INFRINGEMENT OF TRADEMARK BY COMPARATIVE ADVERTISING

Introduction

Comparative advertising is a globally used form of commercial advertising in various countries. This kind of advertising seeks to influence customer behavior by comparing the characteristics of the advertiser’s product with that of its competitor’s product. It is used to define advertisements where the goods or services of one trader are compared with the goods and services of another trader. It is advantageous to the business person as it usually compares the price, value, quality, and other merits of different products, thereby more upgrading the awareness of the consumer. Another important point to be noted is that the improvement of consumers' knowledge can only be achieved for long as the advertising does not involve misinformation, which is always a factor of the education of the customers is entrusted to entities with limited interests.

Comparative Advertising and Trademark Infringement

The most basic aim of a trademark is to differentiate the goods of one person from another and hence a trademark makes sure that the consumer identifies their goods and their origin. Hence in case if an advertiser uses a competitor’s trademark to make a comparison between his goods and those of his competitor, and in the procedure disparages them, then such act on the part of the advertiser would not only create issues related to comparative advertising and product disparagement but would also create problems related to trademark infringement. The legal provision of comparative advertising and product disparagement in relation to trademarks in India is based upon the law as laid down in Irving’s Yeast Vite Ltd. v FA Horse-nail. Section 29 (8) of the Trademark’s act, 1999 enunciates situations, when the use of the trademark in advertising can make infringement. It states that any advertising which is not according to honest practices or is detrimental to the reputation of the mark will be act comprising infringement. At the same time, Section 30 (1) makes comparative advertising an exception to acts constituting infringement under Section 2. It states that any advertising which is in accordance with honest practices and does not cause detriments to the reputation of the trademark will be permissible and will not comprise of infringement.

The settled law on trademark infringement and comparative advertising:-

• The most basic aim of Section 29 (8) and Section 30 (1) of the trademark act, 1999 is to grant permit advertising.

• As long as the use of a competitor mark is honest, there is no harm in telling the merits of the competing goods and services and using registered trademarks to recognize them.

• The onus is on the registered proprietor to show that the factors stated in the proviso to the section are applicable.

• There will be no infringement unless and until the use of the mark is not in accordance with honest practices.

• The testis objective: would a reasonable reader be likely to say, upon being given the advertisement that it is honest.

• Statutory or industry-agreed codes of conduct are not enough to lead as to if a practice is honest for the purposes of Section 29(8) and Section 30.

• It should be in mind that the general public is used to these kinds of advertising.

• The act does not create an obligation on the courts to try and enforce through the legislation a more puritanical standard that the people would expect from an advertisement.

• An advertisement that is misleading is not honest for the purposes of section 29 (8) and section 30 (1).

• The advertisement should be taken as a whole.

• If the background of an advertisement justifies the description that even if it is misleading for introductory purposes, it should be allowed.

Legal Provisions on trademark infringement and comparative advertisement in India

Trademark act, 1999 allows comparative advertising under section 30 (1). And other limitations are stated under section 29 (8).

Section 36A of the MRTP Act lists various actions to be an unfair trade practice. The provision which relates to comparative representation is incorporated under Section 36A (1) (x). The protection that has been given in the Trademark Act, 1999 is for the registered trademark. The trademark act also applies to references to popular unregistered marks. This gives the proprietor a statutory alternative to the common law action of passing off.

Conclusion

Section 29(8) and section 30 (1) of the Trademark Act are sufficient to deal with the issues related to trademark infringement, made in the garb of comparative advertising. Judicial pronouncements have also made it clear that there is nothing bad in comparing your goods with those of the competitors but the said competition would be equally fair and should not be bought disrepute to the competitor’s products or trademarks. Comparative advertising is allowed but comparative advertising leading to product disparagement is not allowed. The position is more or less the same in almost all the countries which permit the use of another’s trademark in comparative advertising. There is no doubt that comparative advertising is beneficial as it increases consumer awareness and hence it should be permitted. It enables an advertiser to establish its brand in the market by stating its superiority over the already established brands. But there has to be laws and rules to check abuses. If the court has accepted the propositions that trade rivalries should be settled in the market it would have caused prejudice to general people's interest as the point is not of deciding which product is better but of spreading public awareness. Because as we say that comparative advertising increases public awareness, the misleading and disparaging advertisements should not mislead the public.

BY-

SHRUTI KULSHRESTHA