparagement

A different view to the aforementioned case was held by the Delhi High Court in Pepsi
Co. Inc. v. Hindustan Coca Cola Ltd.136 The principles used in cases of copyrights and
trade mark related issues were applied by the court of law. Disparagement of both the
trade mark and copyright was alleged in two alleged advertisements of Coca Cola.
Derogatory remarks were used referring to Pepsi‘s products in both the alleged
advertisements. One of the alleged advertisement depicted a substitute represented Pepsi
as ―bachhon wali drink” and mocked by saying Pepsi‘s advertising slogan as ―Yeh Dil
Mange No More”.137 The ad undoubtedly shows that if kids want to grow up they should
prefer Thums Up over Pepsi.

To determine question of disparagement the court laid emphasis certain factors besides
using the principles mentioned in both the alleged aforementioned cases, namely:138

136
2001 (21) P.T.C. 699.
137
In the commercial the lead actor asks a child which is his favourite drink, he mutters the word ‗Pepsi‘,
though the same is muted but can be make out from his lip movement. The boy in the ad is asked to
taste two drinks in two different bottles covered with lids and lead actor asks ―Bacchon Ko Konsi
pasand aayegi?”. After this, one of the drinks tasted and pointed by the boy. Followed by, the actor
saying that the drink being sweet would be liked by the children. The actor in his words says ―Who
meethi hain, Bacchon ko meethi cheese pasand hai‖. The actor prefers the other drink which
according to him has stronger taste and will be liked by grown up people. The stronger one came out
to be ‗Thums Up‘, and one which is sweet, had the word ‗Pappi‘ written on the bottle with a globe
device and the colour that of Pepsi. The boy feels embarrassed about the fact that he chose children‘s
sweet drink ‗Pepsi‘.
138
See, Pepsi Co. Inc. v. Hindustan Coca Cola Ltd., 2001 (21) P.T.C. 722.

63
− Intent of the commercial,
− Manner of the commercial,
− Storyline of the commercial and the message sought to be conveyed by the
commercial.

These factors should be read conjunctively with determining the manner of the
commercial which must not be to disparage or condemn the product. Although, it
reflected ratio of Reckitt & Colman case. The court held that there was no disparagement
in alleged advertisement and Pepsi‘s advertising slogan was copyrightable. Moreover,
the court stated that just by using Pepsi logo trade mark and parody of the slogan doesn‘t
ipso facto give rise to infringement.

The three aspects139 to determine the nature of a commercial were reviewed by the court
to grant injunction in the Good Day case. Great Day a biscuit brand was launched in
India with a tagline ―Why have a Good Day, When you can have a Great Day!‖ Great
day biscuit‘s tagline was directly compared to Britannia‘s Good Day biscuits. The
message clearly conveyed to a viewer that why should they have a Good Day when
Great Day biscuits are available. Injunction was granted on the ground that Good Day
biscuits were disparaged because of exaggeration which gave an impression that other
facts hold untrue.140 By referring to Eureka Forbes Ltd. v. Pentrai and Reckit Coleman of
India v. M. Ramachandran, Unibic filed an appeal. The court viewed that in deciding
permissible limits of comparative advertisement, or to restrict comparative
advertisement, will consider if it disparages or denigrates competitors‘ trade mark or the
products. Hence, the right to advertise under the realm of freedom of expression doesn‘t
permit to cause damage or irreparable injury to products of competitors. However, in the
alleged advertisement of Great Day, it is evident that the intent of the ad is to cause
damage and loss to Britannia. It resulted in removing words ‗Forget the good‘ and ‗Pack‘
from the television ads frame and the word ‗Good Day‘ from the impugned newspaper

139
Three principles to determine the nature of ads- its intent, the manner of commercial (storyline) and
the message that has been communicated to the public. See, Pepsi Co. Inc. v. Hindustan Coca Cola
Ltd., 2001 (21) P.T.C. 722.
140
Britannia v. Unibic Biscuits India (2007). See, Managing Intellectual Property, ―India: How to gain
from comparative advertising‖, available at: http://www.managingip.com/Article.aspx?ArticleID=132
1496 (last visited on August 8, 2018).

64
ad. Further, Unibic was refrained from telecast or print ads that would disparage the
product of Britannia Biscuit in any form.141

(Source: https://www.afaqs.com/news/advertising/19967_unibic-cookies-press-ad-in-trouble-following-co
urt-order)

2.10.5 Custody of Devices Used for Disputed Advertisement

The three principles relating to disparagement mentioned in Pepsi Co. Inc. v. Hindustan
Coca Cola Ltd, were reiterated in Reckitt Benckiser Health Care (India) Pvt. v. Emami
Ltd. & Ors.142 The latter case of Emami, related to determining disparagement, which the
courts order to take custody of the device used for disputed advertisements. The courts
not only penalize the predator for alleged advertisement but may also seize the alleged
advertisement or device used for disputed advertisement. The telecast of MOOV‘s
television commercial was suspended. Further, a receiver was appointed by the court to
take custody of devices used for disputed advertisements.143

Around November 2014, a TV commercial of MOOV was launched and aired on Colors
by Reckitt Benckiser Health Care (India) Pvt. The storyboard of the commercial
concluded with the husband asking his wife to choose between balms, one of them being

141
Unibic Biscuits India Pvt. Ltd. v. Britannia Industries Ltd. MANU/KA/0240/2008.
142
(2015) 4 CHN 19.
143
Reckitt Benckiser Health Care (India) Pvt. v. Emami Ltd. (2015) 4 CHN 19.

65
MOOV to apply on her back pain. The lady points at MOOV, followed by the husband
applying MOOV on her back and ―2x‖ appear on the screen. It accompanied with
voiceover saying ―Jismein hai pramukh balm ke mukable do guna Zyada active
ingredients.‖ The lady is relieved of the pain, the family goes on a drive and the jingle of
MOOV is played. According to Emami, the bottle of balm shown with MOOV could be
easily perceived to be Zandu Balm. The shape and configuration of the other bottle
depicted with MOOV directly denote Zandu Balm. This deprecates the reputation and
goodwill of Emami‘s rubefacient product i.e. Zandu Balm. The contentions raised inter
alia by Emami were that the alleged advertisement was derogatory, caused loss, damage
and injury to its brand Zandu Balm, because MOOV‘s TV commercial mentioned the
following in the advertisement:

● The commercial represents Emami‘s rubefacient product trademarked as Zandu Balm

(EMAMI) in bad light and to be less effective than MOOV in providing pain relief,
● MOOV contains double the amount of active ingredients than Zandu Balm, hence
twice as effective as Zandu Balm,
● Zandu Balm is unable to relieve a person from pain, withal MOOV doing it easily
and effectively,
● Zandu Balm is not the correct choice for backache, it is of inferior quality than
MOOV,
● The green and white colour bottle, shown in the ad, compared with MOOV,
identifies to be Zandu Balm. Such portrayal defames, disparages and amounts to
slander of Emami‘s product.

An infringement suit was filed for disparagement by Reckitt Benckiser Health Care,
seeking perpetual injunction to restrain display of the impugned ad with the custody of
devices comprising the impugned ad. Concern about the ad damaging the trade mark of
Zandu Balm, which has acquired potential market, customer goodwill, and repute was
raised. Emami started manufacturing its pain relief back in 1935. It was marketed in
India and abroad after extensive research and development. The green and white scheme
of distinctive packaging is facile to identify its trade mark product, Zandu Balm, which is
sold in the market. The colour combination of the bottle and packaging is registered by
the provisions of the Trade Marks Act, 1999. Additionally, the configuration, bottle

66
shape and packaging is registered under the Designs Act, 2000. The original artistic work
of the brand Zandu Balm is registered under the Copyright Act, 1957. Any imitation or
adaptation of its trade mark or copyright is prohibited. Zandu Balm has a promising
market presence and a well-known trade mark. Therefore, the comparison in the
advertisement was held to be unhealthy, unfair and untruthful, amounting to the
infringement of Zandu Balm.144 Stay was denied on the injunction of impugned
advertisement of Emami. Thus, comparative advertising can be used by advertisers but it
must not damage, defame or misuse the trade mark or other intellectual property of the
competitor. Apart from the ad, the devices carrying the impugned ad can be seized by the
court as a preventive and remedial action.

2.10.6 Examine Intent of Commercial to Determine Disparagement

In the Dabur v. Wipro case145 the intent of the commercial was examined i.e. what the
commercial suggests has to be examined. Dabur alleged that in a particular
advertisement, an unlabeled honey bottle bearing semblance with a bottle of Dabur
Honey was represented by Wipro. The voiceover says that Wipro‘s Sanjivani Honey was
consumed quickly, although, the unnamed Honey bottle remained untouched, even
though it was purchased two years back. Wipro stated its product to be far superior to
that of Dabur in the commercial with the help of underneath:

− The two brands of honey are merely compared rather than denigrating or disparaging
the plaintiff‘s product. The defendant stated that its honey was superior than
plaintiff‘s honey. There is a distinction between proclaiming the defendant‘s product
to be better than the plaintiff‘s and saying that the plaintiff‘s product is inferior than
that of the defendant‘s.
− The intent of the commercial was to compare the product of the plaintiff by saying
that the defendant‘s product is far better.
− The underlying message may be to showcase the plaintiff‘s product as inferior to that
of the defendant‘s. Although to show inferiority, the advertised product must be
shown to be better in comparison of the two products.

144
Supra note 143.
145
2006 (32) PTC 677 (Del).

67
− It is considered legitimate for an advertiser to state its products to be the best, which
tacitly implies that all other similar products are inferior.

The main issue before the court was to determine Wipro's commercial advertisement to
be disparagement or not. Dabur India Ltd obtained interim ex parte injunction for
restraining airing of Wipro Ltd‘s television commercial. After which Wipro applied to
the court to vacate the ex parte injunction. Relying on the dictum of precedent cases,
Reckitt and Coleman of India v. MP Ramachandran (1999 PTC (19) 741), Reckitt and
Coleman of India v. Kiwi TTK Ltd (1996 PTC (16) 393), Pepsi Co Inc v. Hindusthan
Coca Cola Ltd (2003 (27) PTC 305 (Del) DB) the court held that Wipro did not
denigrate or disparage Dabur's product.

146
Further, in Colgate Palmolive Company and Ors. v. Hindustan Unilever Ltd. it was
observed that the law concerned to disparagement in advertisements is settled now.

2.10.7 Generic Disparagement

Comparative advertising‘s new class was observed in Dabur India Ltd v. Emami Ltd.147
Unlike common disparagement that uses a particular product, generic disparagement
involves comparison of complete class of products. In the alleged commercial, actor
Sunny Deol holds a bottle of Himani Amritprash148 and says ―Garmion Mein
Chyawanprash Bhool Jao, Himani Sona-Chandi Amritprash Khao”. The underlying
message conveyed in the commercial is that the consumption of Chayawanprash is not
advisable for summer months but Amritprash is an effective substitute of
Chayawanprash at that time. Dabur accounts for about 63% market share of the total
Chayawanprash market in the Indian. Moreover, it has legitimate interest in
Chayawanprash sale throughout all seasons in India. However, Emami has nearly 12% of
the total market share in Chayawanprash category pan India. There is no direct
competitor of Emami‘s new product Amritprash in the market. The generic
disparagement advanced by defendant was disparaging Chayawanprash and would
adversely impact the product of Dabur. Recognizing the concept of generic

146
2014(57) PTC 47(Del).
147
2004 (29) PTC 1 Del.
148
Ayurvedic Chyawanprash.

68
disparagement, in this case the court granted injunction. Therefore, disparagement is not
limited to a particular product but can involve an array of product or the generic class of
products.

Furthermore, the division bench of the Bombay High Court viewed that Amul by
comparing its ice-cream with frozen dessert on incorrect facts, disparaged the entire class
of frozen dessert. In the alleged advertisement, Amul states its ice cream to contain
100% milk as compared to frozen dessert, which according to them consists of vanaspati.
Amul does not directly refer to Kwality‘s trade mark in the television commercial. But it
is contended that because Kwality manufactures majority of frozen desserts, therefore
the alleged advertisement had disparaging effect on Kwality in the case of Amul v.
Kwality.

(Source: https://iprmentlaw.com/2019/01/01/the-bitter-sweet-amul-vs-hul-tussle-comes-to-an-end-as-amul
-gets-partia l-relief-by-the-bombay-high-court/)

Disparagement in Toothpaste Advertisement

Hindustan Liver Ltd (HUL) in its toothpaste advertisement stated Pepsodent Germi Check
had ‗130% attack power‘ and depicted that the use of Colgate could cause cavities. Colgate
Palmolive (India) Ltd. acted against Pepsodent Germi Check alleging disparagement to its
toothpaste in advertisement. Toothpaste advertisement of Pepsodent given below is a good
example of comparative advertisement. Here, both the leading competitor toothpaste brands
are being compared and Pepsodent states that its toothpaste provides non-stop protection
from germ attacks and claims to be better than Colgate toothpaste. In this ad, toothpastes of
both the leading brands are compared and one is claimed to be superior and effective than
the other. Such advertising is comparative advertising.

69
(Source: https://viragbrand.blogspot.com/2013/08/brand-war-pepsodent-vs-colgate.html)

The new Pepsodent toothpaste product of Hindustan Liver Ltd. disparaged Colgate
toothpaste. Hindustan Liver Ltd. stated that the New Pepsodent is 102% better in terms
of anti-bacterial activity in comparison to other leading toothpaste available in the
market. In the commercial, saliva samples are collected from two boys, one uses New
Pepsodent toothpaste and the other used leading toothpaste brand. Highest amount of
germs were shown in the saliva of the boy using leading toothpaste. The boys are then
asked about the toothpaste they use in the morning; one replies with Pepsodent while the
others‘ response is muted. The boy‘s lip movement and the jingle used in the mute mode
made it evident that the boy was referring to Colgate. Colgate is used as a synonym for
toothpaste in the market. Making it obvious that the leading brand referred to is Colgate.
Therefore, this ultimately led to the disparagement of Colgate.

Another case regarding toothpaste and Colgate is known as Suraksha Chakra. 149 The
catchy tune of Colgate toothpaste reminds every person about how it protects against
tooth decay, kills germs and stops bad breath. All these claims were also advertised on
Colgate hoardings, TV campaigns and print media. In the advertisement, Suraksha
Chakra is used as a metaphor which signifies a protection ring that protects the entire
family. This commercial boosted the sales of Colgate and decreased that of HLL. HLL
alleged that the facts were misrepresented, and hence the data was misleading. Colgate

149
Colgate Palmolive v. HLL, AIR 1999 SC 3105.

70
also alleged that New Pepsodent claims to be ―102 percent superior” which is again
misleading. Further, HLL added, that only in India, Colgate claims to fight tooth decay
in the absence of fluoride where as in other countries this holds true for fluoridated
products. Even the former Act of Monopolistic & Restrictive Trade Practices, 1969
(MRTP) was referred to that allowed puffing unless data was misrepresented.

After finding it was clear that not a single consumer was reported to have been misled by
the advert of Suraksha Chakra. Hence, an injunction was not granted to Colgate. Due to
the meaning of Suraksha Chakra, this refers to providing Suraksha to the tooth; saving it
from decay, bad breath and germ killing by using a chakra. 150 Moreover, disparagement
of product can be determined by the nature of the product.

2.10.8 Nature of Advertisement to be Considered to Determine Disparagement

In Eureka Forbes Ltd. v. Pentair Water India Pvt. Ltd.151 consideration was laid on the
nature of the alleged advertisement for determining, if it amounts to disparagement of
Eureka Forbes. The Karnataka High Court restrained the respondent, its Directors,
Executives, Distributors, Marketers, Franchisers, Dealers, Agents, Stockists,
Representatives, Advertisers, Officers, Successors-in-business, assigns or anyone
claiming through or under them are, placing advertisement, or in any manner, from
circulating or distributing any material that defames or maligns Eureka Forbes product
'Aquaguard' or 'UV Purifiers'. Eureka Forbes sells its U.V. water purifiers under the
brand name Auaguard. It is the Indian leader in U.V. water purifiers and accounts for
more than 70% of the market share in the U.V. purifier segment. Registration of
‗Aquaguard‘ trade mark was granted to Eureka Forbes for water purifier goods. The
advertisement issued by Pentair was not only claimed to be false, but also disparaging to
the product of Eureka Forbes. The advertisement said, ―water contains contaminants that
are invisible to the naked eye and to your UV water purifier and Pentair's Home RO
system with PXP removes contaminants as small as 0.0001 micron....‖ According to
Eureka Forbes, its UV technology was disparaged by Pentair in the advertisement. In the

150
Supreme Court gives Colgate its 'suraksha chakra' back, available at: https://www.indiatoday.in/maga
zine/economy/story/19991004-supreme-court-gives-colgate-its-suraksha-chakra-back-824857-1999-1
0-04 (last visited on August 6, 2018).
151
2007 (4) KarLJ 122.

71
advertisement, Pentair denied disclosing the identity of Aquaguard or disparagement
them in any manner. The trial court stated that Eureka‘s brand name Aquaguard was not
forthcoming in the advertisement and no material ratified that Aquaguard Water Purifier
is synonymous with UV water purifier. Further, the trial court observed that the appellant
had admitted that the RO technology is superior than the UV technology. However, the
Karnataka High Court admitted to Eureka‘s submission that the alleged advertisement
that disparaged UV technology could cause great damage to the marketability of the
appellant's product Aquaguard, which uses UV technology.

Therefore, it is not mandatory that to disparage a product a resembling product is used.

Disparagement can be alleged on any attribute of the product. The holistic determination
of advertisement in question must be taken for assessing negative impact on disparaged
products‘ marketability, business or brand value.

In another advertisement row of tooth product, between, Dabur India and Colgate
Palmolive India,152 tooth-powder was disparaged in advertisements. Colgate advertised
that its tooth powder was non-damaging and was 16 times less abrasive. In its previous
advertisement, Colgate showed ill effects of Dabur‘s product and promoted viewers to
discontinue its purchase. Though rivals are not refrained from making untrue statements
by expressing their goods to be the best, but they are not allowed to degrade the quality
of others‘ products. This clears the fact that competitors should not take any unfair
advantage or harm the reputation or be detrimental to the distinctive character of the
rival‘s trade mark153 in the aforementioned case, it was the reputation of tooth powder.
The court held that Colgate disparaged Dabur‘s goods and granted injunction to the
aggrieved party.

2.10.9 Indirect Disparagement Due to Innuendo

The Jet Airways and Kingfisher case relating to flights started to New York on a daily
basis was in contrast to Unibic‘s Great Day injunction. Kingfisher airlines came up with
a similar advertising campaign without being subject to any injunction. As part of an
initial campaign, Jet had put up a hoarding displaying the tagline ‗We‘ve Changed‘.
152
Dabur India Limited v. Colgate Palmolive India Ltd. 2004 (29) PTC 401 Del.
153
See, Trade Mark Act 1994, s. 29 (8).

72
Kingfisher airlines competed by putting up a hoarding just above Jet Airways hoarding
saying ‗We Made Them Change‘. There was no direct disparagement of Jet nor was Jet‘s
trade mark used in Kingfisher‘s hoarding. Still Jet could file for injunction as it was
directly exaggerating facts. But the issue was resolved as Jet removed its hoarding,
which was a good move by Jet.

(Source: https://shawnplace.com/the-high-competition-challenge-of-airlines-advertisement-in-india/)

An advertiser claiming its product to be the latest does not disparage unless the
competitor‘s goods are stated to be obsolete. In Karamchand Appliances v. Sri Adhukari
Brothers,154 advertisement campaigns related to the promotion of sale of mosquito
repellents manufactured by both the parties was in question. AllOut is a product of
Karamchand Appliances. It alleged that the advertisement by Good Knight Turbo Refill
denigrated, disparaged and showed AllOut in bad light. In the alleged advertisement of
Good Knight, AllOut was shown in an incriminating undertone by comparing them on
the grounds of technology. AllOut‘s pluggy device was represented as a 15 years old
obsolete method to chase away mosquitoes. Good Knight‘s machine is shown to be the
latest, capable of chasing away mosquitoes at twice the speed. The edited version of the
commercial was allowed to be aired after removing the disparaged part.

Good Knight was unable to show the pluggy device being 15 years old or
technologically more advanced than AllOut. The statement made was to highlight that
the device was 15 years old could not be validated by the content of the fluid or by the

154
2005 (31) PTC 1 (Del).

73
design. Telecast of the modified commercials were restrained by the court because it
disparaged AllOut. Unjustifiable claims of technological advantage were made.
Additionally, the court can restrain advertisement even in cases of generic disparagement
also at the behest of plaintiff.

2.10.10 Case That Upheld & Established Discernment of Infringement by

Disparagement

The obscure law of disparagement was acknowledged by the court, particularly in Dabur
India Limited v. Colgate Palmolive India Ltd.155 Disparagement was alleged by Dabur
on the predicate of Trade Marks Act 1999, s. 29(8)156. Around 80% of Ayurvedic tooth
powder is supplied by Dabur India, excluding the white tooth powder market. Colgate
depicted red tooth powder to be detrimental for tooth enamel and injurious to dental
health. Although the advertisement did not refer to any particular ―Lal Dant Manjan‖
brand. Nonetheless, being a generic form of disparagement, ―Lal Dant Manjan‖
manufacturer alleged the advertisement. Promotion of a product is not permissible at the
behest of a class of products by labelling them as inferior, damaged or slanders them as
bad. Comparison that disparages a class of product, unlike against a particular product is
objectionable.

Hence injunction was granted by the court and telecast of the alleged commercial was
restrained.

2.10.11 Admissibility of Comparison in Comparative Advertising to Vitiate

Disparaging Claims in Advertisement

The moulding and demoulding of regulating comparative advertising accredits to courts

or judicial pronouncements, although the trade mark act 1999 does not per se prohibit
it.157 It is objectionable if an advertisement includes comparison that derogates
competitor‘s product. In the interest of competition, a trade mark proprietor may show

155
2004 (29) PTC 401 (Del).
156
Infringement of registered trademarks happens when unfair advantage of and is contrary to honest
practices in industrial or commercial matters is taken by advertising. The advertising is detrimental to
its distinctive character. Further, the advertising is against the reputation of the trade mark.
157
Comparative advertisements are admissible: Reckitt & Colman India v. M.P. Ramachandran, 1999
PTC 741.

74
competitive advantage, by stating its product to be the best or better than others.
Nevertheless, comparative advantage is abused in advertisements by claiming own
product to be the best as other rival products are poor. Hence, consumers may choose the
product on grounds of reasonability, information and observation. Moreover, if
plaintiff‘s goods are not depreciated there won‘t be disparagement.158

An action of disparagement succeeds if the two aspects mentioned below are satisfied:

● If nothing in the advertisement is misleading or untrue, and

● Public is not influenced to buy products as a result of comparison displaying the
plaintiff product to be of inferior quality.

The aforesaid view was rendered in the case of Godrej Sara Lee by A.K. Sikri J. since,
comparative advertising was considered a new phenomenon back in 2006.159 The USA
and UK courts are accredited with numerous judgements. The courts considered an
individual‘s average perception in comparative advertising cases, as it indicates
reasonability of being well informed and observant. There exists a presumption that the
consumers are benefited by comparative advertising as consumers come to know about
the features, merits and demerits of two products. Moreover, comparative advertising has
vehement relations to market competition. Therefore, it is benefits both the consumer
and the advertiser in the competitive market.

2.10.12 Ridiculing Necessary in Comparative Advertising

If the manner of an advertisement only represents one‘s product to be best or better and
does not refer to other‘s products as derogatory, it is not actionable. However, if the
manner is condemning and ridiculing a rival‘s product, then it amounts to disparagement.
Certain legal principles that may assist in determining whether to allow or restrain the
cause of action relating to derogation of rival product in advertisement are:

158
Godrej Sara Lee (L) v. Reckitt Benckiser(I) (L), 2006 (32) PTC 307 (Del). The plaintiff was a market
leader in insecticides and pesticides under the trade mark of ‗HIT‘ which came in two versions — red
and black respectively for killing cockroaches and mosquitoes. Disparagement was alleged by an
advertisement by ‗Mortein‘ by showing their ‗HIT‘ in bad light which showed a lady facing a
predicament as to which version to choose when attacked by a swarm of mosquitoes and an army of
roaches at the same time. The solution was depicted in the form of a ‗Mortein can‘ meant for killing
both.
159
Ibid.

75
(i) Even though the disparaged product is not identified by name, the manufacturer can
complain and seek an injunction to disparagement.160
(ii) Generic disparagement is equally objectionable, even if rival product is not
specifically identified or pinpointed.

The courts uniquely bypassed allegations of generic disparagement in case of HARPIC

and DOMEX. DOMEX represented blue toilet cleaners in a bad light and claimed
HARPIC to be a thin toilet cleaner. The courts opined that HARPIC not being a thin
cleaner, was not disparaged. Moreover, by observing the advertisement, the court
examined it in three ways:

a. ―visually (video without audio),

b. audio without video, and
c. audio visually.”

Thin toilet cleaners shown in bad light were demonstrated to be blue toilet bowl cleaners.
But HARPIC is blue in colour and not of thin consistency. Further analyzed by a Venn
diagram, it was represented that HARPIC did not fall in the same category as thin blue
cleaners. Hence, it did not amount to slander or disparagement and thus injunction was
not granted. However, consumers would not be able to judge whether HARPIC cleaner is
thick blue or thin blue. On finding disparagement, injunction could be issued in the
interest of purity of business environment.161

160
Reckitt Benckiser-India (L) v. Hindustan Lever Ltd., 2008 (38) PTC 139. In this case, the plaintiff a
manufacturer of Dettol toilet soap alleged that the defendant introduced an advertisement on
television, which intentionally disparaged his soap sold under the trade mark DETTOL. The defendant
advertised its soap product LIFEBUOY in the alleged advertisement. The plaintiff alleged that
goodwill and reputation of its product DETTOL original soap was tarnished, without naming it. The
soap in impugned advertisement was virtually identical, having contours and the curvature in the
middle on the toilet soap. The soap in the advertisement was virtually identical to the contours of the
plaintiff‘s DETTOL original soap. The name of the plaintiff‘s product and the logo was not shown in
the advertisement. Similarly, in Paras Pharmaceuticals v. Ranbaxy Laboratories, 2008 (38) PTC 658
(Guj), the respondent the manufacturers of ‗Volini‘ started denigrating an unnamed product having
trade dress of market leader MOOV, manufactured by appellants. The denigrating words used were
‗take this you need a true pain reliever‘ when the person had allegedly MOOV in her hand. Till the
time the colour was changed the court restrained the impugned advertisement.
161
As a contrast of Generic Disparagement case, in Reckitt Benckiser (India) Limited v. Hindustan
Unilever Limited, 2008 (38) PTC 170 (Del), the plaintiff sought to restrain the advertisement HUL‘s
toilet cleaner DOMEX. As the impugned advertisement, while promoting ‗DOMEX‘, disparaged and
rubbished liquid cleaners which are blue in colour.

76
(iii)Comparative advertising may possess insinuation which directly disparages
plaintiff‘s product.162Amritprakash case exemplifies this point. The public was urged
to consume Amritprakash in summers instead of Chyawanprash which is not good
for health in summers.

The Delhi High Court has categorized comparative advertising as a segment of

advertisements in which comparison is done of own product with that of competitors. It
is done by usually calling own product better or superior. These days manufacturers or
advertisers need to substantiate why their product should be selected from the vast
variety available. A marketer or a manufacturer uses different forms of media to reach
out to the consumer which includes television commercials. If advertising activities are
curbed, then not only the fundamental right to commercial speech will be affected, but
competition will also be restricted. According to the Cable Television Networks
(regulation) Act, 1995 s.22 which authorizes the Central Government to draw up Rule 7
of the Advertising Code, there is no restraint imposed on comparative advertising.
Moreover, the Advertising Code of India (ASCI) permits comparative advertising in the
interests of vigorous competition and to enlighten the public. From a consumers‘
perspective, s/he is served better with additional details relating to the best or better
features of a product. However, fetters imposed on comparative advertising are subjected
to comparisons that are likely to mislead consumers or discredit, attack, is unfair or
denigrate other products, directly or by way of implication. There is no blanket cover
allowing comparative advertising, so the law of defamation can be subjected to
assessment of the aforesaid.163

(iv) It has been held that the competitor goods cannot be called bad or inferior. Nor can
they be slandered or defamed by tradesman. Although, comparative advertising

162
In Dabur India Limited v. Emami Limited, 2004 (29) PTC 1 (Del), plaintiff had 63% market share and
the defendant was seeking to displace the market repute of CHYAWANPRASH. AMRITPRASH was
promoted by the defendant. The plaintiff alleged, insinuating and negative advertisement campaign
through T.V. New product featuring a popular film star were seen in defendant‘s advertising it made
the impugned declaration ―Garmion Mein Chyawanprash Bhool Jao, Himani Sona Chandi Amritprash
Khao‖ (Forget Chyawanprash in summers, eat Amritprash instead). The message sought to be
conveyed was that Consumption of Chyawanprash during summer was not advisable and that
Amritprash was more effective.
163
Procter & Gamble Home Products Private Limited v. Hindustan Unilever Ltd. 2017(69)
PTC528(Del).

77
 involves an implied show down to an extent but it shall not be rubbish in nature.
Comparison by tradesmen of their products with competitors is to contrast, not
amounting to disgraces, derogates or discredits. A similar view was stated in Dabur
India Ltd v. Colortek Meghlaya Ltd.164 by the division bench of the Delhi High
Court.

(v) One cannot deny that the public expects a certain amount of exaggeration to exist in
ads.

(vi) Comparison based on claims like, drinking product ‗X‘ makes boy taller, stronger
and sharper rather than other competitors‘ drinks has not been held disparagement.
Use of the word cheap for competitor‘s product has been held to be disparaging. An
advertisement where a Boy drinking Horlicks165 is compared with another one
drinking Complan166 by stating that one of them is stronger, taller and sharper has
been considered puffing.167

(Source: https://www.firstlaw.in/2018/12/trade-marks-act-failure-to-point-out.html)

(vii) The Delhi High Court defines disparaging to be statements by manufacturers that
his goods are better than the goods of the competitors or the manufacturer puffing
164
2010 (42) PTC 88 (Del.). The court had referred to Royal Baking Powder Company v. Wright
Crosssley & Co. (1901) 18 R.P.C 95 in which three main ingredients were enumerated in a malicious
prosecution- the statement is made maliciously, the impugned statement in untrue, without just cause
or excuse and the plaintiffs have suffered special damage.
165
Horlicks is nutritional food powder helping in balance children nutrition.
166
Complan is powdered dietary supplement drink having extra nourishment.
167
McDonalds Hamburgers Ltd. v. Burgerking (UK) Ltd. [1987] F.S.R. 112 and Glaxosmithkline
Consumer Healthcare Ltd. v. Heinz India MIPR 2010 (3) 314.

78
 its own goods. But such statements and puffery will not give cause of action to the
competitor because disparagement or defamation of the goods is absent.

(viii) Goods can be puffed up and promoted by a manufacturer provided they say that the
competitors‘ goods are bad or inferior. Therefore, if the trade mark or trade name
of competitors is discredited or derogated, comparative advertisement is not
allowed.

The division bench of the Delhi High Court observed that the Indian law pertaining to
disparagement advertisement is settled in the case of Procter & Gamble Home Products
Private Limited v. Hindustan Unilever Ltd.168 Advertisers can indulge in puffery and use
exaggerated claims unless it disparages or denigrates goods of other competitors. But
puffery is limited by the condition that the goods can‘t be shown in a bad light in
comparative advertising. Likewise, certain degree of disparagement is permitted in
comparative advertising. Certain rules were observed by the court which, related to
examination of statements or words used. Words like inferior, bad or undesirable that
amounted to denigration or defamation of goods. The rule to consider while examining
the statements or words, are,

● To understand the statements and or words in accordance to the general and natural
meaning this is common to agreeable understanding of people.
● This understanding should concur with determining the intent of the person who is
hit by malicious and falsehood claims.169

After applying the above observation and rules, the court concluded that Pepsodent‘s
claim that ―Pepsodent was 130% more effective in fighting cavities than Colgate‖ would
not per se be disparagement of Colgate toothpaste.170 The claim in the alleged
advertisement represented that Pepsodent toothpaste is better than Colgate in combating

168
2017(69) PTC 528(Del).
169
These rules are also known as the multiple meaning rule.
170
Colgate contended that the impugned advertisements is based on denigration of its product and
malicious falsehood in common law and under Sections 29(8) and 30(1) of the Trade Mark Act, 1999.
Further, the impugned advertisements were detrimental to the distinctive character and reputation of
the trade mark of the petitioner. Additionally, the impugned advertisements cannot be construed as
mere puffery in respect of the Pepsodent‘s product but constitutes untrue statements of facts in relation
to Colgate and Pepsodent.

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tooth decay. However, in the climax of the television commercial the voice over stats
that ―in comparison to Colgate, New Pepsodent Germi Check ad 130% germ attack
power‖ which is not only inaccurate but misleading. Thus, the court directed to delete the
statement made by the voice over in the impugned advertisement.

2.11 Phenomena of Comparative Advertising in the US

Initial attempts of establishing law on the registration of trade marks in the United States
were linked to the federal trade mark regime all the way back to 1870. A new trade mark
act was passed by the US Congress in 1881. In 1905, Congress revised the Trade Mark
Act and registration was done by the U.S. Patent and Trademark Office.171 The Lanham
Act, 1946 is the updated law on trade mark which has been served with various
amendments.172 Federal trade mark laws in the US evoke the Lanham Act that provides a
broad definition of trade mark, similar to the one provided by the EU. Trade Mark
include words, names, symbols, devices or any combination thereof, that identifies and
distinguishes the goods or services of one undertaking from another and it indicates the
source of the goods or services.173 There are two forums for trade mark in the US.
American states can register trademark with the state, federal and at the US Patent and
Trademark Office (USPTO). They follow the rule of first-to-use trade marks for
registration. This simply implies that the right to trade mark is acquired on the basis of
who uses the mark first in commerce or who registers with the trade mark office first.174
Marks used in commerce related to services, implies that it is used or displayed in the
sale or advertising of services and the services are rendered in commerce.175

In India, registration determines the right and protection of trade mark but judicial
pronouncements exemplify the scope of use and misuse of the mark in commerce.

171
The History and Development of Trademark Law, available at: http://www.tmprotect.idknet.com/eng/
history.html (last visited on August 1, 2018).
172
Roger W. Dyer Jr., Monetary Damages under the Lanham Act: Eighth Circuit Holds Actual Confusion
is Not a Prerequisite, 77 Mo. L. Rev. (2012).
173
15 U.S.C.§ 1127.
174
15 U.S.C.§ 1127 (a).
175
15 U.S.C.§ 1127 (2).

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2.11.1 Market Trend Affecting Comparative Advertising

The economy of the United States is competitive, promotes laissez faire and advocates
the maximization of consumer welfare. This made comparative advertising extremely
prevalent and a form of advertising that was acceptable in the United States. Free-market
and highly competitive market structure of the US support liberal regulation of
comparative advertising. US law encourages the comparison of products and services, if
bases for comparison are clearly identified among competing brands.

A competitor‘s brand being disparaged or denigrated by competitive advertisement does

not pose legal action, unless the explicitly or implicitly comparison is not truthful or
misleading. The legislative authorities, judicial or administrative agencies perspective
towards comparison is not to ban comparison under advertising law, even in case of
dissimilar products or goods. However, legality of honest comparative advertising is
maintained and was recognized by the US courts decades ago. It was, however, limited
by self-regulatory codes of the industry until 1960.

2.11.2 Background to Regulation of Comparative Advertising

Attempts to find truth in advertisements started at a convention in 1911. The convention

is the Associated Advertising Club of America (AACA). There were contemplations and
admonitions to be incorporated in comparative advertising in the convention. Discontent
was raised and the problems engulfed the industry‘s self-regulation process in the 1960s.
The studies concerning to the who‘s onus is it to regulate comparative advertising,
represent a declining interest of working with government regulators after 1930.

Due to emergence of battle ground of federal regulators and industry and concerns with
comparative advertising, the National Advertising Division (NAD) was formed.
Advertisers while trying to regulate certain features of comparative advertising,
unmasked few interesting insights to the antiquity of advertising self-regulation.

The National Advertising Division (NAD) was assisted by establishing the National
Advertising Review Board (NARB) to regulate competitive advertisements. The

81
industry‘s self-regulation like the AAAA,176 ANA,177 NAD,178 CBBB179& NARB180
have contributed to solving problems of comparative advertising and other regulatory
problems. During the 1930‘s it appeared to advertisers that comparative advertising is
unavoidable hence, it became a set of competition in the marketplace.

2.11.3 Elements to Back Comparative Advertising Claims

Comparative Advertising in USA permits comparison among similar products; proof is

required for price comparisons. For success in a lawsuit, the Lanham Act impresses
advertisers to prove five elements, the elements being:181

● there shall be a false statement about the product,

● substantial segment of the audience is deceived or can be deceived by the
advertisement,
● there should be material or meaningful deception, implying a plaintiff to show that
the claim in the advertisement is likely to influence the purchasing decisions,
● goods sold in interstate commerce are falsely advertised,
● injury has been caused to the suing company by false statements in the way of loss of
sales or loss of goodwill,

The restrain on untrue descriptions about the origin and description of facts in misleading
way, is regulated by two main acts, the Federal Trade Commission (hereinafter referred
as FTC) and the Lanham Act. In 1922, the right to regulate false labeling and unfair
methods of advertising in all aspects to the Federal Trade Commission was granted by
the Supreme Court. An order necessitating the firms to make non-deceptive and true
statements about particular desirable properties or qualities of products which are not
possessed by competing products was initiated by the FTC in 1963. A sudden rise of
explicit comparisons in advertising was seen after the Federal Trade Commission‘s

176
American Association of Advertising Agencies.
177
Association of National Advertisers.
178
National Advertising Division.
179
Council of Better Business Bureaus.
180
National Advertising Review Board.
181
Wells, Burnett, Moriarty Advertising Principles and Practice 48 (Pearson Education, India).

82
appraisal. Use of brand comparison is supported by the commission when the bases of
comparison are clearly identified. Comparative advertising is a source of information for
consumers when they are truthful and non-deceptive. Further, it assists in making
rational purchasing decisions and encourages improvement or innovation of products
that may result in price reduction.

The Lanham Act protects advertisers from unfair comparison, seeks damages from
advertisers if comparative advertising misrepresents the qualities, nature, characteristics
or geographic origin.182 Such misrepresentation through the use of any:

● ―Word
● Term
● Name
● Symbol
● Device, or
● any combination of these.
● False designation of origin.
● False or misleading description of fact.
● False or misleading representation of fact‖.

The consumers are also permitted for exercising the remedies provided in the state laws.
A competitor is eligible for seeking injunction relief which results in competitors to
immediately end or modify offending ad. For injunction relief, elements of false
advertising claim should be according to the provisions of the Lanham Act and there
should be irreparable injury by false advertising. Moreover, parties can seek monetary
damages if affected by comparative advertising along with injunction. The award of
monetary damage has rarely been seen since it requires a higher level of proof than for
injunction relief. Along with the elements of a false advertising claim, a plaintiff should
prove the five rudiments stated above that are provided in the Lanham Act.183

182
The Lanham Act s. 43 (a).
183
The other elements to be proved are actual deception or confusion occurred to consumer, false
advertisement being material to customer, actual injury caused to plaintiff.

83
The nature of claim in comparative advertising is significantly affected by the
challenger‘s burden of proving causation and injury.

2.11.3.1 Effect of Comparative advertising

Comparative advertising often resulted in wars which were regretted by advertisers since
it damaged both parties or entire product markets and industries. It has also been alleged
that consumers respond negatively to comparative advertising especially when it is done
in an aggressive fashion. Despite the benefits of comparative advertising, there are many
negative side-effects that exist. Concerns were expressed by Jack Roberts of Ogilvy and
Mather, regarding how comparative advertising could breed counter claims,
contradictions ensuing deceptive and misleading claims. The potential of deception and
misleading in comparative advertising is implicitly recognized by the Radio Code and
TV Code. According to TV Code ―Advertising should refrain identification or by other
means to discredit, disparage or unfairly attack competitors, competing products, other
industries, professions or institutions.‖ Products or services should be offered in
advertising on its positive merits. The Radio Code refrained companies from making
generalized statements or conclusions by any identification, or comparison by name, or
other means of a competitive product.

Comparative Advertising was deemed unfeasible in the 1970s since it would result in
misidentification of products, puffery or disparagement or lead to other potential legal
issues. Since 1972, advertisers were encouraged by Federal Trade Commission (FTC) to
make comparisons using the name of competitors with the objective of creating
informative advertising. From having no legal remedy to being able to challenge
competitors under the section 43(a) of the Lanham Act, the law of comparative
advertising has evolved. Until 1979, comparative advertising was not explicitly used in
the US. It was only after the FTC came in that comparative advertising was promoted.

2.11.4 Advertising Trends of the US

The advertising arena was trending that with the comparison or use of rival‘s name, one
would only gain publicity. This lead to the practice of referring to competitor‘s product
as ‗brand X‘ or ‗leading brand‘. Significant change was brought to the existing practice

84
due to two major decisions of 1960. Rulings in the case of Smith v. Chanel184 was the
first. In this, Smith, the manufacturer of Ta‘Ron perfumes launched a perfume called the
―Second Chance” which was a duplicate of ―Channel no. 5‖, at a low price. It was
copied and unpatented product sold under the trade mark. Advertisement attracted buyers
asking them to detect the difference between ―Second Chance” and ―Channel no. 5”.
―Second Chance,‖ was allowed to use the trade mark in advertising by the Court of
Appeals for the Ninth Circuit. The advertisement was considered to be true, free from
misrepresentation and not amounting to confusion relating to the source of the goods.

The second significant instance, perhaps takes us to 1969 policy, referring comparative
advertising by the Federal Trade Commission (FTC). Using the name of competitor or
the use of competitive product was encouraged for comparison.185 According to the
FTC's statement, if comparative advertising is honest and fair, it will be a valuable
source of information to consumers. The consumers will be assisted to make rational
purchasing decisions. Besides promoting honest comparative advertising, it was
reviewed as a resourceful tool of marketing for persuading, enhancing and innovating a
product. Further, it perhaps results in lowering prices of commodities in the market.
Since then the usage and acceptability has drastically grown for comparative advertising
in the United States.

2.12 Benefit of Comparative Advertising Highlighted by the US

Courts

The courts have many a times mentioned the benefits of comparative advertising. In
Cumberland Packing Corp. v. Monsanto Co.186 the New York District Court denied the
motion for preliminary injunction sought by Cumberland in all respects. Cumberland
Packing is the maker of the sweeteners Sweet'N Low and NatraTaste. EQUAL,
Sweetmate, and NutraSweet brands of sweeteners are made by Monsanto. Cumberland
moved against Monsanto for violation of s. 43(a) of the Lanham Act, 15 U.S.C. §

184
402 F.2d 562 (9th Cir. 1968).
185
Comparative Advertising laws, available at: http://www.legalserviceindia.com/article/l182-Comparati
ve-Advertising-laws.html (last visited on September 27, 2019).
186
32 F. Supp. 2d 561 (E.D.N.Y. 1999).

85
1125(a).187 Cumberland was seeking for a preliminary injunction and falsely advertising
of NutraSweet Monsanto‘s sweetener brand which violated section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a). Monsanto used competitor‘s Sweet'N Low brand in a
comparative advertisement. Cumberland argued on the ground that it dilutes the trade
mark and is in violation of section 43(c) of the Lanham Act188.189

According to Cumberland, Monsanto inter alia, was falsely advertising NutraSweet by:
calling it ―NutraSweet, 100% NutraSweet‖ and calling it ―The Original.‖ All three
phrases were considered meritless and no issue of material facts genuinely in dispute was
found by the court.

It was viewed that fair use of another's mark was permissible and it was beneficial to
consumers since two competing products were compared at a glance. Moreover,
comparative advertising is encouraged by the Federal Trade Commission's policy that
allows comparison by naming or with reference to the competitors.

In the case of August Storck USA v. Nabisco Inc,190Storck, seller of Werther's® Original
Candy, filed a suit under the Lanham Act against Nabisco, seller of Life Savers Delites,
for infringement of its trade mark. The packaging of Life Savers Delites candies stated it
to be ―25% Lower in Calories than Werther's Original Candy.‖ The comparison was
unacceptable to file a suit under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a). Storck
argued that Nabisco infringed on its trade mark and trade dress. Storck claimed
preliminary injunction which was then issued by the district court. Nabisco was refrained
from using the packaging it had devised. In this case, references to FTC and the FDA

187
The Lanham Act, s.43 (a) prohibits any person from using in commerce ‗any word, term, name or
false or misleading description of fact, or false or misleading representation of fact, which in
commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or
geographic origin of his or her goods.‘ To establish a false advertising claim under that section,
plaintiff must show that the advertisement is either (1) literally false as a factual matter, or (2)
although literally true, it is likely to deceive or confuse consumers.
188
15 U.S.C. § 1125(a).
189
The main part of the Lanham Act, s. 43 (c) is pertinent to the ground that the owner of a famous mark
shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable,
to an injunction against another person's commercial use in commerce of a mark or trade name, if such
use begins after the mark has become famous and causes dilution of the distinctive quality of the
mark.
190
59 F.3d 616 (7th Cir. 1995).

86
were made since they encourage product comparisons due to which, the preliminary
injunction was reversed. 191

2.13 Conclusion

Legal risk associated in comparative advertising that is pretense by advertisers can lead
to the injury of a product, brand and the company, like misidentification.

Although, it does acts as a stimulator to draw initial interest in their product and
services, especially if small firms are compared to big brands. Still at times advertisers
calibrate it as unworthy source of information.

The Indian Trade Mark Law appertaining to comparative advertising allows comparative
advertising until it advances into disparagement. To examine this certain factor, a few
things have to be determined like, veracity and authentication of representation, scientific
and technical details, assessment of loss to the business and profits. Ultimately the
assessment is to see whether an advertisement amounts to infringement or not. Although,
these facts have assisted and applied in Indian cases, particularly in the Colgate v.
Pepsodent case, it is not easy for the courts to determine veracity and truth of the claim.

On the other hand, exaggeration by firms is not encouraged under the Indian law which
may be disadvantageous for the manufactures.192 However, infringement on grounds of
unfair advantage, dishonest practice, disparagement, puffing has not been properly
defined in the contemporary law.

There are grey areas and paramount limitations that exist due to insufficient and
indistinct statutes. Jet Airways and Kingfisher case193 is an excellent example
representing vagueness and legal lacuna existing in the regulation. In this case, no
reference or mention of Jet existed in Kingfisher‘s advertisement. Kingfisher had just
placed its hoarding above that of Jets which resulted in indirect comparison.

191
August Storck K.g. and Storck USA, L.p., v. Nabisco Inc., 59 F.3d 616 (7th Cir. 1995).
192
The view is prevalent in the case of Britannia v. Unibic.
193
See, page no. 72 for Jet Airways and Kingfisher case.

87
Further, puffing up of goods in advertising is actionable if it results in slandering or
defaming the goods of the competitor. This is related to Calcutta High Courts‘ decision
in the case Reckitt & Colman of India Ltd. v. M.P. Ramachandran.194 The rights of a
consumer against such advertisements go unnoticed, as the right of the producer to puff
the goods is allowed. Puffing in advertisements is allowed by rivals till it does not cause
harm to each other, leaves the consumer helpless and benefits the producer or advertiser.
Consumers always benefit from comparative advertising, even though one of the
compared products may get affected by the falsity of produced in the advert about the
quality, price and the value.

The judicial pronouncements show that comparisons using trademarks, explicitly and
implicitly, can be permitted. Comparison of products or services with that of rivals is not
prohibited by Indian courts. Moreover, the contemporary view towards the level or limit
of comparison permissible is quite liberal. To reduce misuse of comparative advertising
by advertisers, the following areas should be set out distinctly:

● The comparison of goods in comparative advertising must be classified as explicit or

implied. It must be determined if this classification notoriously impacts the trade
mark or the product of the rival.

● Comparison in comparative advertising may result in litigation. The company who

compares the products with that of the competitors may be sued for violating or
denigrating its goods, trade mark or brand name. This is an additional cost which has
to be borne by both the companies. This adds to the indirect cost of advertising,
moreover leaves the fate of the advertisement uncertain as it is in the hands of the
courts.

● The advertisers or makers of advertisement should seek the advice of an advertising

legal specialist at the stage of blueprint of the advertisement. It can tremendously
prevent the scope of litigation from the rival and avoid encumbering consumer
interest. If an advertiser or company repeatedly infringes the intellectual property or
other laws, it should be made obligatory for such violators to take advice from the

194
1999 PTC (19) 741.

88
 Advertising Standards Council of India. The advertising-legal specialist would
examine the advertisement to determine any gross illegality or violation.

● It must be ensured that comparison in comparative advertising is restricted to the

general acceptable practice followed within the sector, if any. It must not transgress
and be grossly demeaning to the rival trade mark and product.

● The power of the regulator to investigate the impact of comparison on rivals and
consumers should be boosted. For this, the self-regulatory bodies may be roped in
and initial probing must be done by these bodies.

● Claims used for comparison need thorough, independent review and substantiated
data to be robust. Claims which cannot be substantiated by advertisers shall lead to
discontinuation of the advertisement with immediate effect.

Although comparative advertising is admissible by Indian law but it leads to the

dispersion of incorrect information to consumers. Consumers are aware about
comparison in advertisement, but virtuous comparison needs adequate probe to have
diligent and authentic comparison in advertisements. So that, the consumers‘ interest and
basic purpose of advertisement is maintained. There have been deliberations to protect
comparative advertising under the Consumer Protection Act, as it would benefit the
competition arena and consumers. However, it is not appropriate to include advertisers or
firm within the lense of Consumer Protection Act since the act fundamentally protects
consumer rights and advertisers are not consumers. Therefore, an average purchaser can
be protected, as the purchaser can be interpreted to be a consumer but not the advertiser.

Different jurisdictions have dealt with comparison cases based on existing law relating to
misleading and discrediting of the competitor‘s goods depending on their own discretion.
In a few countries, exaggerations and misrepresentations are permitted. In others, a mere
indication of goods to be superior, unique or better than others is considered to be
misleading until justified. Some countries have a liberal approach on laws for
misappropriation and discrediting. Until disparagement is identified, comparative
advertising will be allowed. Countries in which honest practices of comparative
advertising are not followed, comparative advertising is banned and strict action is

89
taken.195 The use of trade mark or trade name without consent is considered discrediting
in few countries.196 Certain jurisdictions discourage comparisons even if they are true.
Comparative advertising was initially considered to be unfair competition and was
therefore forbidden, but the notion is now changing. Courts do welcome proper
representation of facts which may result in comparison with competitor. Since
comparative advertising, in a way, helps consumers to know true facts, it has been
considered to be positive. It provides detailed information to assist consumers for making
careful purchases. This basically encourages transparency in information and reduces
consumers cost in searching for information and appreciating a valid buy. To allow true
comparative advertising, courts provide a certain amount of leverage in disparagements
of goods is seen by courts. This restricts banning statements of all kinds in comparison.
Although, comparative advertising is being measured positively by courts of late, there is
still great disparity in what is acceptable and what is not. This importantly rests on the
present law of a country which is structured by the judicial interpretations. If the need
arises, laws can be regulated so that advertisements are in consonance with honest trade
practitioners and support fair trade.

The U.S. legal regime on comparative advertising is considered to be less restrictive than
India. Truthful, non-misleading and non-confusing comparative advertising is authorized
in both countries. In India, the scope of comparison in comparative advertisement is
vague to determine what is unacceptable. The law and its interpretation pertaining to
comparative advertising is still in a development stage in India. It has caught on to
significance due to increased domestic and international competition.

Unlike US, India requires more effective criterion for setting permissible standards in
comparative advertisement. A significant increase in the number of business players and
competitors may increase complexities in comparative advertisement, triggering
extensive litigations in India. Therefore, regulations should clearly specify that
comparative advertisement will not be allowed if it causes defamation, denigrates,

195
There are few countries that have strong restrictions imposed on comparative advertising like
Argentina, Germany, China, Japan, South Africa. See, https://www.chiefmarketer.com/comparative-
advertising-doesnt-always-work-overseas/ (last visited on May13, 2019).
196
Comparative Advertising Doesn‘t Always Work Overseas, available at: https://www.chiefmarketer.
com/comparative-advertising-doesnt-always-work-overseas/ (last visited on May 26, 2019).

90
discredits, leads to false information, misleads origin of product or service. Each of these
grounds need explanation and their scope shall be stated to restrict its applicability.

Subsequently, comparative advertisement or otherwise featuring celebrity should make

celebrity accountable if advertisement is misleading or false. The aspects of
accountability of celebrity endorsement has been examined in the following chapter.

91