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Trademark infringement and Comparative advertising: position in US, UK and India

sangam tiwari

Introduction

Comparative advertising is all about a brand claiming to be something that another product or service isn’t. Every brand’s marketing approach nowadays is to claim superiority over the competition.In general, comparison advertising benefits new or unknown brands. Consumers can make most reasonable and knowledgeable purchasing decisions thanks to comparative advertising, which increases consumer information and broadens the scope of the brand which is developing.Despite the fact that India lacks a specific statute for comparable advertising like the United States and the United Kingdom, the Delhi High Court has issued several decisions in this area. Comparative Advertisement is also included in the Monopolies of Restrictive Trade Practices Act of 1984 and the Trademark Act of 1999.Commercial speech includes advertisements. As a result, it is included in the Indian Constitution’s article 19(1)(a) protection of freedom of expression. Comparative commercials are divided into two types: those that directly compare competing products and those that compare competing products implicitly.While both forms of comparative advertising are permitted in some nations, such as the United Kingdom, comparative advertising is prohibited in others. Comparative advertising, on the other hand, is legal because a trader does not portray or suggest that his competitor’s goods are inferior or unattractive while comparing the commodities.

Trademark Infringement and Comparative Advertisement

‘Comparative advertising’ is a term used to describe advertisements in which one trader’s goods or services are comparable to those of another trader. It indicates that while it is acceptable to use another’s trademark, the marketer cannot criticize another’s goods or services while doing so.

Even if the trademark is well-known, comparative advertising could be considered trademark infringement. The repealed MRTP Act gave rise to the concept of “disparagement of another person’s goods,” which leads to unfair commercial practises. That is likewise prohibited by section 29(8)(a) of the Trademark Act .The Trade Marks Act, namely the infringement provisions, can be used by the owner of a registered trade mark to prohibit it from being used in competitive advertising.

Position in India

The Indian Merchandise Act, 1889, was the first Trademark legislation in India, with disputes or problems connected to trademark infringement or passing off being resolved under section 54 of the Specific Relief Act 1887, and registration issues being addressed under the Registration Act 1908. This statute was repealed in 1940, and the Trademark Act of 1940 was enacted in its place.

Furthermore, in 1999, the Trademark Act was passed, which took effect on September 15, 2003, and abolished the Trade and Merchandise Marks Act of 1958.

Until the Trademark Act of 1999, the trademark perspective of comparative advertising was unknown.Section 29(8) of the TM Act 1999 specifically states that a registered TM is infringed by any advertising of that TM if the advertising takes unfair advantage and is contrary to honest practice, if the advertising is harmful to the TM’s unique character, or if the advertising is detrimental to the TM’s reputation.

About US

Since 1915, the Federal Trade Commission (FTC) in the United States has penalized misleading advertising.A party will be liable for trademark infringement under section 32 of the Lanham Act if that party uses in economic activity any reproduction, counterfeit or copy of a federal level registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or with the intention to deceive.The plaintiff must show that the defendant is using a trademark that is deceptively similar to the plaintiff’s own mark to establish a trademark infringement claim under the Lanham Act.

For example, in the case ofPlayboy Enterprises, Inc. v. Frena[1], Playboy sued Frena, the operator of an electronic bulletin board service where customers frequently exchanged copies of Playboy images. Many of the photos included Playboy’s registered PLAYBOY and PLAYMATE trademarks. Frena was charged with trademark violation by Playboy.Despite Frena’s claim that he had no control over what his subscribers posted on the bulletin board, the court found that this constituted infringement: “It is likely that customers of Defendant Frena would believe that [Playboy] was the source of Defendant Frena’s images and that [Playboy] either sponsored, endorsed, or approved [his] use of [the] images.”

Position in UK

S.10 (3) of the UK’s Trade Marks Act 1994 stipulates that it is not essential to prove the probability of confusion in order to constitute infringement under this provision, even if the items in question are unrelated.

BMW v. Deenik[2], where a garage owner used the phrases “BMW Specialist,” “Specialized in BMW,” and “Repairs and Maintenance of BMWs” to market his skill in repairing and servicing BMW cars. BMW opposed to the use of its registered trademark in this manner and filed a complaint with the ECK, citing Article 5 of the Directive as the basis for its claim.The Court found that the defendant’s use of BMW’s registered trade mark was justified in these circumstances because the garage owner would otherwise be unable to encourage his service, and that it also fell within the purview of Section 7 of the Directive because the defendant was making a reference to genuine BMW cars which had already been placed on the market with BMW’s consent.According to Article 7, the owner of a trademark cannot, without his approval, ban the use of his goods in the community market under that trademark. Subject to the stipulation that the items be altered or harmed after they have been placed on the market, or any other valid reason.

Thus, a comparison of the three countries reveals that trademark infringement during comparative advertising is prohibited, but that one may compare his products in a healthy manner.

Conclusion

According to the findings of the study, comparative advertising is advantageous since it improves trade competitiveness, consumer awareness, and product identity in the market, and so it should be permitted.However, there must be safeguards in place to ensure that traders engaged in comparative advertising are not deceiving, engaging in unfair trading practices, denigrating other competitors’ products, infringing on their trademark, and so misleading the public while publicizing their product.

Advertising in India is governed by a number of statutes and rules, including the Indian Constitution, the Trade Marks Act of 1999, the Consumer Protection Act, and the Advertising Standard Council of India’s codes (ASCI).Comparative advertising is defined in US section 32 of the Lanham Act and EU Art. 2(c) of the EEC Advertising Directive, and in the US, The Lanham Act is the federal statute regulating trademark registration, infringement, including unfair competition. Comparative advertising is also permitted under the UK’s Trade Marks Act 1994 (TMA), but only under specified conditions.

As a result, it can be ascertained that comparative advertising was common in the United Kingdom and the United States, and is now common in India as well. However, as a result of this increase, trademark infringement in comparative advertising through unfair and misleading trade practices has become quite common.The judiciary and government play a vital role in preventing and redressing unfair discrimination in this country.

Bibliography

  1. https://privpapers.ssrn.com/sol3/Delivery.cfm/SSRN_ID1958894_code1350309.pdf?abstractid=1958894

[1]839 F. Supp. 1552 (M.D. Fla. 1993)

[2]Bayerische Motorenwerke, AG v. Deenik (1999) ETMR 399

Contributed by:– Nidhi Jha, Legal intern at LLL

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