A tug of war between two giants of the print media sector is on. The Times of India came up with an advertisement portraying the newspaper published by the Hindu, its age old rival, as brutally boring (The link is available here). The Hindu then assumed upon itself the responsibility of responding to the Times of India through another commercial (See here, you may watch the commercials back to back over here).Thereafter, the Times of India published an ad on its front page reflecting the Hindu Mockery on the Times of India (See here). Yes, as is pretty clear, we are once again confronted with the issues of comparative advertising and disparagement. The previous discussion on this very issue (the Rin v. Tide case) can be found here in Spicy IP itself.
Comparative advertising is a kind of advertising where a party portrays its goods or services to be superior to rival goods or services, thereby intending to influence the consumer’s perceptions about the same. Comparison is not always the most pleasant of things. But in comparative advertising such ‘comparison’ is inevitable. In constitutional law, ‘commercial free speech’ can avail of protection extended under A. 19(3). However, such a right is subject to ‘reasonable restrictions’. The duty not to indulge in disparagement is one such reasonable restriction on the act of commercial speech, which has been expressed in the form of prohibiting defamation. ‘Disparagement’ is a very wide term. Product disparagement can be caused even by a third party and not merely by a rival contender of the product. Under Section 29(8) of the Trademark Act, 1999 (“Act”), a registered trademark is infringed by any advertising of the trademark if such advertising takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, is detrimental to its distinctive character or is against the reputation of the trademark. Section 30(1) the Act seeks to ensure that, a trademark can be used by another person (apart from the owner) provided it is used in accordance with honest practices, no unfair advantage is taken and nothing detrimental to the distinctive character of the trademark is done. To ‘disparage’ is to ‘connect unequally’ in a way that it brings dishonour or disrepute to the person or the object. In commercial advertising, disparagement could be an injurious statement, action or indication damaging the targeted party’s reputation. Comparative advertising and disparagement are two separate issues. In a law abiding society, the former is allowed and the latter is not.
The principles of comparative advertising as laid down in Reckitt & Coleman v. Kiwi T.T.K Ltd [1996 PTC (16) 393] and reiterated in subsequent decisions of Dabur India Ltd. v. Colgate Palmolive India Ltd [AIR 2005 Delhi 102] are as follows:
a)The trader is entitled to declare that her goods are the best, even though the declaration is untrue.
b)One may also say that her goods are better than her competitors, even though such statement is untrue.
c)For the purpose of saying that her goods are the best and that her goods are better than her competitors, she can even compare the advantages of her goods over the goods of the others.
d)One, however, cannot while saying her goods are better than her competitors, say that her competitors’, goods are bad. If she says so, she really slanders the goods of her competitors. In other words she defames her competitors and their goods, which is not permissible.
e)If there is no defamation, to the goods or to the manufacturer of such goods no action lies, but if there is such defamation, an action lies and if an action lies for recovery of damages for defamation, then the court is also competent to grant an order of injunction restraining repetition of such defamation.
The case of Annamalayar Agencies v. VVS and Sons Pvt. Ltd. and Ors [2008(38) PTC37(Mad)] , elaborated on the above principles-
a)A manufacturer of a disparaged product which though not identified by name can complain of and seek to injunct such disparagement.
b)Generic disparagement of a rival product without specifically identifying or pinpointing the rival product is equally objectionable.
c)Advertisement campaign on visual media has an immediate impact on the viewers and possible purchasers’ mind particularly a well known cinema star is endorsing it.
d)There must be a dividing line between statements that are actionable and those which are not.
e)When a claim of superiority over a rival product is made and until the same is proved by a panel of experts, an order of interim nature should operate against those advertisements.
f)Advertiser has a right, to boast of its technological superiority in comparison with a product of a competitor, however while doing so, she cannot disparage the goods of the competitor. g)If the Defendants highlight its better feature while comparing its product with that of the Plaintiff in an advertisement, no possible objection can be raised thereto.
h)Courts will injunct an advertiser from publishing an article if the dominant purpose is to injure the reputation of the Plaintiff.
i)The factors to be kept in mind while deciding on the question of disparagement are:
(i)intent of the commercial
(ii)manner of the commercial
(iii)story line of the commercial, and
(iv)the message sought to be conveyed by the commercial.
j)The degree of disparagement must be such that it would tantamount to or almost tantamount to defamation.
k)An advertiser can say that her product is better than that of her rival, but she cannot say that the rival’s product is inferior to her product.
Inferring from the above facts and discussion, we understand that comparative advertising as a tool remains risk free as long as there is no overt indication to or detailed discussion about the compared product. Elements of malicious intent are prima facie evidences of disparagement.
The case of Annamalayar Agencies v. VVS and Sons Pvt. Ltd. and Ors, illustrates that there is no actionable wrong committed where three tailors having adjacent working counters put up notices in their respective windows saying ‘the best tailor in the world’, ‘the best tailor in the town’, the ‘best tailor in the street’. Puffing seems to be within the boundaries of harmless advertising but trying to promote one specific product or services by clearly abusing another is not appreciated in law. Though in any situation, the choice finally lies with the consumer.
The lack of creative or smart advertisement has indeed taken a toll on the very concept of ‘comparative advertisement’. There is no denial that it is a fiercely competitive market out there but this can never be an excuse for resorting to disparagement of other goods or services.
In this specific case where the Hindu and the Times of India are involved, the abuse on the respective trademarks is clear (The news papers are registered under class 16 of the Act). In the first advertisement by the Times of India, there has been absolutely no hesitation to communicate to the consumers that it is the Hindu, an Indian daily newspaper published in English, which supposedly stands as ‘supremely boring’, putting people to sleep all the time. In the counter response, the advertisement by the Hindu pinpoints with equal ease that it is the Times of India, an Indian daily newspaper published in English, which supposedly has ‘no substance but only style’. The advertisement shows how a bunch of youngsters (their preferred newspaper being the ‘Times of India’) are unable to answer basic questions of national importance whereas they answer without fail when questioned on Bollywood basics. The subtlety employed by the Hindu in the form of the ‘bleeping out’ process is ear-splittingly (metaphorically though) loud to convey the message to its consumers that it is no other newspaper but the ‘Times of India’. It ends with a signature message ‘Stay ahead of the Times’
On a slightly different note, apparently, both the news giants have been happy with the way in which the whole issue has impacted their sales in the last few days. Though, decisions on such an issue shall have to be made only on a case to case basis, yet, the specific war between the Hindu and the Times of India is a perfect instance of disparagement.
Well, the law lords’ will have the last word in case one of the parties is dragged to the courts.
The Spicy IP team thanks Shatarupa for providing us with this insightful piece exploring one of the recent controversies.