This case dealt with the question of copyrightability of advertising slogans. We had earlier blogged on this issue over here. It was decided in early July this year by the Delhi High court. The full judgment is available here.
Facts
The parties in this case are both pan masala manufacturers. Plaintiffs alleged that the Defendants had copied their advertising slogan, Shauq Badi Cheez Hai and brought the suit against them alleging infringement of copyright, passing off, unfair competition and dilution. The case was brought against the Defendants slogan Swaad Badi Cheez Hain. Plaintiffs stated that they had spent more than Rs. 25 crores on this advertising campaign. It was highly successful with the customers and they had also applied for registration of the slogan with the Trade Marks Registry. On that basis they stated that they are entitled to copyright protection on their original literary work, statutory trade mark rights and common law rights.
Infringement of copyright
The court held that the slogan Shauq Badi Cheez Hai does not fall within the scope of artistic or literary work under the Copyright Act. The slogan was a combination of common words. It was not an outcome of great skill. It was a commonly used sentence in Hindi and used in day to day life. In coming to this decision the court mentioned the position in Nimmer on Copyright, which states that words and phrases such as slogans are not subject to copyright.
Infringement of Trade Mark
The court held that since the Plaintiffs had only applied for registration of the trade mark and the mark had not yet been registered the Plaintiffs would not be entitled to any statutory remedy. It was further held that both advertisements were very different and were not likely to cause any confusion in the minds of unwary customers. The products of both the Plaintiffs and Defendants were clearly visible and noticeable in the advertisements.
Passing Off
The law relating to passing off was discussed at some length by Pathak. J who emphasised that the gist of a passing off action is deceit. For succeeding in a passing off action, Plaintiffs would have to prove that their slogan had acquired reputation sufficient enough to connect the product of the Plaintiff with the slogan by the consumers.
Further it has to be shown that the use of such slogan or deceptively similar slogan would be sufficient to deceive the customers into thinking that the Defendant’s goods are that of the Plaintiff. Actual deception need not be proved but reasonable ground for apprehending deception must exist.
The court held that the Defendants had neither copied the idea nor theme of the Plaintiff’s advertisement. Both the slogans convey different meanings. There was no chance of any confusion or the consumers getting deceived by the slogans. Both the advertisements and slogans were distinct making no possibility of confusion in the minds of the consumers to accept the product of the defendant as that of the Plaintiff.
However this does not mark the end of the case, the Plaintiffs have decided to appeal this decision.
On the decision…
Having had a look at both ads, I agree with the judgment in this case. The advertisements don’t resemble one another and apart from a few words in the slogan being similar, they come across as two different products. Further, the Defendants prominently display their product in their advertisement leaving no room for intended deceit. Take a look at the videos of both ads available here and here to make up your own mind about them and let us know what you think.
Finally though the Plaintiffs alleged unfair competition and dilution by the Defendants, these aspects were not discussed in the judgment.
Pretty good judgment except leaving out unfair competition ground and the only strong ground in this case. Feel sorry for the Plaintiff who was wrongly advised by their Attorneys to contest on the grounds of TM & Copyright Infringement. Passing off and unfair competition make sense but I fail to understand why did the plaintiff’s Attorneys added TM & Copyright Infringement.
I disagree with whole point of “great skill” as a requisite to determining copyright-ability. A copyright can sustain even with mediocre or underrated skill level, as long as the criterion of ‘originality’ is fulfilled. Other than this one lapse, I find the judgement’s rationale quite objective and accurate.
Fair judgement. A few words used by people in daily life cannot be copyrighted because it appears in a commercial.
Good post! As an extension to this discussion, what approach are Indian Courts likely to adopt in the case of “highly creative” short phrases? In the US, Courts have afforded protection to short phrases based upon their creativity.
Any insights will be deeply appreciated. Thanks.