The present case (here) deals with a trademark and copyright infringement dispute related to an advertisement campaign. Unlike traditional trademark cases, where the mark in issue is used on the product and literally ‘in the course of trade’, the marks in this case are used only in the advertisement and not on the product itself. With the development of communication and technology, the law of trademarks now recognizes slogans, visual images forming part of television advertisements that may lead the market to associate with the product in question and thus help establish goodwill of the product.
For long, the advertising industry has made advertisements where animated creatures fight germs in order to create an image of the product itself being a superhero. There are many such examples- the Blue Harpic men, the Listerine soldiers etc. In these ads the products itself turns into germ fighting creatures. The present case also relates to an ad where the product turns into a fire fighter.
A case was filed before the Delhi High Court by Reckitt Benckiser, seeking an injunction against Dabur for an alleged infringement of trademark and copyright. For an effective discussion of the dispute, the following excerpt from, as quoted in the present case (Cadbury Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd) provides theoretical context.
“But competition must remain free; and competition is safeguarded by the necessity for the plaintiff to prove that he has built up an `intangible property right’ in the advertised descriptions of his product, or, in other words, that he has succeeded by such methods in giving his product a distinctive character accepted by the market. A defendant, however, does no wrong by entering a market created by another and there competing with its creator. The line may be difficult to draw; but, unless it is drawn, competition will be stifled. The test applied by Powell J. in the instant case was to inquire whether the consuming public was confused or misled by the get-up, the formula or the advertising of the respondent’s product into thinking that it was the appellants’ dissimilar product.”
The central character/image in this dispute is a fire fighter. And the products in question are not fire extinguishers (in the normal sense)!! The products are two non prescription drugs that provide relief after an uncomfortable bout of gastro oesophageal reflux/heartburn. They are antacids that cool this ‘jalan’.
Reckitt Benckiser (plaintiff) is the owner and manufacturer of Gaviscon and Dabur (defendant) is the owner and manufacturer of Pudin Hara Lemon Fizz.
The plaintiff conceptualized a script based on ‘fire fighting’ for the advertising and marketing of its medicine Gaviscon. A ‘Fireman device’ was used in the ad and was registered in India in 2007 (Class 5 bearing registration No. 1613551).
The plaintiff’s advertisement starts with a person suffering from gastro-oesophageal reflux disease/heartburn. He then pours out some Gaviscon, and the syrup is depicted as a string of tiny fire fighters (in white), who enter his body and extinguish the fire by sprinkling Gaviscon on the oesophagus and the stomach walls.
The defendant’s ad which allegedly infringes the plaintiff’s trademark and copyright is as follows: it also starts with a person suffering from gastro-oesophageal reflux disease/heartbrun. There is so much heat created in his body that he blows out fire with every burp! He then pours out some Pudin Hara Lemon Fizz (that is shown to come out of the packet in the form of lemons and pudina leaves). After drinking this liquid, the pudin hara inside his stomach turns into amorphous life like figures (green in colour) that extinguish the fire with pudin hara.
The plaintiff contends that the defendant by using the theme of Firemen has infringed its trademark and copyright.
They rely on National Sewing Thread Co. Ltd v. James Chadwick and Bros Ltd AIR 1953 SC 357 to state that till the time the mark conveys the same idea, the representation of the mark is inconsequential if it is good enough to confuse the public. Due to long and extensive use of the advertising campaign (over 8 years), the consumers relate fire fighting action with the antacid and anti-reflux effect of Gaviscon.
The defendant however pointed out that Gaviscon was introduced in the Indian market more than a year after Pudin Hara Lemon Fizz was introduced. According to the defendant, the plaintiff failed to disclose that the defendant’s product Pudin Hara Lemon Fizz has been marketed across India since March, 2010 whereas the product of the plaintiffs was introduced in the Indian market only in November, 2011. Second, there is no similarity between the two ad campaigns and that the plaintiff cannot claim copyright over the theme of a fireman.
The court first compares the registered trademark with the defendant’s mark. On comparison, it is clear that the two marks are not identical (see image). In cases where marks are not identical, the court will have to check whether the marks are deceptively similar and whether there is any likelihood of confusion. However, the two marks appear to be very different in terms of colour, representation, number and colour of the background. So prima facie, the two marks are not deceptively similar.
Even though the test of passing off is broader as it is not based on any particular registration of the mark, the overall comparison of postures, colour, number and representation shows that the defendant has not ‘passed off’ its product as that of the plaintiff’s. The defendant stated that they had been selling Pudin Hara Lemon Fizz since 2010 and the plaintiff was unable to provide details of the marketing, advertisement and promotional expenditure incurred in India in relation to the Fireman device. Hence the distinctiveness and goodwill of the plaintiff’s mark was itself in question. Moreover, none of the advertisements referred to by the plaintiffs was published in India.
The court observes that there are several advertisements related to antacid medicines such as ENO and Digene wherein heartburns are shown to cause discomfort and after taking the medicine the ‘jalan’ reduces! So, the depiction of flames being extinguished by water or medicine cannot be monopolized by the plaintiff. Also, copyright infringement cannot be inferred from commonality in the plot. It is not uncommon for certain similarities to be present in advertisements of antacids as there is bound to be a representation of person having a stomach ache etc. Moreover, the court highlights that the defendant’s expression of the idea of extinguishing a heartburn is different from the plaintiff’s expression.