The Trade Marks Act, 1999 permits comparative advertising by
means of using another's trademark, however in that process
the advertiser doing so cannot disparage the goods or services
of another. Any such act disparaging the goods or services of
another shall not only be an act constituting infringement of
trademark, but also shall constitute product disparagement
which covers the domain of unfair trade practices.
Lately in a high profile dispute involving FMCG majors,
product disparagement was the core of the issue in comparative
advertising. Reckitt and Benckiser had moved the Delhi High
Court seeking restraint on the television commercial of
Hindustan Unilever Limited alleging that the commercial is in
bad taste and has brought discredit to its cleaning product
Harpic. It was contented that the advertisement by Hindustan
Unilever Limited features a toilet bowl being cleaned with a
blue colour liquid and proceeds to show how blue colour
cleaners are ineffective against fighting germs compared to
Domex, Hindustan Unilever's product, which is white in
colour. Reckitt and Benckiser claimed that Hindustan Unilever
by claiming that HUL's Domex kills germs better than the
blue-coloured liquid puts Harpic in bad light as the blue
colour is an identifiable characteristic of Harpic so much so
that it has become synonymous with its product in this
category. It was further claimed that Harpic is a household
name and commands a market share of 80 percent. The
advertisement of Hindustan Unilever is a disparagement of the
entire class of blue liquid toilet cleaners and in particular
Harpic. Denying all the allegations, HUL said there was no
direct attack on Harpic in the advertisement as Reckitt and
Benckiser was selling its product under other colour
combination also apart from blue. The court, after hearing both
parties has reserved the judgement.
The law on comparative advertising and product disparagement
with respect to trademarks is given in sections 29(8) and 30(1)
of the Trade Marks Act, 1999. Section 29(8) enunciates
situations where use of another's mark in advertising can
amount to infringement, if such use does not comply with the
conditions laid down under the section. At the same time,
section 30(1) makes such use, an exception, if it is in
accordance with the conditions provided under this section.
Trademark Act, 1999 permits comparative advertising u/s
30(1) which reads as follows:
Nothing in section 29 shall be preventing the use of
registered trademark by any person with the purposes of
identifying goods or services as those of the proprietor
provided the use:-
is in accordance with the honest practices in
industrial or commercial matters, and
is not such as to take unfair advantage of or be
detrimental to the distinctive character or repute of the
But with certain limitations which are provided u/s 29(8)
which reads as:
A registered trademark is infringed by any advertising
of that trademark if such advertising:-
takes unfair advantage and is contrary to honest
practices in industrial or commercial matters; or
is detrimental to its distinctive character;
is against the reputation of the trademark.
Comparative advertising is productive in a state of healthy
competition whereas when used with mala fide
intentions, it misleads the consumers into buying the wrong
products. A tradesman is entitled to boast about his product
for the sole purpose of its promotion, howsoever untrue it may
be, and for that purpose can even compare the advantages of his
goods over the goods of others but there cannot be any mention
of the disparagement of the competitor's good.
The key elements of comparative advertising law are as
Although comparative advertising is legal, the competitor
is still entitled to sue if it is targeted in an
advertisement and anything said about it is false or
Even if the competitor is not specifically mentioned but
may be identified by implication, it may be seen as the
Once the competitor is seen as the target (either by
implication or by specific naming), if any fact stated or
impression created is false or misleading the advertiser may
be liable for damages. The competitor may also be entitled to
an injunction to stop the campaign.
Special care must be taken in the use of a design
trademark in a comparative advertisement.
In a comparative advertising campaign which involves the
use of a competitor's trademark, the emphasis should
be on promoting the product based on the differences, not the
similarities, between the two products.
The intent of the legislature in enacting the aforementioned
provisions is quite apparent: To impose the leniencies of
permitted comparative advertising over the stringencies of
The territorial jurisdiction to institute a trade mark infringement or copyright infringement case is turning into a battleground with contrary views being taken by the Delhi High Court and the Bombay High Court.
At least the Delhi High Court thinks so. In a recent judgment passed by the Delhi High Court in the case of The Chancellor, Masters & Scholars of the University of Oxford & Others Vs. Rameshwari Photocopy Services & Another, . . .
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