28 April 2015

Trademarks – Comparative advertising when not disparaging

In the dispute wherein the petitioner had impugned the defendant’s advertising campaign  comparing their product with that of the petitioner, the Delhi High Court has held that a comparison, which is unfavourable to a competitor, does not necessarily mean that it is dishonest or unduly detrimental. Dismissing the application contending denigration or disparagement of plaintiff’s mark, the court held that mere trade puffery, even if uncomfortable to the registered proprietor, does not bring the advertising within the scope of trade mark infringement. Holding that failure to point out competitors advantages is not necessarily dishonest, the court observed that in Indian law there is no rule which requires that all the features of a product have to be necessarily compared in an advertisement. The court in this regard rejected the contention of the petitioner (Havells India Ltd.) that as prices of similar products had been compared, the defendants were bound to mention all other relevant parameters/features in the advertisement. The defendant (Amritanshu Khaitan) in their advertisement had compared only some of the parameters.

The court in this regard on 17-3-2015 further laid down the conditions for permitting comparative advertising. It was observed that comparative advertising is legal and is permitted when the goods or services are meeting the same needs or are intended for the same purpose; one or more material, relevant, verifiable and representative features (which may include price); and the products are with the same designation of origin (where applicable). The court in this regard also noted that the primary objective of Sections 29(8) and 30(1) of the Trademarks Act, 1999, is to allow comparative advertising as long as the use of a competitors mark is honest, and that the test of honest use is an objective test which depends on whether the use is considered honest by members of a reasonable audience. It was held that the words “industrial or commercial matters” in the said provisions do not mean that the court should look at statutory or industry-agreed codes of conduct.


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