COMPARATIVE ADVERTISING, DISPARAGEMENT

AND TRADEMARK INFRINGEMENT IN INDIA:

AN INTERFACE

Thesis Submitted

by

SHIKHA SHARMA

in the fulfillment of the Requirement of the award of the Degree of

Doctor of Philosophy

to the

           UNIVERSITY SCHOOL OF LAW AND LEGAL STUDIES

Guru Gobind Singh Indraprastha University Delhi.

March 2017
 CERTIFICATE

This is to certify that the work embodied in this thesis titled COMPARATIVE
ADVERTISING, DISPARAGEMENT AND TRADEMARK INFRINGEMENT IN
INDIA: AN INTERFACE is original and has been carried out by Ms. Shikha Sharma
under the supervision of Prof. M Afzal Wani. The work has not been submitted, in part
or in full, for any other degree or diploma of this or any other University.

Prof. M AFZAL WANI Prof. KANWAL D.P. SINGH

Supervisor Dean,
University School of Law &Legal Studies
GGSIP, University
  

     

               

DECLARATION

This is to certify that the work embodied in this thesis titled COMPARATIVE
ADVERTISING, DISPARAGEMENT AND TRADEMARK INFRINGEMENT IN
INDIA: AN INTERFACE is original and free from any form of falsification,
fabrication and plagiarism. I shall be solely responsible for any such dispute arising out
of my doctoral work.

Shikha Sharma
Dated: (Enrollment No 90056110111)
 ACKNOWLEDGMENT

I have received help and encouragement from a number of people on completing this
research work and would like to take this opportunity to thank them all.

Firstly I wish to place on record my deep sense of gratitude to our Dean and my supervisor
Prof. M Afzal Wani under whose scholarly guidance the present thesis has been completed.
His vast experience in the field of law, research and administration enriched my confidence
in undertaking and administering the present research. In spite of his busy schedule, he
entertained all my queries with a lot of patience. He encouraged my aspiration of research
and gave me future vision.

I am deeply obliged and thankful to Dr. Deepshikha Aggarwal, Associate Professor,

University School of Law and Legal Studies, GGSIPU, Dwarka, for her regular
encouragement and anxiety to see me through. My sincere gratitude also is due to the entire
staff (teaching and non teaching) members of GGSIP University (University School of Law
and Legal Studies) for their constructive comments and suggestions on my research work.

I am also thankful to the librarians and the staff of various libraries, particularly Univ.
School of Law and Legal studies, G.G.S.I.P.University, The Indian Law Institute, New Delhi,
Campus Law Centre, Univ. of Delhi, Indian Council of Social Science Research, New Delhi,
for their assistance rendered to locate the material for my present research work. The
material in library as also staff of library matters a lot for any researcher. I received
cooperation in all libraries.

I also express my immense gratitude to the learnt authors whose works I have consulted and
referred on many occasions.

At the end I owe my research to my entire family. (Father Shiv Kumar Sharma), Mothers
Swaran & Beena Sharma), my pillars of strength. I have no words to express my feelings for
Mr. Pankaj Sharma, my husband. He always stood beside me, during tensions relating to
research work.

iii
He helped at every step and stage of research. And last my daughter Ms Mahi, 2 year old,
who also understood that “her mother is doing some important work, hence not giving time”.

Thank you everyone

SHIKHA SHARMA

iv
 ABSTRACT

Comparative advertising is a widely used form of commercial advertising in many countries.

This type of advertising intends to influence consumer behavior by comparing the features of
the advertiser's product with that of the competitor's product. It is a commercial in which
there is specific mention or presentation of competing brand(s) and a comparison is made or
implied. It is a practice of either directly or indirectly naming one or more competitors in an
advertising message or usually making a comparison on one or more specific attributes or
characteristics. The main objective of such a comparison is to ensure enhancement of sale of
advertiser’s product. It not only promotes market transparency, but also helps in keeping
prices down and improving products by stimulating competition.

In simple words; comparative advertising is a form of advertising in which two or more

brands of same generic products are compared in terms of one or more products or attributes.
It compares the product or services of one company with that of other or with those of
competitors. These advertisements are designed to highlight the advantages of the goods and
services offered by the advertiser as compared to those of a competitor. Although,
comparative advertisement has not been defined in the Indian statute, the UK Regulations
define it as “an advertisement which explicitly or by implication, identifies a competitor or
goods or services offered by a competitor”. In comparative advertising the underlying
assumption is that the consumer is made aware of differences in features/prices/utility etc.
between the compared products.

There was a time when it was customary in the advertising trade not to even hint at the
identity of competitors. But times change and so does the practices of trade and business.
This custom too changed and many advertisements now show the competitor's goods,
identify them by the trademark, and even invite the buyer to make comparisons. Any
marketing measure that- implicitly or explicitly-identifies a competitor or goods and services
offered by a competitor falls into the category of comparative advertising.

Comparative advertising generally possesses two components, puffery and disparagement.

Puffery is where the advertiser seeks to draw the consumer’s attention by making superlative
claims about his product that are assertions of opinion, rather than verifiable statements of
fact. Often puffery crosses the limits of tolerance and seeks to portray the competing product

v
in a negative light. The same is then said to amount to disparagement, which the courts have
strictly prohibited.Comparison should not be made on false or misleading statements about
the goods or services.

Nevertheless, an honest and effective comparative advertisement has various positive

benefits. It can play the role of a salesman by removing and clarifying doubts about a brand.
It influences the purchase decision of the consumers and helps them to take a right decision.
An honest comparative advertising provides consumers with important information about
comparative products and services. This in turn, assists them to make rational purchase
decision. Comparative advertising leads to product improvement and innovation and this
may, in turn, lower the price of the products or services. Comparative advertising that aims to
truthfully inform the consumers-promotes the transparency of the market. But comparative
advertising can be harmful to the consumers, competitors and the public at large if it is
deceptive, misleading, unfair and disparaging, if it contains a misrepresentation,
disparagement or deception that may mislead or confuse the consumers and may bring about
chaos in the market.

The key legal areas of concern that can be identified in the context of comparative advertising
include statutory provisions in competition law, trade-marks law and even constitutional law,
and common law principles. The legal framework for potential areas of conflict is a
composition of several diverse mechanisms, whereby no statutory provision explicitly
governs comparative advertising in India which create a lacuna in the present system. The
current research is aimed toward filling this lacuna of law with help of suitable amendments,
modification worth consideration as regards the topic under research study.

vi
 ABBREVIATIONS

1. AAAA - American Association of Advertising Agencies

2. ABC – The American Broadcasting Company

3. ASA – Advertising Standards Authority

4. ASCI- Advertising Standard Council of India

5. BCAP - Broadcast Committee of Advertising Practice

6. BPRs – Business Protection from Misleading Advertising Regulation 2008of UK

7. CAD – Comparative Advertising Directives

8. CAP - Committee of Advertising Practice

9. CAT-Competition Appellant Tribunal

10. CBS - Columbia Broadcasting System

11. CCC- Consumer Compliant Council

12. CCI- Competition Commission of India

13. CP Act- Consumer Protection Act

14. DGFT - Director General of Fair Trading

15. DGIR- Director General of Investigation and Registration

16. EC-European Council

17. ECJ – European Court of Justice

18. EU-European Union

19. FTC - Federal Trade Commission

20. IPRs- Intellectual Property Rights

21. ITC – International Trade Commission

22. LPG- liberalisation, privatisation and globalisation

23. MNCs - Multi National Corporations

24. MRTP- Monopolies and Restrictive Trade Practices

vii
25. NAD- National Advertising Division of America

26. NAMES - National Advertisement Monitoring Service

27. NARB - National Advertising Review Board

28. NBC – National Broadcasting Company

29. OFT: Office of Fair Trading in the UK

30. TMA – Trademark Act

31. TRIPS- Trade Related Aspects of Intellectual Property Rights

32. TSS: Trading Standards Service

33. UK- United Kingdom

34. USA - United States of America

35. UTP- Unfair Trade Practices

viii
 LIST OF TABLES

TABLE NO. Page No.

Table No.1. The position taken on the issue of Comparative advertisement 141-146

Table No. 2. European Community (EC) suggestions to Harmonize Regulation 161

of Comparative Advertisement

ix
 TABLE OF CONTENTS

CERTIFICATE i
DECLARATION ii
ACKNOWLEDGEMENT iii
ABSTRACT v
ABBREVIATION vii
LIST OF TABLES ix

CHAPTER 1: INTRODUCTION 1-17

I. Advertising 1
II. Concept of Comparative Advertising 3
III. Product Disparagement 4
IV. Relation Between Comparative Advertisement, 4
Disparagement and Trademark Infringement
V. Research Problem 5
Lack of definition of comparative advertisement 5
Question of identifying role of advertisement under trademark 5
regime is not provided
Absence of protection of genuine competitors in comparative 6
advertising under trademark law
Insufficient cognizance by judiciary on comparative advertisement 7
VI. Hypothesis 7
VII. Objectives Of The Study 8
VIII. Scope Of Study 8
IX. Review Of Literature 9
X. Plan Of Study 14
XI. Research Methodology 16
XII. Limitation and Scope for Further Research 16
CHAPTER2: THEORETICAL AND STATUTORY FRAMEWORK OFCOMPARATIVE
ADVERTISING AND PRODUCT DISPARAGEMENT IN INDIA 18-61

I. Advertising: Meaning, Scope And Extent 18

Truthfulness in advertising 21
II. Comparative Advertising 22
Meaning of comparative advertising 23
Genesis of comparative advertising 26
Function of comparative advertising 27
Types of Comparative Advertising 28
Public Policy: advantages and disadvantages of comparative advertising 30
Significance of comparative advertising as a marketing practice 32
Interest involved in comparative advertisements 34
Interest of Competitors 35
Interest of Advertisers 35
Interest of Consumers 35
III. Comparative Advertising In India 36
IV. Comparative Advertising and its Relation to Unfair Trade Practices 38
Earlier Legislations: 38
The Monopolistic and Restrictive Trade Practices Act, 1969 38
The Competition Act, 2002 44
The Consumer Protection Act, 1986 48
V. Comparative Advertising in Relation to Constitution of India 49
VI. Comparative Advertising and Advertising Standard Council of India 53
History of ASCI 54
Object of ASCI 54
Organizational Structure of ASCI 55
Self Regulation and Advertising Agencies 56
Need of Self Regulation 56
ASCI’s Code for Self-Regulation and Comparative Advertising 57
Complaint Handling Procedure at ASCI 59
CHAPTER 3: A CRITICAL ANALYSIS OF TRADEMARK LAW ON COMPARATIVE
ADVERTISING AND PRODUCT DISPARGEMENT IN INDIA 62-103

I. Trademarks: General Overview 63

Concept of Trademark 63
Well-known Trademark and Trans Border Reputation 66
Reason for Legal Protection 66
Function of Trademarks 67
Characteristics of Trademark 69
II. Scheme Of Trademark Act,1999 70
Eligibility for filling and Registration 71
The marks that cannot be registered 71
Procedure for Registration 72
Infringement of Trademarks 74
Action for Passing-Off 77
Remedies Available 80
Civil Litigation 80
Criminal Litigation 81
Provisions under Custom Laws 82
III. A Detail Scrutiny of Trademark Law Provisions on Comparative Advertising 83
“Honest practices”- Escape Route for Comparative Advertising 85
Use should not be ‘detrimental to the distinctive character or to the repute’
or ‘take unfair advantage of the trade mark’ 87
IV. Concept of Disparagement 89
Regulation of Disparagement in India 90
False Claims 91
Deceptive Claims 92
Disparaging Claims 94
Trade Puffery or Disparagement 96
V. Disparagement under Trademark Law 99
Generic Disparagement 101
VI. Limits 102
CHAPTER 4: RECENT JUDICIAL TRENDS IN COMPARATIVE ADVERTISING AND
PRODUCT DISPARAGEMENT IN INDIA 104-147

I. Response Of Judiciary: From MRTP Act to Trademark Act 105

Pre- Trademark Era 105
Decision under Trademark Regime 117
Departure from Norms laid in previous cases 132
II. Analysis Based on the Provisions which were mostly Argued in the Cases 141
III. Legal Norms Still Not Settled 147

CHAPTER 5: INTERNATIONAL DIMENSION ON COMPARATIVE ADVERTISING AND

PRODUCT DISPARGEMENT: LAW IN UK AND USA 148-215

I. Law on Comparative Advertising in United Kingdom 148

Concept of Comparative Advertising under English Law 149

Regulation of Comparative Advertising in U.K 151
Self Regulation: CAP and ASA 152
CAP Code on Comparative Advertising 155
Control of Misleading Advertisements Regulations 156
Enforcement Authority 157
EU Directive on Comparative Advertising 158
The History of the Directive 160
Summary of the Directive’s Position on Comparative
Advertising:CAD 162
The Directive in Relation to Trade-marks law 163
Trademark Legislation-Use of Registered Trademarks
under the Trademark Act, 1994 164
The Effect of the Trade Marks Act 1994 166
Other Provisions 171
Sanctions Applied for Unlawful Comparative Advertising in English Law 177
The Enforcement Authorities in English law and Practice 177
Sanction applied to Unlawful Comparative Advertising 179
 Disciplinary Sanctions 179
Administrative Sanctions 179
Civil Sanctions 180
II. Law on Comparative Advertising in United States of America 181
Origin of Comparative Advertising 183
Regulation of Comparative Advertising 185
Self Regulation by Advertising and Broadcasting Agencies (NAD/ NARB) 186
Procedure Followed 188
Filing 188
Complaints Undertaken 188
Parties to the NAD Proceeding 189
The Objection Raised 189
Reply Filed by the Advertiser 190
The Contenders Reply 190
The Counter claim by Advertiser 191
Meetings with the NAD 191
The Verdict 192
Non- Compliance 192
Appeal to the NARB 192
Closing a Case 194
Self Regulation by Other Broadcasting Agencies 195
Action taken under Common Law 199
Defamation and Disparagement 200
The Uniform Deceptive Trade Practices Act, 1964 203
Federal Trade Commission (FTC) 205
Section 43(a) of the Lanham Trademark Act, 1946 208
Remedies Available 211
Injunction The most favored option of complainants 211
Damages: An Expansion of Relief 212

CHAPTER 6: COMPARATIVE ANALYSIS OF LAW ON COMPARATIVE

ADVERTISEMENT IN INDIA, UK AND USA 216-253

I. Meaning of Comparative Advertising 218

 II. Analysis of Law Regulating Comparative Advertising in USA, UK
and India 221
Legislative Background in the United States of America 221
Legislative Background in the United Kingdom 222
Legislative Background in India 223
III. Comparative Analysis of Judicial Approach to Comparative Advertising
in USA, UK and India 227
To what extent comparative advertising is permitted 227
At what point the utilization of comparative advertising would lead to
trademark infringement. 230
Analysis of several important terms related to the concept of
comparative advertising 235
IV. Analysis of Concept of Disparagement in USA, UK and India 244
Overview 244
Puffery Rule 249

CHAPTER 7: CONCLUSION 254-265

I. Findings 255
II. Suggestions 257

TABLE OF CASES 266-269

BIBLOGRAPHY 270-284
LIST OF PUBLICATIONS 285-307
 
 CHAPTER-1

INTRODUCTION
 CHAPTER -1
INTRODUCTION
Since time immemorial, man has had the desire to spread his thoughts, beliefs and the
fruits of his intellectual labour to distances beyond the boundaries of his vision. This desire of
reaching out to the largest number of people could be because of temporal or spiritual reasons
but it is no doubt imbedded in his nature. With human advancements development,
industrialization and mechanical improvement, this fantasy turned into a reality yet at the
same time a man's mission for acknowledgment and consideration continued increasing. This
desire of man is reflected in the realm of commercial transactions and advertising. Man has
dependably felt the need to advertise, it might be as a creator, an entertainer, a designer, a
pioneer or a business visionary, the fundamental expectation has dependably been to draw in
as many individuals as would be prudent towards his work, development or items. What's
more, publicizing has ended up being a vital instrument in this circle.1

Advertising
Advertising has become an omnipresent phenomenon. From the obscure road seller to
the multi-billionaire multinational partnership everybody is advertising their goods and
services. From drum pounding to YouTubing, promoting has without a doubt grown up.2 It
has turned into an impressive multibillion dollar business.3 A complex, entrancing, eye-
catching and overwhelming industry with a definitive reason for emerging amongst others in
public eye and profiting out of the same.4 Depicted as the life blood of free media, 5
it has
now turned into the life blood of rivalry in business sector.

In today's times, advertising is progressively felt in all zones and has turned into a
persuasive force working on aggregate mindset of general society and influencing
individuals' conduct. A definitive goal of promotion is to instigate the group of onlookers to

1
C.N.Sontakki ,'Advertising', Kalyani Publishers, New Delhi, p.490(2001)
2
For details on evolution of advertising from ancient to modern times see P.B Sawant & P.K. Bandhopadhyay,
Advertising Law and Ethics, 7-8, Universal Law Publishing Co. Ltd., New Delhi (2002).
3
Jeerome G. Lee, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71
Trademark Rep. 620 (1981). Source: http://heinonline.org
4
As Justice Mckenna in John W. Rast v. Van Deman & Lewis Company put it- “Advertising is merely
identification and description, apprising of quality and place. It has no other object than to draw attention to
the article to be sold and the acquisition of the article to be sold constitutes the only inducement to its
purchase." Quoted from Tata Press Ltd v Mahanagar Telephone Nigam Ltd & Ors AIR 1995 (SC) 2438.
5
Tata Press Ltd v Mahanagar Telephone Nigam Ltd & Ors AIR 1995 (SC) 2438.

1
purchase the products and services and to accomplish the said objective; business should be
appropriately arranged and planned.

As said by Philip Kotler6, “The objectives of advertising are to inform, persuade and
to remind the targeted audience about the advertiser’s product”. Every individual's
motivation to buy a thing or an organization is differing. It may depend not simply on the
quality and offer of the thing as it is manufactured by the creators, moreover, by its
packaging, market conditions and promotion support. Publicizing expect a basic part in
planning the customer choices. Advertisements add to a psychology in customers mind of
what is extraordinary and connecting with the eye as a consequence of which the purchaser
generally get pulled into the more advanced thing and neglect the less promoted one.
Advertisement creates brand and sustain it again and again. It intends to make brand
reliability amongst the customers of a particular brand.7

Traditionally, promoters tried to introduce their merchandise and services in the most
ideal light as could be expected under the circumstances, highlighting the benefits of their
products or services.8 On the other hand, the mid seventies of the most recent century,
introduced new era of publicizing wherein comparative advertising and commercials
identified the competitors products by name.9 This has created newer issues relating to unfair
competition, disparagement and trademark infringement also. When, in the course of
comparison, the advertisement goes beyond promoting his goods as better and denigrates the
competitors’ goods as worse, disparagement or tarnishing of the trademark can emerge where
the comparative advertising makes a negative relationship for the registered mark in the
process of promoting his own.

6
Philips Kotler is a world’s foremost expert on marketing. His statement was quoted by Mukesh Trehan &
Ranju Trehanin in their book ‘Advertising and Sales Management ‘, (2009-2010), V.K. (India) Enterprises, New
Delhi. p 39
7
For example, the strategy behind coke’s advertisement would be to inoculate a sense of loyalty amongst the
coke consumers and filling a sense of pride in their being the special ones. Similarly when Manikchand tobacco
came up with a punch line “oonche log, oonchi pasand” thereby “elite class, elite choice” thereby intending to
instill a sense of loyalty in a particular class of consumers consuming there product.
8
Stewert E. Sterk, “The Law of Comparative Advertising: How Much Worse is ‘Better’ Than ‘Great’,” 67
Trademark Rep. 368 (1977).
9
Suzanne B. Colnon, “Comparative Advertising: Whatever Happened to Brand X”, 67 Trademark Rep. 407
(1977). Source: http://heinonline.org.

2
Concept of Comparative Advertisement
Comparative advertising is advertising where one party advertises his goods or
services by comparing them with the goods and services of another party. Such other party is
usually his competitor and is often the market leader in that particular trade. The main
objective of such comparison is to ensure enhancement of sales of advertiser’s product.
Companies seek to resort to comparative advertising because it enables them to deflect
consumers attention with an immediate effect, deviating the attention of the consumers
towards the products of advertiser .Comparative advertising makes it possible for products of
rivals brands or products, whose brand name or product name has not been revealed in the
course of advertising, to be brought face to face with their merits compared by advertiser.

A situation of comparative advertising contemplates three protagonists: the advertiser,

the competitor subject to such comparative advertising and the consumers. Amongst all these,
the conflict between competitor and the advertiser is most significant. On one hand, it is the
advertiser who uses comparative advertising as a tool for effective appeal to the consumers of
its product and the competitor on the other hand, is concerned about the potential decrease in
the market share of its product equally with the protection of goodwill in the market. In such
a case the competitor will always have a negative interest in comparative advertising. In other
words, at the very least the competitor, subject to such comparative advertising, will try to
prevent the advertiser from making false and deceptive claims with regard to the compared
products. Every single reference to the name of the competitor while advertising enhances the
probability of the consumers to think that the advertisement is meant for the competitor.
When such advertising is carried out through television or print media, then it can have
sufficient impact on the minds of the watching consumers. It has been well established that
such advertisement will in turn be thought of to be for the products of the competitors and the
same can have disastrous effect if the majority of consumers start believing that it is the
product of the competitor which is being advertised.
Thus it can be seen that comparative advertising has various ill effect on the interest of
various stakeholders concerned i.e.
I. It will be harmful to the consumer in particular and society at large if it consists of
false, wrong and concocted information. It has also been seen that these
advertisements have made the consumer more skeptical about the claims made by a
company about their product being superior as the accurate information has not
always been provided. Consumer has an expectation of both fairness and balance and
3
 if not done carefully, these advertisements lead to more confusion and anxiety in his
mind.
II. It will become harmful to the rival competitors if it is accompanied with
disparagement as the goodwill of the brand owner could be harmed, which could
ultimately lead to chaos.

Product Disparagement
The Black’s Law Dictionary describes the word ‘disparage’ as meaning “to connect
unequally” or “to dishonor something or someone by comparison” or “to unjustly discredit
or detract from the reputation of another’s property, product or business” or a “false and
injurious statement that discredits or detracts from the reputation of another’s property,
product or business”.10 In the most recent couple of years, advertisers have turned out to be
all the more eager to contrast their items with that of their competitors and most of the time;
the contending item is unequivocally named. At the point when an advertiser takes part in
such making so as to publicize false articulations about his rival or his rival's items, he might
cross paths with the basic law representing disparagement.11

Relation between Comparative Advertisement, Disparagement and Trademark

Infringement
Comparative advertising in India is a recent phenomenon. There is no clear cut legislative
policy regarding the cases in which trader through comparative advertising projects true but
insignificant comparisons. The Trademark Act, 1999 and the Monopolies and Restrictive
Trade Practices Act, 1963(now stand repealed) have been read together to understand the
concept of comparative advertising. Though the Act does not refer to comparative advertising
as such, however provision do exist in the Trademark law under Section 29(8) and Section 30
(1). According to the statute, comparative advertising is permissible, with certain limitation
as to unfair trade practices. Unfair Trade Practices has been defined under section 36A of
MRTP Act which stands repealed now. According to Trademark Act, a tradesman is qualified
to announce his merchandise to be best on the planet, despite the fact that the assertion may
be untrue reason being that each individual has the privilege to trust that he is the best and his
item is likewise the best. With the end goal of proclaiming his goods similar to the best on the

10
Garner Bryan, A Black’s Law Dictionary, 7th edn (West Group, Minnesota) 1999.
11
Stewart E. Sterk, “The Law of Comparative Advertising: How Much Worse Is "Better" than "Great", pg.88
Columbia Law Review, Vol. 76, No. 1 (Jan., 1976).

4
planet he may be tempted to think about the benefits of his goods over the products of others.
On the other hand, while saying his products are superior to anything his rivals’ can one be
permitted to say that the contenders' products are bad? Does that not sum to
slandering/disparaging the products of his rivals? Another issue here is that whether a
vender's utilization of a competitor's trademark in advertising which compares the relative
characteristics of the competitive products would constitute trademark infringement? The
present research work concentrates on the idea of trademark infringement, comparative
advertising and when comparative advertising results into infringement of trademark. This
thesis has examined the current legitimate components in India to control disparagement in
comparative advertising and recent judicial pronouncements in India with some consideration
given to the law in UK and US. The researcher is of the perspective that more stringent and
powerful lawful decisions ought to be consolidated in the current Trade Mark Act, 1999 to
prevent the commercial disparaging in comparative advertising.

Research Problem
I. Lack of definition of comparative advertisement:
With the widespread use of comparative advertising came; many of the typical
advertising abuses have arisen. The most common types of abuses include: false claims,
where advertiser claims that his product does something which that other product fails to do;
product disparagement, where the advertiser unjustifiably attacks a competitor’s product; and
false representation, where the advertisement is misleading. The law needs to respond to
these abuses in number of ways and a mere judicial pronouncement will not be enough. A
broad framework would consolidate and codify law to ensure that critical issues such as when
comparative advertising can be allowed, when it will amount to product disparagement or
what remedies can be provided. A statute or specific provision would certainly have an
advantage over the judicial pronouncement as it reflects the will of the majority in the
democracy and will be able to provide a more settled law unlike the judicial pronouncement,
which the court can entirely regards or disregards as precedent.

II. Question of identifying role of advertisement under trademark regime is not

provided:
Trade mark laws generally pose two important function one being the primary function
which relates to identification of source and origin other being the secondary function to
indicate the quality, advertising and providing information to the potential user. As per the
5
traditional theory the law guarantees the owner, the exclusive right to use the mark for the
purpose of identification of his goods and services. This right is protected by the trade mark
law against the commercial use of the mark by others, if the use is in any way likely to
deceive the consumers or susceptible to cause confusion, it would amount to trademark
infringement. Trademark laws in general do not prohibit the non-confusing use of another's
trade mark. Now this poses an interesting situation when a competitor uses somebody else’s
trademark not with the intention of causing confusion as to the origin or source but still may
cause harm to the trademark owner. Use of rival company’s trademark in comparative
advertising is one such instance.

A comparative advertiser uses the trademarks of the compared product to identify product
quality and not product source and is seen in light of the traditional theory of protection of
trademark such use cannot violate the right of the trademark owner. However, considering
the secondary function of trademark as a tool of advertisement and promotion, it is interesting
to see whether the use of competitor’s trademark while comparing it with one’s own amounts
to trademark infringement or not.

III. Absence of protection of genuine competitors in comparative advertising under

trademark law:
The Trademark Act, which came into force on 15 Sept. 2003, does not supplement the
changing facets of comparative advertising jurisprudence. It only provides a rough
framework for comparative advertising in India.

1) The trademark law merely provides for circumstances under which the comparative
advertisement is allowed but fail to address many issues like what amount to comparative
advertising, when it would lead to product disparagement or what remedy is to be given
in case of product disparagement. This lack of understanding has made the law stagnant.
2) Another issue is that several important terms related to the concept of comparative
advertising such as disparagement, false claims and honest practices are not defined under
the present trademark regime and the dictionary meaning or judicial interpretation has to
be used to ascertain the meaning of these terms, this causes procedural obscurity in
understanding the problem.
3) The expression ‘in accordance with honest practices’ and ‘is not such as to be
detrimental to repute of the trademark’ as provided under Section 29 of Trademark Law
6
 appears to be intertwined; any comparison which causes detriment to the reputation of a
trademark owner, should be considered as dishonest. At the present, the problem is that
whether a particular advertisement is ‘honest or not ‘is greatly open ended question and it
is decided from the perspective of a reasonable consumer. Also, in order to decide the
question of disparagement it has to be seen that how many consumers would be
influenced by comparative advertising and would not purchase the competitor’s product.

IV. Insufficient cognizance by judiciary on comparative advertisement:

The general approach of the court has been to permit comparative advertisement so long
as such advertisement was not detrimental to and did not take unfair advantage of a registered
trademark. The provision on unfair trade practices, in course has moved from the MRTP Act
to the Consumer Protection Act, 1986, acquiring a new meaning. Within the Consumer
Protection Act, a manufacturer or trader cannot take up a case of an unfair Trade Practices
before the consumer forum. It can only be taken by the consumer association, central
government or the state governments. Thus, within the existing law, a manufacturer whose
product is disparaged has no locus standi to seek a remedy. The only option is to bring it to
the notice of a consumer association or represent to the central or state government. These are
only oblique routes of seeking justice. Even if a firm succeeds, in getting an advertisement
stopped through this route, as it is not the party to the case, it would not get any compensation
for loss or profit. Thus it shows that India has been resolving disputes regarding comparative
advertising only through its legal precedents, which too are handful in number. It has failed to
realize the urgency of specific provisions, which could tell what road, can be taken by the
advertisers and what has to be discarded by them.

Thus it has been seen that comparative advertising is considered crucial for development
of internal market and to enhance the consumer perceptions of the value of product.
Therefore, the present study is needed to find solution to mend the above- said queries with
the help of the trans-border laws and the judicial approach there at.

Hypothesis
I. The current legal system allows comparative advertisement but there is no specific
statutory provision to protect and promote the interests of all the stakeholders i.e.;
manufacturers, advertisers, competing parties and consumers.

7
 II. Absence of specific statutory provision on comparative advertising has led to
enormous trader’s unrest and the trademark law provides a limited protection with no
clarity of concept.
III. The judicial standards are not enough to answer the questions that arise in the dispute
relating to comparative advertising.
IV. Best practices addressing the issue of comparative advertising can be adopted
providing suitable solution to enhance the Indian legal system on the subject by
further understanding the system of comparative advertising in the national and
international context.

Objective of the Study

The study sets itself to achieve the following objectives in the above mentioned background:
I. To expound the concept of comparative advertisement, product disparagement in
light of the existing trademark regime in an attempt to promote law on
comparative advertising which will be acceptable and appropriate as per the
national and international standards.
II. To identify the challenges faced under Trademark Regime for effective dealing
with cases of comparative advertising.
III. To trace out the law governing comparative advertisement in USA and UK and
finally, a comparative analysis of laws in order to bring to light the ambiguity and
lack of comprehensive laws in India.

IV. To promote better understanding of system enabling the policy making and
legislative body to frame more suitable policies and laws through amendments,
modifications and new legislations.

Scope of Study
This thesis has addressed the concept of comparative advertising within the domain of
Trademark law in India. The research highlights certain grey areas on the said subject matter
and proposes some suggestions to counter these problems. It will illustrate the existing legal
mechanisms in India to control disparagement in comparative advertising and also recent
judicial decisions in India on the said topic of research. The present thesis also highlights the
1997 Directive of the European Council which determined the parameters of comparative

8
advertising and finally, a comparative analysis of laws of US and UK, thereby bringing to
light the ambiguity and lack of comprehensive laws in India.

Review of the Literature

There is a rich tapestry of academic and professional writing relevant to the topic of
evaluating the effectiveness of comparative advertisement. In particular, there is a
considerable body of academic writing concentrated on evaluating the effectiveness of
product disparagement and comparative advertising in context of trademark infringement.
But it is found that not much work has been done on domestic front in this area.
Here an attempt is made to review some of the available literature in this area that is listed
below:
Rodney Ryder in his book “Brand, Trademark and Advertising”12 has given an
overview of advertising law. Further it explains various legal options and approaches
available to protect brands. Similarly in the article “Definition Comparative Advertisement”13
author Peter Miskolczi explained the economic function, interest to be protected and wider
interpretation of the word comparative advertisement with special reference to the legislation
adopted by European Union on comparative advertisement. While Suzanne B. Conlon in her
article titled “Comparative Advertising: Whatever Happened to "brand X"14? examined in
detail all the legal aspects of comparative advertising and product disparagement. Jerome G.
Lee explained in depth the contested area where advertiser overlap i.e.; comparative
advertising, commercial disparagement and false advertising in his paper “Comparative
Advertising, Commercial Disparagement and False Advertising”.15

While recognizing that there is a rich tapestry of academic and professional writing
relevant to evaluating the effectiveness of comparative advertisement, it is significant in the
context of this thesis to note that most published legal writing describes, explains or interprets
the law and its administration like Rashi Saraf in her article “Overview of Comparative
advertising Law”16 given an overview of the concept of comparative advertising within the

12
Rodney Ryder, “Brand, Trademark and Advertising”, LexisNexis Butterworth, (2003)
13
Peter Miskolczi Bodnar, “Definition of Comparative Advertising”, European Integration Studies, Miskolc,
Volume 3. No.1. pp. 25-44 (2004)
14
Suzanne B. Conlon,” Comparative Advertising: Whatever Happened to "Brand X"? 67 Trademark Rep., 407
(1977).
15
Jeerome G. “Comparative Advertising, Commercial Disparagement and False Advertising”, 71 Trademark
Rep. 620 (1981).
16
Rashi Saraf, “Comparative Advertising Laws”, available at http://www.legalserviceindia.com/article/l182-
Comparative-Advertising-laws.html (Last visited on June 19th 2013).

9
domain of intellectual property rights. Kritika Bhardwaj in her article “Law on Trademark
Infringement in Comparative Advertisement”17 and Ayushi kiran in her article “Parody and
Comparative Advertisement”18 explained the concept of comparative advertisement in
relation to trademark law.

In India, comparative advertising is rampant, bleak and superficial. Rajat Mittal and
Aishwarya Singh in their article “Comparative Advertising: An Eye for an Eye Making the
Consumer Blind”19 throws light upon the legal structure of India with respect to comparative
advertising. Even Uphar Shukla in his article “Comparative Advertising and Product
disparagement Vis a Vis Trademark Law”20 analyzed the trite law on comparative
advertisement and product disparagement in relation with Trademark law. Similar efforts
were made by Priya Bansal in her article “Use of Trademark in Comparative Advertising:
Situation in India”21, Pradip Kumar in the article “Comparative Advertising and Trademark
Infringement- the Indian Scenario”22 and Apoora Sharma in her article, “Comparative
Advertisement and Infringement of Trademark: A perspective for consumers”23 focused on
the concept of trademark and definition, advantages and disadvantages of comparative
advertisement. This paper illustrates the existing legal mechanisms in India to control
disparaging in comparative advertising and also recent judicial decisions in India on the
same.

Comparative Advertisement like its genus (commercial advertising) is considered

double edged. It can be used as effective tools for consumer information and on other hand
mislead the consumer by projecting false, incomplete, distorted comparison. Farooq Ahmed

17
Kritika Bhardwaj, “Law on Trademark Infringement in Comparative Advertisements”, Karnataka Law
Journal 3(11) (2010).
18
Ayushi Kiran, “Parody and Comparative Advertisements”, Patent and Trademark Cases 38(9) pp13-16 (Sept
2008).
19
Rajat Mittal and Aishwarya Singh, "Comparative advertising: An eye for an eye making the consumer blind”,
Journal of Intellectual property rights, Vol.13, (January 2008).
20
Uphar Shukla, “Comparative Advertising and Product Disparagement vis-a-vis Trademark Law”, p.412,
Journal of Intellectual Property Rights, Vol II Nov. (2006).
21
Priya Bansal, “Use of Trademark in Comparative Advertising: Situation in India”, available at
http://www.legalserviceindia.com/articles/tadv.htm. (Last visited on June 19th 2013)
22
Pradip Kumar “Comparative Advertising And Trademark Infringement–The Indian Scenario” available at
http://www.legalserviceindia.com/article/l180-Advertising-And-Trademark-Infringement.html (Last visited on
June 19th 2013)
23
Apoorva Sharma, “Comparative Advertisement and Infringement of Trademarks: A perspective from
Consumers”, Available at http://ssrn.com/abstract=1896367. (Last visited on June 19th 2013)

10
in his article “Comparative advertising- Emerging issues”24 has put light on theses queries
relating to comparative advertisement wit help of the transborder laws and the judicial
approach there at. Akhileshwar Pathak in his research paper “Liberation and Law on
Comparative Advertising in India”25 has reviewed the law in India on representation which
has an element of comparison. With special emphasis to the unfair trade practices provision
as described under the MRTP Act. It can be seen that comparative advertising affects three
parties - the advertising company, the rival company or companies and the consumers.
Swaraj Paul and Shivaji Bhattacharya in their article “Comparative Advertising: Balancing
Consumer interest vis-à-vis IPR Infringement”26 have analyzed the balancing of interests of
the parties affected by comparative advertising and the extent to which this fine balance can
be stretched under the law. While William L. Wilkie and Paul W. Farris in their research
paper “Comparison Advertising: Problems and Potential”27 discuss comparative advertising
as a powerful marketing tool. In the article “Comparative Advertising: An Incentive or a
Jeopardy”28, author Puneet reveals that comparative advertising is a sword in the hands of the
people who use it. On one hand it can be used as an incentive to arouse curiosity towards the
product and persuade the consumers to buy it. On the other hand it can turn to be jeopardy if
not used carefully as one can be sued by competitors for unfair comparison.

Indian judiciary has been very vigilant in guarding in the interest of the consumers as
well as that of the corporations whose products are sought to denigrate. Sharad Vadhera in his
article “Comparative advertisement: Increasing incidents in India”29, Rajiv Kaushik in his
article “Comparative Advertisement and its status in India”30 has highlighted the problem
faced by manufacturer whose products are disparaged with help of certain decided landmark
cases. On other hand, Parth Gokhale and Shriyani Datta in the course of their article

24
Farooq Ahmed,” Comparative Advertising: Emerging issues” Cochin University Law Review 22, 340- 349
(Sept 1998).
25
Akhileshwar Pathak, “Legal response to Economic Liberalization: The Case of Unfair Trade Practices”,
Vikalpa, Vol.29, July-Sept 2004.
26
Swaraj Paul Barooah & Shivaji Bhattacharya, “Comparative Advertisement; Balancing Consumer interest vis-
a- vis IPR Infringement available at http://www.nalsar.ac.in/IJIPL (Last visited on Apr.12th 2013)
27
William Wilkie & Paul Farris, “"Comparison Advertising: Problems and Potentials" Journal of Marketing 39,
7-15 (Oct.).
28
Puneet Bafna and Dr.G.S. Rajpurohit, “Comparative Advertising: An Incentive or a Jeopardy”, Pg: 336-337,
Indian Journal of Applied Research, Vol.4, Issue.8, (August 2014).
29
Sharad Vadehra, “Comparative Advertising: Increasing Incidents in India”, Kan and Krishme Attorneys at
Law. available at http://www.lawgratis.com/2016/03/03/comparative-advertising-comparative-study-on-u-s-
and-india/ (Last visited on Apr.12th 2013)
30
Rajiv Kaushik, “Comparative Advertising and its Status in India”, International Journal of Computational
Engineering & Management, Vol. 15 Issue 3, (May 2012).
available at http://www.ijcem.org/papers052012/ijcem_052012_11.pdf. (Last visited on Apr.12th 2013)

11
“Comparative advertising in India: Evolving a Regulatory Framework”31 have examined the
multiple mechanisms developed to regulate comparative advertising, being both voluntary
and statutorily enforceable in nature. A comparison has been drawn with mechanisms that
have been adopted in other jurisdictions, with reference to the efforts as have been made in
seeking to balance the diverse interests involved.

Like the Indian law, jurisdictions in UK and U.S.A. allow comparative advertising,
since comparative advertising provides consumers with information about both parties'
products through a quick comparison, effectively results in lower prices, encourages
competition, and helps prevent monopolies. Ulf Bernitz “EC Directives on comparative
advertisement and its implementation in Nordic countries: Especially in relation to IPR”32
has discussed in detail situation in various part of Europe after the coming of the new
directions on comparative Advertising. Also the recent cases pertaining to European court of
justice on comparative advertisement as discussed by Patty Kamvounias in the conference
proceeding titled “Comparative Advertising and the Law: Recent Developments in the
European Union”33. While Theo Bodewig “The regulation of Comparative Advertising in
European Union”34 has directly dealt with the concept of comparative advertising and its
future prospects in European Union. Also Stephen Kapnoullas and Bruce Clarke in their
paper, “The Legal Regulation of Comparative Advertising Old Game, New Rules”35 explain
the changing facets of comparative advertising. Matthew Anthony describes the legal
dimensions involved in the use of comparative advertisement in his research paper titled”
Legal Aspects of Comparative Advertising and a Strategy for Its Use”36. A comparative
analysis is also done by Charlotte Romano in his paper “Comparative Advertising in the
United States and in France”37. Belinda Mills in her article “Comparative Advertising:

31
Parth Gokhale and Shriyani Datta, “Comparative Advertising in India: Evolving a regulatory framework”, 4
NUJS L. Rev. 131 (2011).
32
Ulf Bernitz, “The EC Directive on Comparative Advertising and its Implementation in the Nordic Countries:
Especially in Relation to Intellectual Property”, Stockholm Institute for Scandinavian Law, Vol.42, pp11-49
(2002).
33
Patty Kamvounias, “Comparative Advertising and the Law: Recent Developments in the European Union”.
European Applied Business Research (EABR) Conference proceedings-ISSN 1539-8757, Dublin, Ireland (June
7-10, 2010).
34
Theo Bodewig, “The Regulation of Comparative advertising in European Union”, 9 Tul. Eur. & Civ. L.F. 179
1994.
35
Stephen Kapnoullas, and Bruce Clarke, “The Legal Regulation of Comparative Advertising”, 11 Queensland
U. Tech. L.J. 7 (1995).
36
Mathew Anthony, “Legal Aspects of Comparative Advertising and a Strategy for Its Use”, 12 Queensland U.
Tech. L.J. 41 (1996).
37
Charlotte J. Romano, “Comparative Advertising in the United States and in France”, 25 Nw. J. Int'l L. & Bus.
371 (2004-2005).

12
Should it be allowed in United Kingdom”38 examined the legal developments in the United
Kingdom and looked at both from historical perspective and in the light of the recent
proposals of harmonizing directive from the European Commission.

Competition policy and legal practice are essential in making comparative advertising
(directly and indirectly) informative. Francisca Barigozzi in his paper “Comparative
Advertising and competition policy”39 provides an economic analysis of comparative
advertising discusses the ways comparative advertising can affect market outcomes.
Similarly, Steward E Sterk in his research paper “The law on Comparative Advertising: How
much worse is Better than Great”40 examined various types of action that can be used to
remedy comparative advertising abuses and analyzed the strength and weakness of these
actions. While BR Rutherford in his paper “Trademark and comparative
advertising”41discusses the approaches adopted in Europe and South Africa and their effects
on the lawfulness of comparative advertising.

Comparative analysis of laws on comparative Advertisement in India and other

countries has its own merit. Jung Ok Jeon and Sharon E Beatly in their paper “Comparative
Advertisement effectiveness in national culture”42 have tried to draw a comparative study to
compare the cross culture differences on effectiveness of various advertisements. It has been
seen that comparative advertisement has tremendous effect on attitude of consumer towards
various brands. Also Cynthia W. Sharp in her paper “The Intersection of Comparative
Advertising and Trademark Laws in the United States and the European Union”43 analysis of
the law as it prevails in the Europe and the USA by aid of legislation and judicial
pronouncements. Jochen Glöckner in his International Report titled “To what extent can
intellectual property rights (trademarks, patents, designs, copyrights, designations of origin)

38
Belinda Mills, “Comparative Advertising: Should it be allowed in UK”, 86 Trademark Rep. 174 (1996).
39
Francesca Barigozzi and Martin Peitz, “Comparative Advertising and Competition Policy” (August 2004).
International University in Germany Working Paper No. 19/2004. available at SSRN:
http://ssrn.com/abstract=699583. (Last visited on Apr.12th 2013)
40
Stewerk E. Sterk, “The Law of Comparative Advertising: How Much Worse is ‘Better’ Than ‘Great’,” 67
Trademark Rep. 368 (1977).
41
B.R Rutherford, “Trademarks and comparative advertising”, 43 Comp. & Int'l L.J. S. Afr. 173(2010).
42
Jeon, Ok Jung and Sharon E. Beatly, “Comparative Advertisement effectiveness in national culture”, Journal
of Business Research 55 pp 907– 913 (2002).
43
Cynthia W, Sharp, “The Intersection of Comparative Advertising and Trademark Laws in the United States
and the European Union”, Nordic Journal of Commercial Law, Issue 2012 (1).

13
limit comparative advertising?”44 has discussed in detail the theoretical basis of comparative
advertising and also the prevailing position and limits in UK, USA In the article
“Comparative Advertisement Lesson learned after deregulation in Germany”,45 authors
Carsten Rennbak and Zoltan Stefan Straaner have done empirical study to assess the effect of
comparative advertisement based on the model taking into account German legal framework
as well as the consumer decision while selecting various products.

After a thorough study of present text, it has been seen that the existing literature on
comparative advertisement divulge in a contrary conclusion. It is found that not much work
has been done in this area. Several studies have only been descriptive, explanatory or
interpretative in nature. They have explained and interpreted the term comparative
advertisement, but did not address the issue in a direct or comprehensive manner with special
reference to manufacturer. Hence the present Study.

Plan of Study
In the light of above problem, scope and objectives, the present thesis is divided into
following chapters:

CHAPTER 1- Introduction
This chapter begins with the research problem, hypothesis of the research study, scope
and methods employed and objective of the study. Later a brief chapter scheme of the
research study is discussed. Subsequently the concept of comparative advertising (include
meaning, origin, function, types, significance) is explained. The aim of this chapter is to
understand the interests (Competitor, Advertiser and consumer) involved in comparative
advertising and position in India.

CHAPTER 2-Theoretical and Statutory Framework of Comparative Advertising and

Disparagement in India

44
Jochen Glöckner, “To what extent can intellectual property rights (trademarks, patents, designs, copyrights,
designations of origin) limit comparative advertising?, International Report rendered to the International League
of Competition Law (LIDC) on the annual meeting 2010 in Bordeaux, final version Oct. 4, 2010, available at
https://www.wettbewerbszentrale.de/media/getlivedoc.aspx?id=30166. (Last visited on Apr.12th 2013)
45
Carsten Rennbak and Zoltan Stefan Straaner, “Comparative Advertising Lessons Learned after Deregulation in
Germany”, Munich Business School Working Paper, (2004), available at http://www.munich-business-
school.de/fileadmin/mbs/documents/working_papers/MBS-WP-2004-03.pdf (Last visited on Apr.12th 2013)

14
 This chapter discuss the existing legal mechanisms in India to control disparaging in
comparative advertising with special reference to ASCI code for self regulation in
advertising, MRTP Act, Trademark Act, Consumer Act, and Competition law. This part is
largely based on the views of academic authors.

CHAPTER-3 A Critical Analysis of Trademark Law on Comparative Advertising and

Product Disparagement in India
This chapter analyzes the underline debate between comparative advertisement and product
disparagement in the light of Sections 29(8) and 30(1) of the Trademark Act, 1999. It also
discuss the loopholes and dilemma faced after the annulment of MRTP Act with special
emphasis on provision of unfair trade practices.

CHAPTER-4 Recent Judicial Trend on Comparative Advertisement and Product

disparagement in India
The development of law on comparative advertising is a relatively a recent phenomenon in
India. The two fundamental facets of comparative advertising are puffery and denigration. An
attempt has been made towards the same by way of an analysis of certain recent case law on
the subject .This chapter has discussed in detail the judicial approach toward the said research
problem. Also the chapter covers both the Indian and foreign case law pertaining to the
research problem.

CHAPTER -5 International Dimensions on Comparative Advertising and Product

Disparagement: Law in UK and USA
This chapter consists of study of legal regime on comparative advertisements in one civil and
one common law jurisdiction, i.e., United States of America and United Kingdom. The thesis
also highlights the 1997 directive of the European Council which determined the parameters
of comparative advertising.

CHAPTER-6 Comparative Analysis of law on Comparative Advertisement in India, UK and

USA
This chapter focuses on the comparative analysis of Indian, US and UK law on comparative
advertisement. The purpose of comparison between Indian and US and UK law is to point out
the international trends and standard in connection with the control of this insidious practice.

15
CHAPTER-7 Conclusion
No study of a research subject can prove to be worthwhile without identifying the suggestions
and way forward to tackle with the limitations and challenges, the subject of research area is
surrounded with. The researcher in this chapter has provided summary of study. I have also
enlisted and elucidate purposeful and relevant suggestions which emerge out of the analysis
made in the preceding chapters to ensure meaningful and fair comparative advertising.

Research Methodology
The study was undertaken by the doctrinal method of research. The research was
undertaken with the aid of primary and secondary sources.

The primary sources include (a) the Constitution of India (b) the Trademark Act,
1999(c) judicial precedents and (d) Provisions under Advertising Standard Council of India
The secondary sources include (a) expert opinions (Academicians, Judges) on the issues of
relevance (b) Foreign judgments (c) the independent research as published in reputed
journals and scholarly books (d) commentaries on statutes.

In the process of writing this thesis, several methods such as description, synthesis,
analysis, interpretation and especially comparison were used. The descriptive and synthetic
methods were used to collect all materials on comparative advertising and to give the main
contents of the provisions on comparative advertising in Indian law. For the purpose of the
analysis I have primarily used customary legal method i.e. legal text, preparatory works, and
case law from the Indian Court of Justice and legal doctrine.

In addition, the comparative method was used that help us to find out the similarities
and differences in the laws related to comparative advertising and explain why these
differences or similarities exist. Finally, based on comparative method, the good legal rules of
comparative advertising can be implemented to Indian law.

Limitation and Scope for Further Research

The present study is limited to interpretation of the trademark law and existing
regulation on comparative advertising in India, U.K. and U.S.A. only. Comparative
advertising is attaining significance due to the competitive attitude of the contenders. In the
16
present study the focus is on the right and liabilities of the manufacturer, trader and
advertisers only. Though this thesis is useful for making policies for the protection of
consumers there is further scope to discuss and evaluate the concept of comparative
advertising from the consumer perspective that could be addressed keeping in mind various
yardsticks at national and international level.

17
 CHAPTER-2

THEORETICAL AND
STATUTORY FRAMEWORK
OF COMPARATIVE
ADVERTISING AND
PRODUCT DISPARAGEMENT
IN INDIA
 CHAPTER-2
THEORETICAL AND STATUTORY FRAMEWORK OF COMPARATIVE
ADVERTISING AND DISPARAGEMENT IN INDIA

In India, Comparative Advertising is uncontrolled, humorously, with absolute dismay;

one needs to acquiesce to the way that its laws are exceptionally grim and shallow in India. A
world class lawful framework is completely important to bolster an economy that expects to be
world class. India needs to investigate its commercial laws and system of dispensing justice in
the commercial matters. Legislative authorities, courts, regulatory organizations, analysts, and
consumer’s representatives frequently manage the same clear question: To what extent should
the comparative adverting be approved or constrained? The answer lies in the articulation of the
conflicting interest of the parties involved in comparative advertising; the advertiser, the
competitor and the consumer.

This chapter begin with the concept of advertising in general thereafter critically
examines the basic legal structure governing various aspects of comparative advertising and
disparagement in India.

Advertising: Meaning, Scope and Extent

Advertising is a business advancement of products, services, organizations and thoughts,
typically performed by a distinguished support, and performed through a variety of media.
Advertisers see publicizing as a component of a promotional strategy. Other components of the
promotional mix include publicity, public relations, personal selling, and sales promotion. Also,
advertisements are the representatives of their market image and makers which work for
promotion of the item simply like a salesman.1
The term advertising is derived from a Latin word ‘advertere’, which means to turn
attention towards a specific thing. The dictionary meaning of the word advertising is to declare

1
Avinash Gadhre, “Advertising – Its Evolution, Significance & Effects”, available at
http://www.legalservicesindia.com/article/article/advertising-534-1.html (Last visited on Apr. 20th 2013).

18
openly or to give open public notification. According to Advertising Standard Council of India
(ASCI),
“An advertisement is defined as a paid-for communication, addressed to the public or a
section of it, the purpose of which is to influence the opinions or behavior of those to
whom it is addressed.”
It is used for communicating business information to the current and potential customers.

The report of the European Commission's Committee on the environment, public health
and consumer protection defined advertising as follows:
"The process of persuasion, using the paid media, in which purchases of goods, services
or ideas are sought. Its primary aim is to convince the consumer to obtain the
advertiser's product/ service and/or his specific brand. Advertising is thus a commercial
message designed to influence consumer behaviour... The commercial involves both
information and promotion, always with the aim of enhancing the message which the
advertiser wishes to put across to the consumer in order to influence the latter in favour
of the particular /service. The objective information value of the commercial is thus
secondary, as the information is used solely if, and insofar as, it can act as a persuasive
element in the advertisement."

This quotation underlines that the presentation of objective data is an optional thought in
advertising. The essential inspiration is to persuade or motivate the buyer to purchase a specific
item and in general only data which helps him in accomplishing this goal is used in publicizing
an item. Promoting is subsequently portrayed by a selective use of facts presented with an
ulterior motive.2

Advertising is an extremely valuable movement which gives different advantages to

producers, customers, distributers, sales representative, society and economy. It is an important
means to impact the potential consumer.3 The fundamental reason and idea of advertising is to
permit the manufacturing firms to show the advantages of their products or services having a
specific trademark, consequently convincing the customers to purchase them. Publicizing
advances the items as well as help in making consciousness of the presence, properties and
particular components of the goods accessible in the business sector. Since a powerful

2
O.H Dean, “Intellectual property and Comparative Advertising”, 7 Stellenbosch L. Rev. 25 (1996).
3
Mukesh Trehan and Ranju Trehanin, “Advertising and Sales Managemen”t,43,(V.K. (India) Enterprises, New
Delhi 2009-2010).

19
publicizing impacts the decision of the customer, so it has turned into a key instrument in the
hands of organizations to make due in this competitive world.4

The origin of advertising lies thousands of years in the past. One of the first known
systems for advertising was an outdoor display, generally an eye- catching sign painted on the
wall of a building. Archaeologists have revealed numerous such signs, notably in the ruins of
ancient Rome and Pompeii. An outdoor advertisement excavated in Rome offers property for
rent, and one discovered painted on a wall in Pompeii calls the consideration of travellers to a bar
arranged in another tow. 5

Advertising in India goes back to the Indian civilization. Relics of Harappa, Mohenjodaro
demonstrates names on exquisite earthen, stone or metal works, which is comparable to the
present trademark framework. Paintings or writings on wall demonstrating slogans or stone
engravings show a type of advertising. The earliest forms of advertising were for the most part
utilized for religious purposes. Till the advent of British rule in India, advertising was not taken
for business purposes. At the time of British entry, India was in Village Economy stage where
the relations between the makers and purchasers were immediate. The local markets were weekly
and the makers showed their products by displaying and giving samples for promoting their
exchange. It is when British settlement that some changes have been found in our nation. But the
development of Indian advertising has been moderate in the pre-independence era period. The
pre independence advertisements were basically about women goods, gentlemen's garments,
travelling, restaurants, hotels and entertainments for the British individuals in India. Indeed, even
after freedom the Indian businessmen and commercial enterprises confronted limited competition
from inside and outside country.6 It was just in 1990's that India, in quest for globalization, set
out to open up its economy, removing controls and different hindrances which imagined
liberalization.

4
Puneet Bafna and Dr.G.S. Rajpurohit, “Comparative Advertising: An Incentive or a Jeopardy”, Pg: 336-337,
Indian Journal of Applied Research, Vol.4, Issue.8, (August 2014).
5
Henry Sarnpson, “History of Advertising”,1, Chatto & Windus, London, (1930)
6
Meenakshi R. Chauhan, “Advertising -The Social Ad. Challenge”, 29, (Anmole Publication Pvt. Ltd. New Delhi,
(1998)

20
 With this liberalization and globalization of the Indian economy, the circle of exchange,
industry and trade has expanded to a great extent. Geographical barriers to trade have been
removed. Different foreign multinational organizations are coming to build up their business.
Competition among the different products and services has become fierce and this sharp
competition has acted huge difficulties as well as dangers to India. Firms have been forcefully
and vigorously promoting their product and services than some time recently. Advertising world
is no more limited to signing big celebrities to endorse the product or to draw out the feelings
individuals connect with it. Today, the business is centered on building one brand's better claim
over the other; Advertising has turned into an omnipresent phenomenon.

Present day advertising has turned into a major creative force in business, a catalyst
which has extensive influence in managing the exclusive requirements of living enjoyed by this
country. In itself, it is appropriately viewed as a "major business" whose pervasive presence is
evident to anybody reading a newspaper or magazine, enjoying television or radio, or even
strolling along a street. The exceptional development of limited time coupled as of late has been
combined with expanding concern over the presence of false, misleading, or generally offensive
claims.7. So the organizations are not even hesitating to promote their products by adopting
comparative advertising. Through this measure they need to guarantee that the customer receives
the message that their product is superior and more sought after.

Then again, so as to get the consumer consideration towards its image and to hold their
market share various firms have begun taking bolder position by demonstrates their rival /
competitors product in a poor light and denigrating them. Thus, spates of litigations have been
witnessed in such manner in the last few decades.8

Truthfulness in advertising
Indeed, even today, some advertising is just and purposely untrue. As a rule, however, the
issue of truth in advertising is somewhat more subtle: it is not that advertising says what is

7
The Regulation of Advertising, Columbia Law Review, Vol. 56, No. 7,pp. 1018-1111, (Nov., 1956), available at
http://www.jstor.org/stable/1119629
8
Puneet Bafna and Dr.G.S. Rajpurohit, “Comparative Advertising: An Incentive or a Jeopardy”, 336, Indian
Journal of Applied Research, Vol.4, Issue.8, (August 2014) Also see Comparative ads to be curtailed: HC, The
Hindu, Business Line, Dec.15, 2005

21
clearly false, but rather that it can distort reality by implying things that are not so or withholding
important But rather it is a major rule that advertising may not purposely try to mislead, whether
it does that by what it says, by what it suggests, or by what it neglects to say. The best possible
activity of the right to information demands that the substance of what is conveyed be genuine
and, within the limit set by the justice. Is it reasonable to give TV/ newspaper /other media
advertisements on utilization of certain allopathic medicines which must deleterious reactions.
Some of the side effects like acute peptic perforation after “TAB SARIDON” abuse may be life
threatening. But unethical and illogical media presentation gives them a “panacea” image for that
symptom which is clearly not to be permitted at all by the Indian Medical Association.
According to Advertising Standard Council of India, its Consumer Complaints Council heard as
many as 32 complaints of false promises, double meaning, and racism, unethical and bias in
nature in advertisements of various companies.9

Comparative Advertising
Comparative advertisement has been defined as an advertisement that compares two or
more specifically named or recognizably brands of the same generic product or service class and
makes such a comparison in terms of one or more specific product or service attributes. This
comparatively narrow view has broadened over the years to include not only unambiguous
straight comparisons of product or service attributes but also comparisons that are implicit or
indirect and where competitors are not named.10

In this age of information overload when a new brand is born almost every day, more and
more companies are searching for ways to get the client's consideration by depicting their brand
as a shade superior as that of their competitor’s product. While some advertisers prefer to only
discuss about the superiority of their own brand in their advertising campaigns, others believe in
taking a more straightforward methodology of drawing comparisons with the market pioneer or
the competition brand, thus positioning their product offering as a shade better. The aim is to
trigger off a shift in the customer’s outlook, thereby converting them into loyal customers and

9
Khushi Sharma&Shaili Sharma, “The Era of Combative advertising in India”, Wisdom Voyage, Journal of
Management Experts, Vol.1, Issue 1, Pg.60-68, March 2011.
10
UK Essays. “Comparative Advertisement And Infringement Of Trademarks Marketing Essay”, November 2013.
available at: http://www.ukessays.com/essays/marketing/comparative-advertisement-and-infringement-of-
trademarks-marketing-essay.php?cref=1 (Last visited on July 29,2013).

22
increasing sales. This is the crux of Comparative Advertising. Throughout the years, comparative
advertising has become popular with many marketers and is truly gaining prominence across
almost all product genres. Comparative advertising, also commonly referred to as Combative
Advertising includes all those advertising campaigns that make utilization of direct, highly
blatant and often humorous advertisements created with the goal of establishing a direct
comparison between two competing brands of the same product range.

The guiding force behind such advertising is to extend the way that the advertiser’s brand
is much more superior and offers more value for money as compared to the other brand. A
comparative advertisement usually showcases the opposition brand in its advertisement to make
a direct comparison.11 The key to comparative advertising lies in the depiction of the rival good
in a discreet yet explicit fashion. For instance, the advertiser may utilize packaging, shape or a
colour scheme typical to a brand, while in the writing of the same, address it as an “ordinary”
product or use any other such non-consequential generic phrase. The accomplishment in such a
scheme lies in the reality as to how effectively a corporation conveys its superiority to its rival,
while not explaining the rival's identity. What is aimed at vide this mode of advertising is that an
honest and genuine comparison of the factors of one trader's products with those of another be
made, so as to make an impact upon the minds of the consumers, while not denigrating the rivals
being compared against.12

Meaning of comparative advertising

Legal literature is heavily focused to show and partly to analyze the requirements of
comparative advertising, its definition resembles a second range question.13 This topic generally
is absent from books and articles. In my opinion, it is important to determine the comparative
advertising firstly because only this sort of comparison can be regarded as lawful in certain
circumstances, secondly, because in this case legal requirements must be followed 14

11
Id. as above at 2
12
Manisha Singh Nair,” Comparative advertising in the Indian legal realm”, Entertainment Law Review, 2009.
13
Peter Miskolczi Bodnar, “Definition of Comparative Advertising”, European Integration Studies, Miskolc,
Volume 3. No.1. pp. 25-44 (2004)
14
Id. at 12.

23
Definition: Some sources agree that there is no general definition of the term comparative
advertising. Studies make use of different and individual definitions thus rendering difficult any
comparison of the results

The term comparative advertising refers to advertising where the product of one trader is
compared with the products of others. Dean15 describes comparative advertising as
“a practice whereby a trader in extolling the virtues of his wares in advertising draws
comparisons between his goods and the goods of another, which goods are usually well-
known and held in high regard by the consumer, with a view to stimulating the demand
for his own goods in preference to those with which the comparison is made”.

The European Directive concerning Misleading and Comparative Advertising16 defines

comparative advertising as
'any advertising which explicitly or by implication identifies a competitor or goods or
services offered by a competitor'.

On other hand FTC (Federal Trade Commission) of U.S.A defines Comparative Advertising as
“advertising that compares alternative brands on objectively measurable attributes or
price, and identifies the alternative brand by name, illustration or other distinctive
information”. 17

While Wilkie and Farris18 define comparative advertising as advertising that:

- compares two or more specifically named or recognizably presented brands of the same generic
product or service class, and
- makes such a comparison in terms of one or more specific Product or service attributes.

Their definition is restrictive in the sense that the advertisement must not only name a
competitive Brand, but must also compare certain product attributes of the advertised brand
against those of competitive Brand.

15
O.H Dean, “Intellectual property and Comparative Advertising”, 7 Stellenbosch L. Rev. 25,pg.173(1996)
16
Art. 2 of Directive 2006/114/EC. Also See B.R Rutherford, “Trademarks and comparative advertising”, 43 Comp.
& Int'l L.J. S. Afr. 173(2010).
17
Darrel D. Muehling and Norman Kangun, “The Multi-Dimensionality of Comparative Advertising: Implications
for the Federal Trade Commission”, Journal of Public Policy & Marketing, Vol. 4, pp. 112-128 (1985). available at
http://www.jstor.org/stable/30000078.
18
William Wilkie & Paul Farris, “"Comparison Advertising: Problems and Potentials" Journal of Marketing 39, 7-
15 (Oct.).

24
 Also, McDougall19 takes a broader perspective by incorporating advertising forms which
imply a competitive superiority on any dimension. Thus, as long as an implicit or explicit
comparison is made, the advertisement would qualify under McDougall's definition as a
comparison advertisement.

These definitions are planned broadly covering all types of near comparative advertising.
Comparisons might, for instance, be made by naming the products directly or by way for
deduction. At the point when services are referred to by the trade marks under which they are
sold, this type of comparative advertising is known as comparative brand advertising.20

Comparative advertising, in general terms, is a practice whereby a dealer in praising the

ethics of his products draws comparisons between his goods and the goods of another, which
goods are typically understood and held in high respect by the consumer, with a perspective to
stimulating the demand for his own goods in preference to those goods with which the
comparison is made. Generally, one who resorts to comparative advertising is attempting to "ride
on the back" of a surely understood and successful product and to utilize the repute of that
product as a platform from which to produce sales of his own product.21

Typically, comparative advertisements contain more or apparently more information than

“normal” advertisement that rely upon traditional salesman “puffery”, and that raises the
potential outcomes of advantage to the general society as well as the chances of misuse of the
same.22 Comparative advertising enables advertisers to objectively demonstrate the merits of
their products. It enhances the nature of information accessible to the consumers enabling them

19
H.G. McDougall," Comparative Advertising: Consumer Issues and Attitudes," in Contemporary Marketing
Thought, B.A. Greenberg and D. M. Belenger, eds. Chicago , Illinois: American Marketing Association, 286-
91.(1977)
20
Stephen Kapnoullas and Bruce Clarke, “The Legal Regulation of Comparative Advertising”, 11 Queensland U.
Tech. L.J. 7 1995.
21
O.H Dean, “Intellectual property and Comparative Advertising”, 7 Stellenbosch L. Rev. 25, pg.25, 1996.
22
Stewert E. Sterk, “The Law of Comparative Advertising: How Much Worse is ‘Better’ Than ‘Great’,” 67
Trademark Rep. 368 (1977). However, according to some authors, advertisements that indulge in disparaging the
goods of competitor’s product are more often than not tasteless, misleading, and essentially uninformative. See
Paul T. Hayden, “A Goodly Apple Rotten at the Heart: Commercial Disparagement in Comparative Advertising as
Common-Law Tortious Unfair Competition”, 76 Iowa L. Rev. 67(1990) for an elaborate discussion.

25
to make more informed decisions relating to the choices available to them as between competing
products/services by method for showing its benefits over different practically comparable
products. Based on this information, consumers may make informed and therefore efficient
choices.23 For example, if a seller has legally copied public domain features of his competitor's
goods, then he has the right to inform the public of this fact so that the people in general can
make a well informed choice between the two.24 In case, one has duplicated an unpatented
product sold under a trademark, he may utilize the trademark in his advertising to identify the
product he has copied, so long as it does not create a sensible probability that purchasers will be
confused as to the source, identity, or sponsorship of the advertiser's product.25

Genesis of comparative advertising

The history of Comparative Advertising goes back to the start of business itself. It has
dependably been typical for a trader to attempt to appreciate financial advantages by drawing a
comparison between the characteristics of his products/services and a competitor's.

Comparative advertising, additionally referred to as ‘knocking copy’, is a promoting

method where the message speaks the truth making comparisons about features, for example,
quality, price, delivery terms, services and others, of a company’s products when compared with
the results of the same type belonging to one/several competitors. In this way, companies seek
after in getting so as to get quick favourable circumstances, at any rate consideration of a buyer’s
percentage towards their brands.26

23
Péter Iskolczi-Bodnár, “Definition of Comparative Advertising”, European Integration Studies, Miskolc, Volume
3. (1) 25-44 (2004).
24
Stewert E. Sterk, “The Law of Comparative Advertising: How Much Worse is ‘Better’ Than ‘Great’,” 67
Trademark Rep. 368 (1977).The author here quotes Justice Holmes in Saxlehner v. Wagner, 216 U.S. 375, 54 L.
ed. 525, 30 S. Ct. 298 (1910) opining, “They have the right to tell the public what they are doing, and to get
whatever share they can in the popularity of the water by advertising that they are trying to make the same article,
and think that they succeed. If they do not convey, but, on the contrary, exclude, the notion that they are selling the
plaintiff's goods, it is a strong proposition that when the article has a well-known name, they have not the right to
explain by that name what they imitate. By doing so they are not trying to get the good will of the name, but the
good will of the goods.”
25
Louis Altman and Pollack Malla Callmann “ Unfair Competition, Trademarks and Monopolies” (4th Edition),
St.Paul. Minn, Thomson West (1981).
26
Meghna Singh, “Comparative Advertising Effectiveness with Legal and Cross Culture Framework”, International
Journal for Research in Management and Pharmacy, Vol. 3, Issue 3, Pg.54, April 2014.

26
 Comparative advertising is the brainchild of Federal Trade Commission, and the thought
was coined and developed during the 1970’s. Federal Trade Commission conceptualized
comparative advertising as advertising that differentiations substitute brands on impartially
quantifiable features or price, and making out the substitute product or brand through name,
design or other distinct information.27 Some time ago, especially in the context of the European
and American approach of comparative advertising was noticeably unusual and outlawed,
nevertheless currently competition authorities in the nations grant comparative advertising and
consider it as a crucial device in promoting competition.28

Prior to the 1970s, Comparative Advertising was regarded unfeasible due to related risks
such as misidentification of products, potential legal issue, Puffery or Disparagement. In 1972,
however, the Federal Trade Commission (FTC) of America began to encourage advertisers to
make comparison with named competitors, with the broad, public welfare objective of creating
more informative advertising. In India, the law on Comparative Advertising has created through
legal point of reference. During the late 1990s, any statement or otherwise which demeans or
disparages a competitor’s product was not permissible. This perspective was reliably maintained
by courts in many cases. However, in recent times the courts have held that companies should
not be too sensitive when it comes to Comparative Advertising. The refusal of an injunction to
Colgate29 appears to be a sign that courts recognize the maturing of economies and consumers.
This may simply be the start of a new jurisprudence requiring companies to show greater
tolerance to Comparative Advertising and a signal that market clashes should be battled in the
business sectors and not in a court of law.30

Function of comparative advertising

Comparative advertising enables advertisers to objectively demonstrate the benefits of
their products. Comparative advertising enhances the quality of information available to
consumers enabling them to make well-founded and more informed decisions relating to the
27
B.Wright and F.Morgan,“Comparative Advertising in the European Union and the United States: Legal and
Managerial Issues”, Journal of Euro marketing, 11(3), 7-31, 2002.
28
Rati Dhillon, “Scope of Comparative Advertising in India: a Review of Present Legal Framework”, Global
research Analysis, Vol.2 Issue 12, pg.23 Dec.2013.
29
Colgate Palmolive (India) Ltd. v. Anchor Health & Beauty Care Private Ltd, (2008) 7 MLJ 1119)
30
Meghna Singh, “Comparative Advertising Effectiveness with Legal and Cross Culture Framework”, International
Journal for Research in Management and Pharmacy, Vol. 3, Issue 3, Pg.56, April 2014.

27
choice between competing products or services by demonstrating the merits of various
comparable products. Taking into account this information, consumers may make informed and,
therefore, effective decisions.

Comparative advertising which aims to objectively and truthfully inform the consumer
promotes the transparency of the market. Market transparency is likewise considered to
advantage the public interest as the functioning of competition is improved resulting in keeping
down prices and improving products. Comparative advertising can stimulate competition
between suppliers of goods and services to the consumer's advantage. 31

Types of comparative advertisements

Comparative advertisement can be neutral or disparaging. A neutral advertisement may
express that the product being advertised is 'just as good' as the competing product and, in
addition, that the competing product is more expensive. A disparaging advertisement tends to
denigrate the competing product. Comparative advertisements fall into two principle
classifications: those which refer directly to the competing product or service and those which
refer indirectly. As the utilization of a contender's trademark in an advertising raises passing off
and trademark infringement issues, the class into which an advertising falls decides the way in
which the courts will see it.32

I. Direct Reference to Competing Product

In this common type of comparative advertisement, the name of the competitor's brand is
specified. For example, the Defendant's print advertisements in Compaq Computers v Dell
Computers33 used the Plaintiff's registered trade mark COMPAQ, stating that the computers and
related services of the Defendant and the Plaintiff had similar features but that the Defendant's
computers were significantly less expensive. On the other hand, if only the competitor's
corporate name (and not the brand name) is used in the advertisement, trade mark infringement
and passing off allegations can sometimes be avoided.

31
B.Jerry Gotlieb and Sarel Dan, “Comparative Advertising Effectiveness: The Role of Involvement and Source
Credibility”, Journal of Advertising, Vol. 20, No. 1 pp. 38-45 (1991).
32
Paul Tackaberry, “Comparative Advertising in Hong Kong: Denigration and Competition”, 5 Asia Pac. L. Rev. 68
1996-1997. Source: http://heinonline.org.
33
[1992] FSR 93

28
 II. Indirect Reference to Competing Product
There are various devices which may be utilized to avoid naming a competitor in a comparative
advertisement, thereby side-stepping the risk of trade mark infringement and passing off. In such
advertisements, the competitor may be referred to as 'Brand X' or 'the competition'. If the brand
leader is well-known, this strategy may be powerful in passing the desired message to
consumers.

While McDougall34 identifies three types of comparative advertisements which can be

classified as follows:
An advertisement may be compared to other brands either:
a. Directly - when competing brands are named.
Example: The Famous Pepsi vs. Coke advertisement where Pepsi highlighted its superiority
by saying that most people preferred the taste of Pepsi over coke in a blind taste test.

b. Indirectly - when competing brands are not named.

Example: Pepsodent in one of its advertisements said it is 102 % better than the leading
toothpaste, implicitly referring to Colgate
c. Generically - when competing products perform similar end uses but may differ
physically.
Advertising falling into the first two categories could be referred to the comparative
advertising. There are various ways in which a trader can undertake comparative advertising,
including
I. Referring to a competitor by name;
II. Referring to a competitor’s trade mark;
III. Not referring specifically to the competitor by name, but referring to ‘the leading brand’
where consumers will know what that leading brand is; or
IV. Stating which products are compatible with those of a competitor and issuing a table
listing the serial numbers of each party35

34
Id as Above

29
Public Policy: advantages and disadvantages of comparative advertising
Since Comparative advertising faces such a large number of legal and regulatory ties, the
question which arises is that why do as such numerous brands use comparative advertising for
promotion. This can be understood better by evaluating the advantages and disadvantages of
comparative advertising.

Firstly, the greatest favorable position of comparative advertising due to which it is

permitted by law is that it helps customers by keeping them informed about a product. It is an
vital source of information for customers and helps them in rational decision making. Likewise,
Comparative advertising is an extremely good way to differentiate ones brand from others in a
highly competitive market. Comparative advertising helps to highlight the main feature of your
product which may not be found in your competitors. It meets expectations amazingly well in
case the advertising brand is less known.

For example when Captain Cook entered the Indian market it highlighted its product
superiority over Tata salt (the biggest salt brand in India) by highlighting that it was a free
flowing salt. Similarly, when Samsung entered India its punch line said: ‘If you are not interested
in buying the world’s best TV, you can always but a Sony, Philips or Panasonic’. Since all the
other three brands are extremely popular in India, it created enough curiosity about Samsung.

Risk The following are the disadvantages and risks of comparative advertising-
From a public policy perspective, characterizing acceptable comparative advertising is
made more difficult by the fact that this advertising vehicle has both downsides and advantages.
While the pitfalls are admittedly significant, the disadvantages are exceeded by the points of
interest, most significantly, the expanded competition in the market place that outcomes from a
liberal comparative advertising policy.

The first drawback in a less restrictive comparative advertising policy is the temptation to
extend the reality. Comparative advertising is more vulnerable to the dissemination of

35
UK Essays. “Comparative Advertisement And Infringement Of Trademarks Marketing Essay”, November 2013.
available at: http://www.ukessays.com/essays/marketing/comparative-advertisement-and-infringement-of-
trademarks-marketing-essay.php?cref=1 (Last visited on July 29,2013).

30
misinformation given that it is one of the most immediate and 'hard-hitting' types of advertising.
However, most nations have laws in place that prohibit false or misleading advertising. Because
the application of these laws to comparative advertisements is substantially the same as with
other types of false or misleading advertisements, the laws of most jurisdictions are quite capable
of controlling the dissemination of false or misleading comparative advertisements. The
inclination to over-stress the relative qualities of the advertised product of service may partly
clarify the relative frequency with which the courts are asked to consider comparative
advertising disputes. However, the tendency to litigate such cases cannot, in itself, justify an
absolute prohibition of comparative advertising. Moreover, the disproportionately large amount
of litigation related to this type of advertising may be a result of inappropriately restrictive or
imprecise laws. Those concerned with business ethics may argue that comparative advertising is
offensive because it has a tendency to besmirch the reputation of the competing product or
service. While it is recognized that the most offensive sort of comparative advertising openly
denigrates a competitor's products or services, many advertisements effectively make
comparisons that are not specifically disparaging. It is possible to have a liberal comparative
advertising policy that nevertheless restricts the publication of disparaging statements. Perhaps
the most significant concern associated with comparative advertising is that it allows a
newcomer to 'take a free ride' on the reputation of the product leader. It is suggested that this is
just the essential's result advantage of comparative advertising, that it facilitates the entry into the
market of new products. All market economies have an interest in encouraging competition. As
stated in the third clause of the preamble to the proposed EC Directive on Misleading
Comparative Advertising'36 (the proposed EC Directive):
Given that consumers can and must make the best possible use of the internal market, the
use of comparative advertising must be authorised under certain very stringent
circumstances in all the Member States since this will help demonstrate the merits of the
various products within the relevant range whereas under such circumstances
comparative advertising can stimulate competition between suppliers of goods and
services to the consumer's advantage.

Considerable entry barriers exist in markets for luxurious products and markets that are
dominated by just a few manufacturers. If manufacturers of new products are permitted to inform
consumers that their products are analogous to those of existing well-established products, entry

36
Wilke and Ferris, “Comparison Advertising: Problems and Potential” 39 Journal of Marketing 7-15(1975).

31
barriers will be abridged and the dominant position of the market leaders can be effectively
challenged by beginners. The goal should be to represent a line between cheering competition
and securing the goodwill connected with competitors' trademarks.37

Many times unidentified or little known brands may utilize it by piggy riding on the
brand name of their better competitor and may achieve unfair advantage. The facts represented in
the advertisement may not be authentic, but till it is proved the advertising company would have
received adequate publicity. This is based on the conviction that no publicity is bad publicity.
Also, when two brands publicize against one another, it attaches to the consumer’s confusion and
the consumers lose poise in such brands. For example, during the recent comparative advertising
between Horlicks and Complan, both claimed that their product is predominant. Ultimately, it
was the consumer who began questioning the reality behind the claims made by such
advertisements.38

It has been pointed out that the basic function of advertising is to convince consumers to
buy the advertised product or service, not to offer consumers with information. Even if that row
is acknowledged, the scattering of information is, nonetheless, an elective and gainful target of
advertising. This is especially so with comparative advertising, which frequently contains more
information than unlike nature of advertising

Significance of comparative advertising as a marketing practice

Economic sciences generally relate to laws of the market that are universal by nature.
Yet, when it comes to the analysis of the effects of comparative advertising from a business or
marketing viewpoint, most publications remain amazingly common. One reason for this self-
restraint is quite self-evident. Comparative advertising as a real-world phenomenon can only be
inspected, where it happens. If jurisdictions plainly prohibit comparative advertising, there is no
object of examination. The second reason comes from the fact that comparative advertising,
possibly to a bigger degree than other marketing techniques, is culture related. Some societies are

37
Paul Tackaberry, “Comparative Advertising in Hong Kong: Denigration and Competition”, 5 Asia Pac. L. Rev. 68
Pg. 79,1996-1997.
38
UK Essays. “Comparative Advertisement And Infringement Of Trademarks Marketing Essay”, November 2013.
available at: http://www.ukessays.com/essays/marketing/comparative-advertisement-and-infringement-of-
trademarks-marketing-essay.php?cref=1 (Last visited on July 29,2013).

32
very used to wide range of rankings and comparisons, while in different societies market
participants fear that the negative effect on their public image caused by any comparative
advertising may exceed any beneficial outcomes of the comparison, because in the public
opinion comparing oneself may be connected with a absence of professional integrity or
credibility. The third reason is again related to the legal situation: Especially in jurisdictions, in
which comparative advertising takes place in a blurred zone of legality, market participants may
avoid comparative advertising for fear of litigation. As a consequence, we lack hard facts relating
to the economic impact of comparative advertising in a universal manner and lending themselves
to legal assessment.

Yet, there are some understood certainties that may clarify why comparative advertising
is just utilized as a part of shockingly few cases, even in legal environments where it is
traditionally permitted; addressees are utilized to that kind of marketing and legal compliance is
not much harder to assess than for different types of advertising. It is broadly accepted that
comparative advertising involves some beneficial outcomes. Comparative advertising arouses
higher attention of the consumers and gives rise to more interest. A fundamental impact relates to
the consumers’ learning of the product qualities. Comparative advertising is highly relevant to
consumers’ purchase intention.

On the other hand, comparative advertising has a negative effect on the credibility of the
market participant making utilization of it. Comparative advertising is perceived as less credible
and in many cases more forceful or unjustifiable than different method for advertising. The
confrontation of the consumers of the information contained in the comparative advertising with
their prior arrangement of information may also lead to a cognitive dissonance causing defence
mechanisms of the addressees such as the derogation of the source or counter-arguing in order to
restore the cognitive balance. At that point obviously, comparative advertising dangers attracting
attention to the competitor’s product and triggering advertising wars.39

39
Jochen Glöckner, “To what extent can intellectual property rights (trademarks, patents, designs, copyrights,
designations of origin) limit comparative advertising?, International Report rendered to the International League of
Competition Law (LIDC) on the annual meeting 2010 in Bordeaux, final version Oct. 4, 2010, available at
https://www.wettbewerbszentrale.de/media/getlivedoc.aspx?id=30166. (Last visited on July 29,2013)

33
 Presently the material issue that often arises is to what degree comparative advertising
may be limited. The answer lies in building up a clear understanding of the conflicting interests
of the various stakeholders involved, including the advertiser, the competitor and the consumer.

Interests Involved in Comparative Advertisements

Comparative advertising affects the interests of consumers as well as the interests of
competitors, interests of proprietary right holders and, in this way, those of the general public.
Possible harm of interests of consumers and interests of competitors is obvious, but40 most
significant is the conflict between the advertiser and the competitor. On the one hand, the
advertiser's objective is to inform the public about the qualities of his products or services in a
way that makes consumers more likely to buy them. He wants to be free to use comparative
advertising whenever it appears to be the most effective advertising strategy. On the other hand,
the competitor is concerned not only with decreasing the number of ways his rivals can describe
their products or attract consumer attention, but also with protecting his reputation and goodwill
as well as the fairness of commercial practices. He wants to impede his rivals from criticizing his
trademarks or goods, or from using them as a standard which they claim to also meet. The
competitor, therefore, has a clear interest in the prohibition of comparative advertising. At least,
he wants to be able to prevent his competitors from making false or misleading statements about
his offered products or services. For the sake of clarity, it must be noted that the competitor is
also sometimes the advertiser (and vice versa) and so each has a dual interest. When it comes to
comparative advertising, however, the established competitor, or the one with the strongest
market position, has a greater interest in the prohibition of this marketing tool as he is more
likely to be used as a benchmark by other producers in the market. Between those conflicting
interests stands the interest of the consumer who desires to be accurately informed about the
features of the goods or services available on the market. There is a close interdependent
relationship between the above particular interests.41 One must balance the legitimate interests of
the advertiser with the interests of competitor(s), consumers, and the public at large.

40
Péter Iskolczi-Bodnár, “Definition of Comparative Advertising” , European Integration Studies, Miskolc, Volume
3. (1) 25-44 (2004).
41
Charlotte J. Romano, “Comparative Advertising in the United States and in France”, 25 Nw. J. Int'l L. & Bus. 371
2004-2005.

34
 I. The Interests of the Advertisers:
The interests of the advertiser are primarily those of informing consumers about its products and
services, and persuading consumers to buy them. The advertiser is also interested in using the
most effective means of imparting this information. If comparative advertising should happen to
be the best method for the advertiser to compete with a competitor, then the advertiser will
directly compare its products and services with a competitor's and highlight the most positive
characteristics of its products. In addition to the interest in attracting customers, the advertiser
may also have a general interest in telling consumers and the public its own opinion about
matters the advertiser considers important. This latter interest takes the unfair competition
problems of comparative advertising into the arena of laws on the freedom of commercial
speech.

II. The Interests of the Competitors:

The competitor has a strong interest in "being left alone." A competitor may wish not to be
dragged into the public by his rivals, or to be used as a vehicle for his rivals' advertising either
negatively, by being criticized in an ad and serving as background to bring out the allegedly
superior properties of the advertiser's products, or positively, by having the good reputation of
his name or product and service used as a standard which the advertiser claims also to meet, but
at lower prices. The competitor also has an interest in having his products and services judged by
consumers on their own merits and their own merits alone. When the comparison by the
advertiser is directed to specific products or services, it will almost inevitably be biased. If the ad
concerns the personal properties of the competitor and not the characteristics of his products, in
almost all cases these personal references are, or should be, irrelevant to a rational buying
decision by the consumer. Personal references, therefore, hardly ever merit protection. If
comparative advertising cannot be prohibited, the competitor has, at a minimum, an interest in
assuring that the ads are at least true, that they are in no way misleading, and that they do not
disparage the competitor's reputation.

III. The Interest of Consumers and of the Public at Large:

The public and the consumers have an interest in being informed as completely as possible, in
order to enable consumers to fulfill their proper role in a market economy by making rational

35
buying decisions. Normally it does not matter to consumers who are providing this information,
as long as they can expect it to be true, comprehensive, and relevant and focused on objective
properties in a verifiable way. Consumer research, however, has established that ordinary people
are not normally equipped to make rational decisions when taking into account the evaluations of
more than seven properties of one product against properties of another product. Comparative
advertising involving irrelevant aspects of the products or services is, therefore, capable of
distorting the decisional process of the consumer and, consequently, may be against the public
interest. On the other hand, when properly done, comparative advertising can be a valuable (and
costless) source of information. It can be argued, therefore, that true comparative advertising will
often be in the interest of the consumer. This is especially so since other sources of information,
such as tests by consumer associations, are not always available and gathering information on
one's own may be too costly or even impossible. In such cases, a competitor may be in the best
position to judge the qualities and deficiencies of a certain product, provided that the competitor
can be induced to make the comparison in a truthful and non misleading way.

Thus the above description of the interests of advertisers, competitors, consumers, and
the public clearly shows that while there are many points of common interest, there is also a
potential for substantial conflict. A strict prohibition of all comparative advertising is not
justifiable; but unfettered freedom of comparative advertising is also seldom wholly in the
interest of all concerned parties.42

Comparative Advertising in India

For a developing country like India, the importance of advertisements in the promotion of
economy is immense. With the liberalization and globalization of the economy and with
increasing presence of MNC’s, firms in India have been indulging in aggressive and vigorous
promotion of their products and services. Comparative advertising has become a trend in Indian
advertising scenario as more and more companies are reverting to it. Pepsi-coke-sprite-mountain
dew, regaul-ujala, cherry blossom-kiwi, volini-moov, horlicks-boost, complan-horlicks, colgate-

42
Theo Bodewig, “The Regulation of Comparative advertising in European Union”, 9 Tul. Eur. & Civ. L.F. 179
1994.

36
anchor advertisements are certain examples of cut throat competitive comparative advertisements
and the recent Rin-Tide advertisement controversy is a case in point.43

The key legal areas of concern that can be identified in the context of comparative
advertising include statutory provisions in Competition Law, Trade-marks law and even
Constitutional law, and common law principles. The legal framework for potential areas of
conflict is a composition of several diverse mechanisms, whereby no statutory provision
explicitly governs comparative advertising in India which create a lacuna in the present system.

Among the different legal tools that are at hand to govern unlawful advertisements in
44
India is the statutes in the Monopolies and Restrictive Trade Practices Act (Repealed and
replaced by Competition Act, 2000) and the Trademarks Act45 that provide for the fundamental
structure. At the provincial level Consumer Protection Act46 stand as additional statute which
deems false, misleading, or deceptive consumer representation to be unfair business practices.
Finally, the Advertising Standard Council of India47 sets the criteria for acceptable advertising
and forms the basis upon which advertising is evaluated in response to consumer, trade, or
special interest group complaints.

One of the important constituent of comparative advertising is disparagement and to

appreciate and understand the said concept we need to get familiar with MRTP Act, 1984

43
Procter and Gamble Home Products Limited & Anr. v. Hindustan Unilever Limited C.S. No.43 of 2010 in the
High Court of Calcutta. This case is an example of blatant comparison with rivals product and denigrating the
same. The advertisement clearly uses the rivals’ product for the purpose of comparison and by using the punch line
of rivals’ ad campaign further mocks on it. At the stage of granting injunction, the High court completely
overlooked the aspect of trademark infringement and said that only issue on the basis of which the order has been
passed this day is disparagement.
44
The present work will emphasis on Section36 A (1) (x) of the Monopolies and Restrictive Trade Practices Act,
1984.
45
The Trademark Act, 1999
46
In this thesis, provincial legislation, the Consumer Protection Act, 1986 will not be observed in detail. The thesis
has as its exclusive goal to provide an overview of the present statutes and case law in India pertaining to protection
against the unfair trade practices.
47
Advertising Standards Council of India (ASCI) was formed on the lines of best practices in the field of self
regulation in advertising. Presently there are self regulatory organisations functioning effectively in about 70
countries including India.

37
Comparative Advertising and Its Relation to Unfair Trade Practices
Earlier Legislations:
The Monopolistic and Restrictive Trade Practices Act, 1969
The Monopolies and Restrictive Trade Practices (MRTP) Act started its life in
1969.48The act was a part of the wave towards economic liberalization. The preamble to this
enactment explained it to be
“An Act to provide that the operation of the economic system does not result in the
concentration of the economic power to the common detriment, for the control of
monopolies, for the prohibition of monopolistic and restrictive trade practices and for
matters connected therewith or incidental thereto”49.

One of the main goals of the MRTP Act is to encourage fair play and fair dealing in the
market, beside promoting healthy competition.50The regulatory provisions in the MRTP Act
apply to almost every area of business i.e.; production, distribution, pricing, investment,
purchasing, packaging, advertising, sales promotion, mergers, amalgamations and takeover of
undertakings. Major amendments were made to the MRTP Act in 1984; the thrust thereof is on
curbing Monopolistic, Restrictive and Unfair Trade Practices with a view to maintain
competition in the economy and safeguarding the interest of consumers by providing them
protection against false or misleading advertisements and/or deceptive trade practices.51 To
understand the working of the law on unfair trade practices, it is necessary to examine specific
provisions of the present Act.

Section 36 A of the Act lists unfair trade practices. This is the substantive ground on
which the Director General of Investigation and Registration (DGIR) could start investigation
and bring the matter before the MRTP Commission.It defines 'unfair trade practice' to mean

48
Now stand repealed and replaced by Competion Law,2000
49
As provided in the Statement of Objective and Reasons, Monopolistic and restrictive trade Practices Act,1969
50
See S. Chakraborty, “Why India Adopted new competition Law”, CUTS Centre for competition, Investment and
economic regulation, CUTS International, p 6-7 (2006).
51
Again Dr. Chakroborty in his paper, “MRTP Act metamorphoses into the Competition Act” addresses the
enactment and the change in MRTP Act in detail, available at http://www.cut.international.org/doc. (Last visited on
Apr 12th 2013)

38
 “a trade practice which, for the purpose of promoting the sale, use or supply of any
goods or for the provisions of any services, adopts any unfair method or unfair or
deceptive practice…”52

The present section has five parts which covers different themes defining unfair Trade
Practices. The provision that relates to comparative representation is contained in Section 36A
(1) (x).53 The object behind having this provision was to bring honesty and truth in relationship
between the seller and the consumer.54 Giving false or misleading facts disparaging the goods,
services or products of another person came under the purview of this section. Even statements
which disparage indirectly are covered by this section.

Prior to the amendment of 1991, it was necessary to prove loss or injury to the consumer,
this controversial requirement was done away with after the amendment.55 The MRTP Act
formed a body called the Director General of Investigation and Registration.56 On a complaint, or
on its own, the DGIR could investigate into a claim of a restrictive or unfair trade practice. The
MRTP creates a judicial body also called the Monopolies and Restrictive Trade Practices

52
Section 36A says that ‘unless the context otherwise requires "unfair trade practice" means a trade practice which,
for the purpose of promoting the sale, use or supply of any goods or for the provisions of any services, adopts any
unfair method or unfair or deceptive practice including any of the following practices, namely: - (1) the practice of
making any statement, whether orally or in writing or by visible representation which, -(i) falsely represents that the
goods are of a particular standard, quality, quantity, grade, composition, style or model; (ii)falsely represents that the
services are of a particular standard, quality or grade; (iii) falsely represents any re-built, second-hand, renovated,
reconditioned or old goods as new goods;(iv) represents that the goods or services have sponsorships, approval,
performance, characteristics, accessories, uses or benefits which such goods or services do not have; (v) represents
that the seller or the supplier has a sponsorship or approval or affiliation which such seller or supplier does not have;
(vi) makes a false or misleading representation concerning the need for, or the usefulness of, any goods or services;
(vii) gives to the public any warranty or guarantee of the performance, efficacy or length of life of a product or of
any goods that is not based on an adequate or proper test thereof;(viii) makes to the public a representation; (ix)
materially misleading the public concerning the price at which a product or like products or goods or services, have
been, or are, ordinarily sold or provided, and, for this purpose, a representation as to price shall be deemed to refer to
the price at which the product or goods or services has or have been sold by sellers or provided by suppliers
generally in the relevant market unless it is clearly specified to be the price at which the product has been sold or
services have been provided by the person by whom or on whose behalf the representation is made; (x) gives false
or misleading facts disparaging the goods, services or trade of another person.
53
Id as above.
54
There is an obligation on the part of the seller that if he advertises, he must speak the truth and this obligation
should not be restricted to just telling the truth but also to avoid half truths. See S M Dugur, “Law of Monopolistic
and Restrictive Trade Practices”, 385 Wadhwa &Nagpur (2000).
55
See Society for Civic Rights v. Colgate Palmolive (India) Ltd. (1991)2 Comp L J 372(MRTPC)
56
The Office of the Director General of Investigation and Registration has been established under Section 8 of the
Monopolies And Restrictive Trade Practices Act, 1969 (hereinafter referred to as ‘the Act’) for making
investigations for the purposes of this Act and for maintaining a Register of agreements subject to registration and
for performing such other functions as may be provided under the Act

39
Commission. The Director General of Investigation and Registration can take cases before the
benches of the Commission. The Commission, after evaluating the practice to be an unfair trade
practice, could order the aberrant party to cease and stop the practice.57 This is the substantive
ground on which the Director General of Investigation and Registration could start investigations
and bring the matter before the MRTP Commission. The Commission could discontinue an
unfair trade practice, if the practice is ‘prejudicial to the public interest or to the interest of any
consumer or consumers generally.58 The commission decided many cases related to unfair trade
practices in the realm of advertising before the repeal of the MRTP Act by the Competition Act
of 2002. The Commission was the authority to decide and provide for relief in case of
disparagement and unfair practices indulged in advertising by a competitor.

The Commission in course of deciding cases evolved certain standards as to what would
constitute unfair trade practice and amount to disparagement.

In Investwell Publishers (P) Ltd., Bombay59 the Commission interpreted the following
five necessary ingredients of unfair trade practice- a) there must be a “trade practice”; b) the
trade practice must be employed for the purpose of promoting the sale, use, supply of any goods
or the provision of any service; c) trade practice should fall within the ambit of one or more of
the categories enumerated in clause (1) to (5) of Section 36A; d) the trade practice should cause
loss or injury to the consumers of goods or services; e) the trade practice under clause (1) should
involve making a ‘statement’ whether orally or in writing or by visible representation.

57
Section 10 of the MRTP Act, 1969 empowers the MRTP commission to enquire into monopolistic or restrictive
trade practices upon the reference from the central government or upon its own knowledge or on the information.
For further details refer to Akhileshwar Pathak, “Legal response to Economic liberalization: The case of unfair trade
practices”, Vikalpa, Vol.29, No.3, p.61, July-Sept 2004.
58
Section 36D of MRTP Act. says that ‘The Commission may inquire into any unfair trade practice which may
come before it for inquiry and, if after such inquiry, it is of opinion that the practice is prejudicial to the public
interest, or to the interest of any consumer or consumers generally, it may, by order direct that -(a) the practice shall
be discontinued or shall not be repeated; (b) any agreement relating to such unfair trade practice shall be void or
shall stand modified in respect thereof in such manner as may be specified in the order; (c) any information,
statement or advertisement relating to such unfair trade practice shall be disclosed, issued or published, as the case
may be, in such manner as may be specified in the order.
59
UTP Enquiry no. 146/1987, order dated 05/10/1988 quoted from M. L Sachadeva & N. Ranganathasamy, “Unfair
Trade Practices: Cases & Materials”, Bahri Brothers, New Delhi (1992).

40
 In Ace Marketing Private Ltd.60, the Commission held that in order to attract customers,
providing comparative information does not offend the provision of the Act. In case there is no
deliberate or mischievous suppression of vital information in the advertisement causing loss or
injury to the consumers, the enquiry is liable to get discharged.

In M. Balasundram v. Jyothi Laboratories,61 a television advertisement promoting Ujala

Liquid Blue showed that 2-3 drops were adequate to bring striking whiteness of clothes while
several spoons of other brands were required though no label of any other brand was shown. A
lady holding a bottle of Ujala was looking down on another bottle and exclaiming chhi, chhi,
chhi! in disgust. The manufacturers of Regaul, a competing brand, approached the MRTP
Commission that the advertisement was disparaging its goods. The Commission was of the view
that a mere claim to superiority in the quality of one's product‟ by itself is not sufficient to attract
Section 36(1) (x) of MRTP Act. In the advertisement, the bottle did not carry any label. The
Commission elaborated the meaning of the provision: In order to bring home a charge under
clause (x) of Section 36A (1) it must be established that the disparagement is of the goods,
services or trade of another. ... the words "goods of another person" have a definite connotation.
It implies disparagement of the product of an identifiable manufacturer. Further, the bottle did
not have similarity with bottle of any brand. The Commission, thus, was of the opinion that it
could not be a case of disparagement of goods.

In re Guinea Mansion62, the Commission held that in order to sustain a charge under
clause (x) of Section 36A, it is essential to prove that false or misleading facts were intended to
disparage, denigrate or condemn the goods of any other person. Even if there is self praise in an
advertisement, it would not necessarily lead to disparagement of the goods of others.

60
(1987) Tax LR 1792 (30)(MRTPC) quoted from See S M Dugur, Law of Monopolistic and Restrictive Trade
Practices, 385 Wadhwa &Nagpur(2000).
61
1995 (82) CC 830.
62
UTP Enquiry no.451/1987 decided on 08/03/1988.

41
 The judgement of the Supreme Court in the Novino Batteries case63 has had an important
persuade on all cases raising questions about advertisements. The Supreme Court in the said case
also ruled:
“When a problem arises as to whether a particular act can be condemned as an unfair
trade practice or not, the key to the solution would be to examine whether it contains a
false statement and is misleading and further what is the effect of such a representation
made by the manufacturer on the common man? Does it lead a reasonable person in the
position of a buyer to a wrong conclusion? The issue cannot be resolved by merely
examining whether the representation is correct or incorrect in the literal sense. A
representation containing a statement apparently correct in the technical sense may have
the effect of misleading the buyer by using tricky language. Similarly, a statement, which
may be inaccurate in the technical literal sense can convey the truth and sometimes more
effectively too than a literally correct statement. It is, therefore, necessary to examine
whether the representation complained of contains the element of misleading the buyer.
Does a reasonable man, on reading the advertisement, form a belief different from what
the truth is? The position will have to be viewed objectively and in an impersonal
manner.”64

The principle thus emerged that a case of disparagement arises only if the product in
question is identifiable. Identification could be explicit or from the facts and circumstances.
Thus, in the advertisement of 'Kiwi Liquid Wax Polish', a bottle is described as X from which
liquid is dripping while from a bottle marked Kiwi liquid does not drip. From the shape of the
bottle marked X, it could be identified as that of Cherry Blossom. Also, Cherry Blossom had a
design registration for the shape of the bottle. Thus, the bottle could be identified with Cherry
Blossom and the advertisement became a case of disparagement65.

In the case of Colgate Palmolive Ltd. v. Hindustan Lever Ltd.66, Hindustan Lever Limited
advertised its toothpaste, ‘New Pepsodent’ in print, visual and hoarding media, claiming that its
toothpaste 'New Pepsodent' was ‘102% better than the leading toothpaste’. In the television

63
Lakhanpal National Limited v. M.R.T.P. Commission, Judgement of the Supreme Court, dated 02/05/1989.
Citation: 1989 AIR (SC) 1692.
64
Lakhanpal Industries Ltd. had partnership with Mitsubishi Corporation of Japan for manufacturing Novino
Batteries. Mitsubishi Corporation was the owner of the well- known trade name, National Panasonic. Lakhanpal
Industries, in its advertisements, was claiming that Novino batteries were made in collaboration with National
Panasonic. This was technically incorrect as National Panasonic was only a trade name. Lakhanpal Industries could
not have collaborated with a trade name. The court, following this, held that even though, literally, the
representation made by Lakhanpal Industries was inaccurate, it could not be held to be an unfair trade practice.
65
Reviewed in Reckitt and Coleman India Limited v Jyothi Laboratories Limited, a judgement of the MRTP
Commission, dated, 18/11/1998. Citation: 1999 (34) CLA 46.
66
1998 (92)CC54

42
advertisement, samples of saliva are taken for testing from two boys, hours after brushing .One
boy has brushed with the New Pepsodent while another has brushed, according to the
commentary, ‘with a leading toothpaste’. The tests of the two samples are visually depicted side
by side. The saliva of ‘the leading toothpaste’ shows large number of germs. While the slide of
the New Pepsodent shows negligible quantity of germs. While the sample was being taken from
the boys, they were asked the name of the toothpaste with which they had brushed in the
morning. One boy had said Pepsodent. The response of the second boy was muffled. However,
lip movement of the boy would indicate that he was saying ‘Colgate’. Also, when the muting
was done, there was a sound of the jingle used in the Colgate advertisement. The Commission,
thus, was of the view that Colgate has been in the business of manufacturing and selling
toothpaste in India for more than 50 years. Further, the word toothpaste has become synonymous
with Colgate over the years. The Commission in addition noted that the jingle in the background
was a familiar one. The comparative manufactured goods in the television commercials could,
therefore, be identified as Colgate dental cream. Thus, it became a case of comparative
advertisement and a claim could be made of disparagement of Colgate’s products.

It was seen that in certain unfair trade practices cases the methodology of the
Commission has been to allow hyperbole and exceptional claims in the course of comparative
advertisement and that will not amount to disparagement. And all the instances of denigration of
comparative advertising have to be inspected and assessed taking into account three imperative
parameters i.e.:
I. Whether the commercial contains a false proclamation which could bring about affecting
and inciting or prompting the consumer to buy or use the goods and products.
II. Whether the commercial is deceiving
III. Finally, the impact of such delineation on the consumer or common man.

The MRTP Act in its ultimate truncated shape was dealing with only three aspects of the
market, namely, monopolistic, restrictive and unfair trade practices. All these aspects are crucial
for operation in the markets for assuring fair prices and promised standards and quality of goods
and services for protection of consumers. These things are the real concern of the consumers. All

43
these aspects are fully reflected by the packed-up four sections67 of the Competition Law68. The
experience in administering the MRTP Act, for about three decades since 1969, the deficiencies
noted in the said Act, the difficulties that arose out of different interpretations and judgments of
the MRTP Commission and the superior Courts of Law and the new and changing economic
milieu spurred by the LPG paradigm and the economic reforms of 1991 (and thereafter) impelled
the need for a new Competition Law. The need for a new law has its origin in Finance
Minister’s budget speech in February, 1999:
“The MRTP Act has become obsolete in certain areas in the light of international
economic developments relating to competition laws. We need to shift our focus from
curbing monopolies to promoting competition. The Government has decided to appoint a
committee to examine this range of issues and propose a modern competition law
suitable for our conditions.”

Hence the act now stands repealed but its provision still continue to persuade the court of law.

Analysis
From the perspective of the present research, it is seen, that primarily, matters identified
with untrue and misleading advertising were arbitrated upon by the Monopolies and Restrictive
Trade Practices (‘MRTP’) Commission, constituted under the Monopolies and Restrictive Trade
Practices Act, 1969 (‘MRTP Act’) under Section 36A (1)(x). According to this provision for an
advertising to be denounced as "slandering", it was critical that it met two criteria: First, the
contending product ought to be recognized in the advertisement, either specifically or certainly.
If the compared brand is just appeared as "brand X" or "contending brand", bearing no closeness
with a specific brand, it may not qualify as disparagement. Second, the claims made in the
commercial ought to be false or deluding. Nonetheless, the MRTP Act was later repealed by
virtue of Section 66 of the Competition Act, 2002.

The Competition Act, 2002

In this era of globalized and liberalized economy, India is facing ruthless competition
from within and outside the realm.69 As a consequence India has reacted by opening up its

67
See Section3 to 6 of Competition Law,2000
68
Avtar Singh, “Competition Law”; Eastern Book Company, 1st Ed.2012, Preface page.
69
Akhileshwar Pathak, “Legal response to Economic Liberalization: The Case of Unfair Trade Practices”, Vikalpa,
Vol.29, pp .61, July-Sept 2004.

44
market and passing the new competition law70which shall substitute the earlier law71. The then
Finance Minister P.Chidambaram also highlighted the need to have strong legal system and said
“A world class legal system is absolutely essential to support an economy that aims to be
world class. India needs to take hard look at its commercial laws and system of
dispensing justice in commercial matters”.72

The modern competition law seeks to protect the process of free market competition in
order to ensure efficient allocation of economic resources. It is commonly believed that
competition law is ultimately concerned with the interest of the consumers.73 Competition Law
for India was triggered by Articles 38 and 39 of the Constitution of India. These Articles are a
part of the Directive Principles of State Policy. 74 In line with the Antitrust legislation being an
integral part of the economic life in many countries, the first Indian Competition Law was
enacted in 1969 i.e.; Monopolies and the Restrictive Trade Practices Act, 1969 (MRTP Act).
This retiring law is regarded as the competition law of India, because it describes a restrictive
trade practice which has, or may have the effect of avoiding, distorting or restricting competition
in any manner. But the MRTP Act, in contrast with competition laws of many countries, is
insufficient for nurturing competition.75

Major amendments were effected to the MRTP Act in 1991.76 The experience in
administering the MRTP Act, for about three decades since 1969, the paucity seen in the said

70
Indian Competition Act,2002
71
Monopolies and Restrictive Trade Practices Act, 1969
72
P. Chidambaram “Law and Commerce: And the twain shall Meet”, Sunday Express, Ahmadabad, 26 Oct 2003.
73
Sanchit Agarwal, “Competition Law and Protection of Consumer Interest”, Research paper submitted to
Competition Commission of India on 11th Aug.2011, available at
http://cci.gov.in/images/media/ResearchReports/SanchitInt260811.pdf (Last visited on Apr.12th 2013)
74
The Constitution of India provides for the Directive Principles of State Policy and Articles 38 and 39 of the
Constitution mandate upon States to secure a social order for the promotion and welfare of the people. This
provision recognized the need to eliminate and minimize the inequalities in income, which applied not only to the
individuals but also to the groups in different areas. Article 39(c) of the Constitution provides that the States shall
strive to secure that the operation of the economic system does not result in the concentration of wealth and means
of production to the common detriment
75
Dr. S Chakravarthy, “MRTP Act Metamorphoses into Competition Act”, available at www.cuts
international.org/doc01.doc(Last visited on Apr.12th 2013)
76
With the restructuring of the MRTP Act through the 1991 amendments, the thrust thereof is on curbing
Monopolistic, Restrictive and Unfair Trade Practices with a view to preserving competition in the economy and
safeguarding the interest of consumers by providing them protection against false or misleading advertisements
and/or deceptive trade practices. Size as a factor, to discourage concentration of economic power, has been, in a
manner of speaking, given up.

45
Act, the difficulties that occurred out of diverse interpretations and decisions of the MRTP
Commission and the superior Courts of Law and the economic reforms of 1991 and thereafter
prompted the need for a new competition law.77

In October, 1999, the Government of India appointed a High Level Committee78 on

Competition Policy and Competition Law (Raghavan Committee)79 to recommend a modern
competition law for the country in contour with international progress and to propose a
legislative structure which may involve a new ruling or appropriate amendments to the MRTP
Act. After some alterations, following extensive discussion and negotiations with all interested
parties, the Parliament passed in December 2002 the new law, namely, the Competition Act,
2002.80
The Competition Act, 2002, provide for the establishment of Competition Commission of
India (CCI) and takeover the regulatory authority from the MRTP Commission81 Along with a
number of other amendments to the Act made by the Competition (Amendment) Act, 2007, the
date of initiation of which was October 12, 2007, a new Section 66 was replaced by the original
section 66. According to the new amended Section 66, the central issue is that the Monopolies
and Restrictive Trade Practices Act, 1969 has been repealed and the Monopolies and Restrictive
Trade Practices Commission established under Section 5(1) of the said Act (hereinafter referred
to as the repealed Act) shall stand dissolved. Nevertheless, under said section the MRTP
Commission is allowed to continue to exercise jurisdiction and control under the MRTP Act for
a period of two years from the date of the commencement of the Competition (Amendment) Act
of 2007, which means two years from the notification of Section 66 as being brought into force.
77
Vijay Kumar Singh, “Competition Law and Policy in India: the journey in a Decade”, 4 N.U.J.S. L.Rev.523 pp.
537 (2011).
78
Order no. 1/9/99-CL-V of 25th October 1999 issued by the department of Company affairs. The Nine member
High level committee submitted its report in two volumes.
79
Mr.S.V.S Raghavan, a retired senior officer of Central Govt preside the committee. (It is popularly called the
Raghavan Committee). The Present committee observed that the repealed MRTP Act was limited in sweep and
failed to fulfill the need of competition law in present scenario.
80
It was held in the case of Competition Commission of India vs. Steel Authority of India & Anr. on 9 September,
2010 that “as per the statement of objects and reasons, this enactment is India's response to the opening up of its
economy, removing controls and resorting to liberalization. The natural corollary of this is that the Indian market
should be geared to face competition from within the country and outside. The Bill sought to ensure
fair competition in India by prohibiting trade practices which cause appreciable adverse effect on the competition in
market within India” available at http://indiankanoon.org/doc/864375/. (Last visited on Apr.13th 2013)
81
As stated under Section 66 of the Competition Act,” The Monopolies and Restrictive Trade Practices Act, 1969
(54 of 1969 ) is hereby repealed and the Monopolies and Restrictive Trade Practices Commission established under
sub- section (1) of section 5 of the said Act (hereinafter referred to as the repealed Act) shall stand dissolved

46
But the MRTP Commission cannot decide or adjudicate any case or proceeding ensues under the
MRTP Act on or after the said commencement. The present Section 66 also provides for the
vacancies of the offices of the Chairman and Members of the Commission and the officers of the
Commission on its conclusion and for settlement of conditions of service of those functioning in
the MRTP Commission.82 The clause also provides for saving any right that may have accrued
and for continuance of any liability that may have been incurred under the repealed Act.83

It also elucidate that on suspension of the MRTP Commission, the cases and other
matters pending either before the MRTP Commission or the Director General of Investigation
84
and Registration will be reassigned to only three authorities i.e. (i) Competition Appellate
Tribunal, (ii) Competition Commission of India and (iii) the National Commission comprised
under the Consumer Protection Act, 1986.

Similarly Mr. Justice Balakrishnan gave a statement in the inaugural speech of the
Competition Appellate Tribunal (CAT) that,
“Matters that are presently being investigated by the MRTPC will soon be transferred to
the CCI. From now on disputes related to the Commission’s findings about Unfair Trade
Practices, Restrictive Trade Practices and Monopolistic Trade Practices will be heard by
the CAT.” Disputes related to disparaging advertisements would be transferred to the
National Consumer Disputes Redressal Commission. “The CAT is expected to act as an
independent forum which exercises oversight over the regulator’s decisions.”85

Further The Competition Commission was of the view that the Competition Act should not be
burdened with unfair trade practices. This was instead, to be given effect under the Consumer
Protection Act, 1986.86 It is considered that if Unfair Trade Practices are put into Competition
Act then they would augment the load on the Competition Commission and would deflect the
commission from its main purpose. The Commission is designed to develop and encourage
competition in the market and it is supposed that addition of unfair trade practices in the

82
Also see Section 66(2) of Competition Act 2000
83
T. Ramappa, “Repeal of the MRTP Act, 1969: Reducing the Twilight Period”, available at
www.lawyersclubindia.com/articles/print_this_page.asp?article_id=1409 2/5.(Last visited on Apr.13th 2013)
84
Also see section 66 (3) and (8) of the Competition Act, 2000.
85
See The Hindu: “tribunal Inaugurated”, October 20, 2009 http://www.thehindu.com/todays-paper/tp-
national/tribunal-inaugurated/article165259.ece (Last visited on Apr.13th 2013)
86
Report of High Level Committee on Competition Policy and Law, May 2000, available at www.nic.in/dca/comp.
(Last visited on Apr.13th 2013)

47
Competition Act will distract its proficiency or resources towards unfair trade practices while
anti-competitive issues will take a backseat. Besides as far as unfair trade practices viz a viz
business transactions are concerned; they are covered under the domain of Competition Act,
2002 if they harm competition in the market. Thus it is argued that there is no need of inclusion
of unfair trade practices in Competition Law.87

Analysis
The MRTP Act was repealed following the introduction of the Competition Act 2002, yet
the investigation of cases chose under the old act illustrates the first guidelines regulating
comparative advertising. The attention was essentially on the security of buyers as opposed to
the utilization of the infringed trademark. In view of the facts a consumer required assurance not
just from being supplied with faulty good and deficient service, but also unfair trade practices.
The provisions on unfair trade practices were replaced from the MRTP Act into the Consumer
Protection Act. In the setting of present research, one of the primary reasons of disparagement of
goods and services is the concept of unfair trade practices.

The Consumer Protection Act, 1986

The Consumer Protection Act 1986 is a social welfare legislation which was enacted as a
result of widespread consumer protection movement.88 The main object of the legislature in the
enactment of this act is to provide for the better protection of the interests of the consumer and to
make provisions for establishment of consumer councils and other authorities for settlement of
consumer disputes and matter therewith connected. 89 The present Act creates three tiered quasi-
judicial bodies, District Forum, State Forum and National Forum, through which a consumer can
seek remedy.90 While the consumer forums have adjudicated large number of cases on ‘defect in
good’ or ‘deficiency in service’, the provisions on unfair trade practices have almost never been
taken before the Consumer forums. These cases and investigations were taken by the MRTP
Commission.
87
Sanchit Agarwal, “Competition Law and Protection of Consumer Interest”, Research paper submitted to
Competition Commission of India on 11th Pg.54Aug.2011, available at
http://cci.gov.in/images/media/ResearchReports/SanchitInt260811.pdf. (Last visited on Apr.13th 2013)
88
“Consumer Rights”, available at onhttp://www.business.gov.in (Last visited on 8th March, 2013).
89
As provided under the Statement and Objective clause under consumer Protection Act, 1986.
90
Shubhangi Goel, “Protecting Consumer Interests under Competition Law”, available at http://www.cci.gov.in,
(Last visited on 24th January, 2013).

48
 The provisions on Unfair Trade Practices, in the way of being imitated from the MRTP
Act into the arrangement of the Consumer Protection Act, have obtained a new meaning91.
Within the Consumer Protection Act, a ‘consumer’92 cannot take up a case of an Unfair Trade
Practice before a consumer forum. It can only be taken up by a consumer association, Central
Government or the State Governments. Thus, within the existing law, a manufacturer whose
product is disparaged has no locus standi to seek a remedy. The only choice available is to bring
it to the notice of a consumer association or represent to the Central or State Government. These
are merely slanting course of seeking justice. Even if a firm were to succeed in getting an
advertisement blocked through this route, as it is not a party to the case, it would not get any
damages for loss of profit. Thus, in fact, the ground of comparative representation has become
unfettered.93

Analysis
In this manner the instances of unfair trade Practices with reference to the consumers are
currently clarified under the Consumer Protection Act. However, the central issue identifies with
is business to business exchanges. They are neither secured under the Consumer Protection Act
nor in the Competition Act and there have all the earmarks of being a void. Now the word
‘consumer’ under Consumer Protection Act does not comprises of individuals who buy goods or
hire services for commercial purpose, while ‘consumer’ under Competition Act includes such
individuals. Thus, maximum number of instances of unfair trade practices is covered under the
domain of Consumer Protection Act, yet the instances of unfair trade practices concerning to
business to business transactions are not covered under both of these Acts.

Comparative Advertisement in Relation to Constitution of India

Despite the fact that there is no particular provision in the constitution that is
unequivocally committed to advertising, the right to advertise is implicitly accommodated under
Article 19(1) (a) of the Constitution which guarantees the fundamental right to freedom of
91
Paolisa Nebbia, “Competition Law and Consumer Protection against unfair Commercial Practices: A more than
complimentary relationship” in The Global Limits of Competition Law, edited by Ioannis Lianos, D. Daniel Sokol,
Stanford University Press, pg 1272012,.
92
Consumer is defined under section 2(d) of the Consumer Protection Act, 1986. Also see S. Krishnamurthi,
“Consumer and Law: Redressal of Grievances”, Vinod Law Publication, pg 44 (2001).
93
Akhileshwar Pathak, “Liberation and Law on Comparative Advertising in India”, available at
http://EconPapers.repec.org/RePEc:iim:iimawp:wp01792. (Last visited on Apr.12th 2013)

49
speech and expressions. It is critical for us to investigate Article 19 (1) (a) of the Constitution in
connection to comparative advertising. As we realize that freedom under this article is accessible
for public speaking, radio, television, and press. In any case, the freedom of speech and
expression has limitations but the same is controlled by imposing reasonable restrictions by the
state under Article 19 (2) of the Constitution
.
Article 19(1) (a) of the Indian Constitution ensures the right to freedom of
speech and expression to all Indian citizens. This is essentially a fundamental right and is
enshrined as such in Part III of the Constitution of India under the provisions pertaining to the
Right to Freedom.94 Freedom of speech and expression implies the right to express one’s
thoughts and ideas freely via any medium, such as gestures, signs, verbal communication, print
media, radio or television95. However, the freedom of speech and expression has limitations.
Article 19(2) permits the state to limit the freedom in so far as such law imposes reasonable
restrictions in the interests of the sovereignty and integrity of India, the security of the State,
friendly relations with foreign states, public order, decency or morality, or in relation to
contempt of court, defamation or incitement to an offence.96While explaining the scope of
freedom of speech and expression Supreme Court has said that the words "freedom of speech
and expression" must be broadly constructed to include the freedom to circulate one's views by
words of mouth or in writing or through audiovisual instrumentalities.97 As a result, it includes
the right to publicize one's views through the print media or through any other communication
channel e.g. the radio and the television. Every free citizen has undoubted right to lie what
sentiments he pleases. This freedom must, however, be exercised with caution and care must be
94
Article 19(1) (a) to Art 19(1) (g) guarantee some basic freedoms. They are the freedoms of ‘speech and
expression’ Art 19(1)(a); ‘peaceable assembly without arms’ Art 19(1) (b); ‘to form association or unions’ Art 19(1)
(c); F r e e d o m o f m o v e m e n t t h r o u g h o u t t h e t e r r i t o r y o f I n d i a A r t 1 9 ( 1 ) ( d ) ; ‘freedom to
reside and settle in any part of the territory of India Art 19 (1) (e) and ‘freedom to practice any profession , or to
carry on any occupation or trade or business Art. 19 (1) (g).
95
“Constitution of India: Advertisement and Freedom of Speech” available at
http://www.lawisgreek.com/constitution-india-advertisements-and-freedom-speech. (Last visited on Apr.12th 2013)
96
M.P. Jain, “Indian Constitutional Law”;pg. 987 ;(Fifth Edition, 2003), Also it has been said that any limitation on
exercise of right under Art 19 (1)(a) not falling under the defined ambit of Art 19 (2) will not be constitutionally
valid.
97
Patanjali Shastri,J. in A.K. Gopalan (1950SCC 88) case, observed, “man as a rational being desires to do many
things, but in a civil society his desires will have to be controlled with the exercise of similar desires by other
individuals”. It therefore includes the right to propagate one's views through the print media or through any other
communication channel e.g. the radio and the television. Every citizen of this country therefore has the right to air
his or their views through the printing and or the electronic media subject of course to permissible restrictions
imposed under Article 19(2) of the Constitution.

50
taken not to trench on the rights of other citizens or to endanger public interest.98 In case of
comparative advertising the current provision is mostly argued as comparative advertising is part
of commercial speech. Therefore the moot question is that whether the commercial speech can
be secured under Article 19 (1) (a) of the Constitution.

By and large the right to speak freely is thought to be practically consecrated and enjoys a
very high level of judicial and constitutional safeguard. In light of a legitimate concern for a
sound, solid progressive vote based system, the right to speak freely has been maintained by the
judiciary, however, the kind of speech that get satisfaction from this sort of
protection has for the most part been restricted to political perspectives, conviction and belief
system and also scholarly and masterful manifestations.99Commercial speech has not received
this kind of support; especially in the early days of the post-constitutional era.100

In the case of Hamdarad Dawakhana v. Union of India101, a question that has arisen
before the Supreme Court is whether a simple "commercial advertisement" comes within the
notion of "freedom of speech and expression" guaranteed under Article 19(1) \(a) of the
Constitution of India. The court said that
“An advertisement is no doubt a form of speech but its true character is reflected by the
object for the promotion of which it is employed. It assumes the attributes and elements of
the activity under Art. 19(1) which it seeks to aid by bringing it to the notice of the public,
when it takes the form of a commercial advertisement which has an element of trade or
commerce it no longer falls within the concept of freedom of speech for the object is not
propagation of ideas social, political or economic or furtherance of literature or human
thoughts. It cannot be said that the right to publish and distribute commercial
advertisements advertising an individual's personal business is a part of freedom of
speech guaranteed by the Constitution.102

98
Surbhi Singhi, “Freedom of Speech and Expression”, available at
http://www.goforthelaw.com/articles/fromlawstu/article16.htm. (Last visited on Apr.12th 2013)
99
When it takes the form of a commercial advertisement which has an element of trade or commerce it no longer
falls within the concept of freedom of speech for the object is not propagation of ideas ' social, political or economic
or furtherance of literature or human thought; but as in the present case the commendation of the efficacy, value and
importance in treatment of particular diseases by certain drugs and medicines. In such a case, advertisement is a part
of business.
100
Rajarshi Banerjee, “Freedom of commercial Advertisement”, pg.13 available at
http://www.academia.edu/938632/Freedom_Of_Commercial_Advertisements_In_India. (Last visited on Apr.12th
2013)
101
Hamdard Dawakhana (WAKF) Lal Kuan, Delhi v Union of India, [SCR 1960 (2) 671
102
It was asserted in the above case that an advertisement prohibited by the said act relates to trade and commerce
and not circulation of ideas and not being in the interest of general public and hence not covered under Art.19(1)(a).

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With course of time the Supreme Court has also transformed its opinion on commercial
speech.103In Indian Express Newspaper case104court has given a more liberal interpretation
saying that
“all commercial advertisement cannot be denied protection of Article 19 (1) (a) of the
constitution merely because they are issued by businessmen”.

The major swing was brought with the Tata Press Limited case105. This judgment has
changed the way wherein freedom of commercial speech is perceived by the constitutional
jurisprudence in India. The bench in the present case has dealt with the constitutional question as
to whether the expression “commercial advertisement” comes within the scope of freedom of
speech and expression guaranteed under Article 19(1) (a) of the constitution, in which appellant
were in favour while opponent opposed the same.106 Considering the contention cited by both the
parties in their claims the bench took a very wide interpretation of Article 19(1) (a) held that
Advertising as a "commercial speech" has two angles; one which is no more than a commercial
transaction is nonetheless dissemination of information regarding the product-advertised. Public

Also in the case of In the case of Secretary, Ministry of Information and Broadcasting v. Cricket Association of
Bengal, (1995) 5 SCC 161 Supreme Court held that commercial advertisement no doubt is a form of speech but its
true character is reflected by the object for promotion of which it is employed. Only when an advertisement is
concerned with the expression or prorogation of ideas that it can be said to be related to freedom of expression and
speech. The object and purpose for which advertisement is published is the determining factor. When propagation of
ideas and thoughts is inconsequential, but the real purpose and object is promotion of sales of goods and services
and personal benefit without any social purpose, commercial advertisement cannot have the same decree of
constitutional protection as in case of social or political speeches.
103
As observed in the case of Indian Express Newspapers vs. Union of India AIR 1986 SC 515.
104
It is further stated in the above case that any restraint or curtailment of advertisements would affect the
fundamental right under Article 19(1) (a) on the aspects of propagation, publication and circulation. Also see
Bennett colmen case and Sakal newspaper case (1973 SCR (2)757 & 1985(2) SCR 287.
105
Tata Press Ltd. v. Mahanagar Telephone Nigam Ltd. AIR 1995 SC 2438. The present dispute revolved
around whether Tata Press Ltd had the right to publish its Yellow Pages which was essentially a buyer’s
guide comprising advertisements given by traders, businessmen and the only criterion for acceptance of something
for publishing in its pages was that it must pertain to the contact details and particulars of
businessmen/professionals. Mahanagar Telecom Nigam Ltd itself published a Telephone Directory that had
both ‘white pages’ (comprising contact details i.e. phone numbers of s u b s c r i b e r s t o i t s
t e l e p h o n e s e r v i c e w h i c h w a s a f r e e l i s t i n g ) a n d ‘ y e l l o w p a g e s ’ (comprising paid
advertisements and published in order to increase revenue). Rules 458,4 5 7 o f t h e T e l e g r a p h R u l e s
( 1 9 5 7 ) [ t h a t b e s t o w e d t h e e x c l u s i v e r i g h t s o n M T N L t o publish a “list of telephone numbers”
belonging to subscribers to its service] was cited by MTNL Ltd to plead that an order be granted in its favor that
permanently restrained Tata Pres Ltd from publishing its Yellow Pages.
106
As observed in present case “...Mr. Venugopal and Mr. Arun Jaitley, learned counsel appearing for the
respondents have, however, contended that a purely commercial advertisement is meant for furtherance of trade or
commerce and as such is outside the concept of freedom of speech and expression. Reliance was placed by the
learned counsel on the judgment of this Court in Hamdard Dawakhana (WAKF) Lal Kuan, Delhi v Union of India
and others (SCR 1960 (2) 671)….”

52
at large is benefitted by the information made available through the advertisement. The Supreme
Court further observed that
“…In a democratic economy free flow of commercial information is indispensable. There
cannot be honest and economical marketing by the public at large without being
educated by the information disseminated through advertisements. The economic system
in a democracy would be handicapped without there being freedom of "commercial
speech"
It opined that just because the initiator of commercial speech may only have a
business motive behind doing so doesn’t take anything away from the importance of
protecting commercial speech by utilizing Art 19(1) (a) and Art 19(2).
“The protection of Art 19(1)(a) is available both to t h e s p e a k e r a s w e l l a s t h e
recipient of the ‘commercial speech’. The recipient of
‘commercial speech’ may be having much deeper interest in the
advertisement than the businessman behind the publication.”

Following the line of reasoning as delineated above the Bench stated in the judgment:
“We, therefore, hold that ‘commercial speech’ is a part of the freedom of expression
guaranteed under Art 19(1) (a) of the Constitution.”

However, as in case of speech, commercial speech too has to be within the purview of
reasonable restrictions. If an advertisement extends beyond the grey areas and becomes a false,
misleading, unfair or deceptive advertisement, it would not have the benefit of any protection of
Article 19(1) (a).107

Analysis
Therefore in nutshell comparative advertising being a commercial speech is protected
under the fundamental Right of freedom of speech as guaranteed under Article 19(1) (a) of the
Constitution and it can likewise be limited under Article 19 (2) on the off chance that it satisfies
its components as stated in Tata case.

Comparative Advertising and Advertising Standards Council of India (ASCI)

Notwithstanding the various regulations as analyzed above, in India the Advertising
Standards Council of India (ASCI) was built up for ensuring the interests of the consumers while

107
If an advertisement extends beyond the grey areas and becomes a false, misleading, unfair or deceptive
advertisement, it would not have the benefit of any protection of Article 19(1) (a). Also see Dabur India Ltd. v.
Colortek Meghalaya Pvt. Ltd. and Godrej Sara – Lee MANU/DE/0225/2010

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observing and controlling the business correspondence. It goes for convalescing the image,
dependability of advertising and reprimand untrustworthy practices embraced by advertisers.108

History of ASCI
Traditionally, in 1982, the Advertising Club, Mumbai arranged a workshop on “Code for
Self-Regulation in Indian Advertising”, in organization with the International Advertising
Association (IAA). Experts from different Indian Advertisers & Advertising Agencies, the
World President Emeritus of the IAA and the Director General of the Advertising Standards
Authority attended the workshop. The fundamental goals of the workshop were:
I. To survey the self – regulation on advertising in different nations with specific reference
to the base as set up in the U.K.
II. To advance a code for self – regulation in advertising in India as an arrangement for a
powerful framework for enforcing it.109
The transactions brought about setting up of an advisory group on self regulation code in
India. This was basically embarked to ensure that the buyers are secured against bogus
advertising and by and large acknowledged standards of ethical quality are maintained.
Subsequently the Advertising Standards Council of India (ASCI) was built up to check deceptive
and exploitative commercials. This affiliation is shaped in accordance with Advertising
Standards Authority of U.K. and National Advertising Division of America (NAD)110

Object of ASCI
To monitor, regulate and advance measures of advertising practices in India with a perspective
to;
I. Ensuring the honesty and trustworthiness of representations and claims made through
advertising and shielding against misleading advertising
II. Ensuring that advertising is not hostile to usually conventional standard and principles of
public civility

108
Shubhra Deepa Moitra, “The Code of Self-Regulation in Advertising”, available at
http://www.legalserviceindia.com/article/l275-The-Code-For-Self---Regulation-In-Advertising.html (Last visited on
Apr. 13th 2013)
109
Mukesh & Ranju Trehan, “Advertising and Sales Management”, Ed.2006-7, V.K. Enterprises Publication, pp.63
110
Id at 64

54
 III. Defending against the unpredictable utilization of advertising for the endorsement of
products or services which by and large viewed as perilous to society or to people or
which are unsuitable to society in general
IV. Ensuring that advertisements examine reasonableness in opposition and the standard of
commonly acknowledged competitive behavior
Main objective behind formation of the ASCI was to ensure that there is a fair competition
among all the players.111

Organizational Structure of ASCI

ASCI have been enlisted as a non-profit Company under section 25 of the Indian
Company Act112 initially with 43 members. Presently there are 250 members in this association.
It comprises of a Board of Governors and a Consumer Complaints Council (CCC). The Board of
Governors contains four members from each of the four sections associated with the advertising
industry including: Advertisers, Advertising Agencies, Media (owners of press, television, radio
etc.) and the related sectors (e.g. outdoor agencies, PR, market researchers, ad producers,
business schools).113 The Board of Governors is a body which makes strategies. The treatment of
grievance is dealt with by a Consumer Complaints Council (CCC) which has 21 individuals. Out
of which, 12 are non-advertising experts representing civil society who are well-known citizens
and perceived assessment pioneers The CCC is totally autonomous and gives its own particular
principles to ponder and settle on complaints. These civil society members are from various
disciplines such as medical, law, engineering, human resources and consumer interest groups.
The remaining nine members are from member firms, advertising practitioners. The Board of

111
Anita Patil, “A critical comparative study of Misleading advertisements in India: with special reference to Food,
Drugs and cosmetics”, available at https://researchersclub.wordpress.com/2014/06/15/a-critical-comparative-study-
of-misleading-advertisements-in-india-with-special-reference-to-food-drugs-and-cosmetics/(Last visited on Apr. 13th
2013)
112
Indian Company Act, 1956, Section 25 incorporate those companies which are formed for the sole purpose of
promoting commerce, art, science, religion, charity or any other useful object and have been granted a licence by the
central government recognizing them as such.
113
Hemant Goel,” India: Advertising and Marketing Advertising Law” , Global Jurix, Advocates & Solicitors, India,
available at http://www.globaljurix.com/our-publications/advertising-and-marketing-law-india.pdf(Last visited on
Apr. 13th 2013)

55
Governors meets once every month. The CCC likewise meets once per month and all the more
regularly if required.114

Self Regulation and Advertising Agencies

The ASCI is a self administrative organization in India and is roused from its western
partners. The issue which emerges is the reason why regulation of advertising is required in any
case. Commercials build rivalry, buyer decision and advancement in the business sector,
however, in the event that the advertisings are not honest then people in general's confidence in
them will hamper and it will influence the entire business and in this way. Therefore some sort of
regulation is required in light of a legitimate concern for the ad business itself. Regulation can be
either by enactment or the business can go for self regulation. Along these lines, the following
inquiry which emerges is why self regulation? Self regulation as the expression itself proposes is
not an outer but rather it's a sort of inward regulation whereby the business makes strategy for
controlling its own players. In the event that there is no administration, there will be heaps of
deceiving commercial in the business sector and keeping in mind the end goal to check this, the
legislature will need to think of strict regulations which will hamper the enthusiasm of the fair
individuals from the group too. To put it plainly, self regulation depends on this straightforward
equation 'self manage or another person will do that for you'. 115

Need for Self Regulation in Advertising

It is for the most part felt that the amount of false, deceptive and offensive advertising is
expanding and, therefore, the conviction of consumers in publicizing is decreasing and disdain
towards it is developing. Rivalry no more stays reasonable if advertisers of items resort to false
or deceiving commercials. It makes perplexity in the business sector and prompts prosecution
among advertisers. In the event that this proceeds with government would present statutory
regulations and awkward systems which will make things troublesome for all, including for

114
Chapter three of Advertising Standard Council available at
http://www.ascionline.org/index.php/mission.html(Last visited on Apr. 13th 2013)
115
Anita Patil, “A critical comparative study of Misleading advertisements in India: with special reference to Food,
Drugs and cosmetics”, available at https://researchersclub.wordpress.com/2014/06/15/a-critical-comparative-study-
of-misleading-advertisements-in-india-with-special-reference-to-food-drugs-and-cosmetics/(Last visited on Apr. 13th
2013)

56
genuine and honest advertisers. Subsequently the reasoning among the advertising fraternity was
"Manage yourself, or another person will".

ASCI have embraced a code for self regulation in advertising. The code is a commitment
to honest advertising and to fair competition in the market. It remains for insurance of authentic
interest of shoppers and all worried with promoting, i.e., sponsors, media, publicizing
organizations and other people who help in the creation or arrangement of advertisements. With
an expansion in acknowledgment and utilization of code the following results are expected:
I. Less fake, deceptive assertions
II. Lesser unreasonable advertisements
III. Mounting the uprightness for the advertisements116

ASCI’s Code for Self-Regulation and Comparative Advertising

To investigate advertising in India, ASCI has embraced a Code for Self-Regulation
(ASCI Code), which applies to all included in the commissioning, creation, placement, or
publishing of advertisements. This ASCI Code applies to commercials read, listened, or seen in
India regardless of the possibility that they begin or are distributed abroad inasmuch as they are
coordinated to shoppers in India or are presented to a noteworthy number of consumers in India.
Though non-statutory, the ASCI Code is recognized under various Indian laws in addition to
being adopted by advertising-industry bodies. Outstandingly, the code gives that it is not in
rivalry with any law, its rule, or the machinery through which they are implemented; in this way
the ASCI Code is outlined just to supplement lawful controls under such laws and not to usurp or
supplant them. The essential methodology of ASCI reflected in the code is to guarantee that
commercials watch decency in rivalry such that both –consumers should be educated of
decisions accessible to him in the commercial center; and the ordinances for the most part
acknowledged aggressive conduct in business are both served. The code provides for the seeking
of permission in case an advertiser refers to some other product or service in promotion of its
own.117

116
History and Profile of ASCI available at
http://shodhganga.inflibnet.ac.in/bitstream/10603/3434/7/07_chapter%203.pdf(Last visited on Apr. 13th 2013)
117
Para 3 of chapter one reads- Advertisements shall not, without permission from the person, firm or institution
under reference, contain any reference to such person, firm or institution which confers an unjustified advantage

57
 ASCI have divided its code into four chapters. It has been drawn up by individuals in
professions and commercial ventures in or joined with promoting, in counsel with delegates of
individuals influenced by advertising, and has been acknowledged by people, corporate bodies
and affiliations occupied with or generally worried with the act of advertising. With a view to
achieve the acceptance of fair advertising practices in the best interest of the ultimate consumer,
the Council prescribed the following basic guidelines:
I. To ensure the truthfulness and honesty of representations and claims made by
advertisements and to safeguard against misleading advertisements.
II. To ensure that advertisements are not offensive to generally accepted standards of public
decency.
III. To safeguard against the indiscriminate use of advertising for the promotion of products
which are regarded as hazardous to society or to individuals to a degree or of a type, this
is unacceptable to society at large.
IV. To ensure that advertisements observe fairness in competition so that the consumer’s
need to be informed on choices in the market-place and the canons of generally accepted
competitive behavior in business is both served.

The Code's standards frame the premise for judgment at whatever point there might be
clashing perspectives about the adequacy of an endorsement, whether it is tested from inside or
from outside the advertising business. Both the general public and an advertiser’s rivals have an
equivalent right to expect the substance of advertisement to be introduced reasonably,
understandably and dependably.
As regards the form and manner of comparative advertising is concerned, the code under
Chapter IV of the Code for Self Regulation118 in Advertising stated herein that advertisements
containing comparisons with competing manufacturers and sellers are permissible in the interests
of vigorous competition and free dissemination of information, subject to the following
requirements being satisfied:

on the product advertised or tends to bring the person, firm or institution into ridicule or disrepute. If and when
required to do so by the Advertising Standards Council of India, the advertiser and the advertising agency shall
produce explicit permission from the person, firm or institution to which reference is made in the advertisement.
118
ASCI Code for Self Regulation in Advertising (2007)

58
 I. It is clear what aspects of the advertiser’s product are being compared with what aspects
of the competitor’s product.
II. The subject matter of comparison is not chosen in such a way as to confer an artificial
advantage upon the advertiser or so as to suggest that a better bargain is offered than is
truly the case.
III. The comparisons are factual, accurate and capable of substantiation.
IV. There is no likelihood of the consumer being misled as a result of the comparison,
whether about the product advertised or that with which it is compared.
V. The advertisement does not unfairly denigrate attack or discredit other products,
advertisers or advertisements directly or by implication.119

This chapter manages those ads where a maker contrasts his product and that of another
maker's item. The code says that the two items ought to be looked at on the same angles. Further,
the subject matter on which the product is looked at ought not to be such that it gives an innate
favorable position to one maker over the other. The items ought to be thought about in an
aggressive way and no critical comment ought to be made in the advertisement against the
contender's product. The advertiser ought not to utilize name of other firm, foundation,
organization with a specific end goal to pick up point of interest over competitor’s product In
conclusion, there ought to be no copying by one advertiser from an earlier campaign or ad of
another maker. The aforementioned standards guarantee that advertising activities are directed in
a reasonable way, with the interests of all associated groups being secured

Complaint Handling Procedure at ASCI

ASCI and CCC manage complaints got from Consumers and Industries, against ads
which are considered as false, deceptive, repulsive, unlawful, prompting dangerous practices, or
out of line to rivalry, and thus in negation of the ASCI Code for Self-Regulation in Advertising.
At the point when a grievance is gotten around a commercial, ASCI gives a chance to the
sponsor to audit the advertisement for its conceivable effect on the sensibilities of individual
viewers of TV, or readers of press publications. For a promoter to attempt a review, ASCI passes

119
D.P.S Verma, “Advertising and the Law”, Journal of Indian Law Institute, Vol.48 (2), 2006, pp. 267-69 (April.-
June).

59
on to the advertiser concerned, the considerable issues brought up in the complaint, in the exact
context of the specific advertisement, as passed on by the perception of the complainant, and to
evoke the proper reaction by means of remarks from the advertiser.

The advertiser is given a notice of a complaint got at ASCI with the points of interest as
above and is requested to reply inside of a brief timeframe. Upon the receipt from the advertiser,
the Consumer Complaints Council, of ASCI, is in a position to think definitively on the issues
included, and to touch base at a reasonable and target conclusion, which would stand the scrutiny
of all anxious with the right to freedom of expression, and the opportunity of consumers to
choose the products /services made accessible to them in the commercial place.

ASCI gets and processes complaints against commercial, from a cross segment of buyers, the
general public and industry, in light of a legitimate concern for each one of the individuals that
depend on publicizing as a commercial communication, and this covers people, experts in
advertising, advertiser firms, media, advertisement agencies, and subordinate administrations
associated with advertising. ASCI converse with the advertiser when a grievance is maintained
and it is important that in around 90% of the situations where the complaints are maintained, the
advertisements are either changed or pulled back.120

Analysis
While the ASCI have possessed the capacity to guarantee a sensible level of adherence to
its standards from individuals, a trouble emerges when complaints are recorded as to the
activities of non-members.121 Also these rules don't have the power of law; they are just
recommendatory in nature. It is having no enforcement instrument to guarantee consistence with
its orders.
At this crossroads on investigation of the above contention, it might be watched that there
is no focal statutory organization or uniform enactment that expressly talk of comparative
advertising. An examination of the law on comparative advertising uncovers that there is a

120
History and Profile of ASCI available at
http://shodhganga.inflibnet.ac.in/bitstream/10603/3434/7/07_chapter%203.pdf (Last visited on Apr.12th2013)
121
Parth Gokhale &Shriyani Datta, “Comparative Advertising in India: Evolving a regulatory Framework”, 4 NUJS
L. Rev. 131 pp 136-137 (2011).

60
nonappearance of devoted enactment managing the same. The Consumer Protection Act, 1986,
however, has commonly viewed as a successful instrument to manage the subject, demonstrates
deficient when parties are firms, whose products are advertised, which would not come in the
ambit of "consumers" to approach the consumer forum. Subsequently, the Trademarks Act, 1999
and ASCI at present, turns into the essential enactment which is stick to in instances of
comparative advertisement.

61
 CHAPTER-3

A CRITICAL ANALYSIS OF
TRADEMARK LAW ON
COMPARATIVE
ADVERTISING AND
PRODUCT DISPARGEMENT
IN INDIA
 CHAPTER-3
CRITICAL ANALYSIS OF TRADEMARK LAW ON COMPARATIVE ADVERTISING
AND PRODUCT DISPARGEMENT IN INDIA

In the earlier chapter we covered the statutory framework of comparative advertising in

detail. As discussed, comparative advertising are protected under the broad umbrella of unfair
Trade practice provision. But with the repeal of Monopolies and Restrictive Trade Practices Act,
1984 situation has changed. The only legislation which is available for balancing the interests of
the rights of the registered trademark owners and a compelling consumer interest in informative
advertising is the Trademark Act, 1999.

Trademarks are considered as vehicle of goodwill and reputation. They are the obvious
core of a products character. Utilizing a contender's trademark in an advertisement can be to a
great degree compelling device and might prompt huge financial additions. This kind of
utilization can showcase particular qualities or components of an organization's products or
services, in direct connection to those of its rival. At the point when all around executed, such an
advertising effort might bring about increased market share and revenue. However, when
appeared in poor light or highlight qualities that a contender would not like to stress, then such a
follow up on the part of the promoter would not just conjure issues identified with comparative
advertising and product disparagement, but would also invoke issues related to trademark
infringement.1

The present chapter focuses on the concept of trademark infringement and its
significance. It will also highlight various complexities involved in the act pertaining to
comparative advertisement and when comparative advertising results into infringement of
trademark.

1
Joy J. Wildes and Brooke Erdos Singer, “Ours Works Better”: Use of a Competitor’s Trademark in Advertising”,
available at http://corporate.findlaw.com/intellectual-property/ours-works-better-use-of-a-competitor-s-trademark-
in-advertising.html. (Last visited on Jan. 23rd 2014)

62
Trademarks: General Overview
Prior to managing connection of trademark law with comparative advertisement all the
more particularly, some broad perceptions are required regarding trademarks as such that deal
with important hypothetical issues including the idea of trademark, definition, purpose behind
lawful protection, functions, attributes of trademark and additionally the qualifications among
trademark and other related terms

Concept of Trademark
A trademark is considered as a symbol or arrangement of signs that differentiate goods
or services of one person or venture from that of other.2 It is seen that trademark is an important
commercial resource and an advertising device which could help in financing of the enterprises.
It protects both the interest of the consumer and the trader as the consumer is able to relate the
product with the quality assured by its trader and also the trader being able to block his
competitors from using his mark and gain profits through imitation while making it distinct.3

The origin of trademarks can be traced back as far as the beginning of the exchange of
goods. Even in the Harappa civilization, marks of trade with foreign countries such as
Mesopotamia and Babylonia were imprinted on articles.4 Initially the marks were placed on
objects to identify ownership and to prevent them from would be thieves. By this way the ancient
people tried to control low quality goods, and as the maker of the product was identified
automatically the infringers were punished. The more a trademark came to be known the more it
stirred confidence in the goods and services to prospective clients.5 It is the same era when
traders or manufacturers started using trademarks as an advertising tool to identify their products
and services. This led to trademark obtaining goodwill and reputation among consumer of goods.
Apprehending the economic significance of the trademarks, the competitors had a lure to copy
well known trademarks or adopt deceptively similar trademarks so as to gain profits by trading
on the reputation of another trademark. The necessity to protect trademark was, therefore, felt in

2
See TRIPS article 15
3
Vinod V Sople,”Managing Intellectual Property” pg 107, PHI Learning Pvt Ltd, (2006)
4
Ashwani Kr. Bansal, “Law of Trade marks in India with Introduction to Intellectual Property”, Pg: 4.3rd Edition,
(2014)
5
Siegrun D. Kane, “Trademark Law, A Practitioner Guide”, p. 9-10, Supplement, Practicing Law Institute, New
York, (1989).

63
all nations which led to the adoption of trademark law everywhere. At international level, the
first multilateral convention i.e. Paris Convention for the protection of Industrial Property was
adopted in 18836.

In India, history could be traced through the first trademark law passed in the year 1940
and was known as the Trade Marks Act, 1940. This corresponded with the English Trademarks
Act. But with major growth in trade and commerce a need was felt for more protection of
trademark and subsequently the law was replaced by Trademark and Merchandise Act 1958.This
Act gives better protection and registration of Trademarks and prevention of the use of
fraudulent marks on merchandise. This Law also enables the registration of trademarks so that
the proprietor of the trademark gets legal right to the exclusive use of the trademark.7 The
objective of this act was easy registration and better protection of trademarks and to prevent
fraud. But this act was not sufficient to fulfil all the needs of the current situation.

Thereafter the Government of India amended this Act in order to bring the Indian
Trademark Law in compliance with its TRIPS obligations.8 The new Act passed was the Trade
Marks Act, 1999. It came into force in the year 2003. The object of the said Act is to confer the
protection to the user of the trademark on his goods and prescribe conditions on acquisition, and
legal remedies for enforcement of trademark rights.9 It has for the first time protected service
marks and gave provision for registration for collective marks, along with that differentiate
between well known trademarks and trademarks in general, and also special treatment and rights
are envisaged for well known trademarks. The Act of 1999 also gives police the right to arrest in
case of infringement, it can be said that the 1999 Act is a modification of the 1958 Act. It has
provided exhaustive definitions of terms frequently used, enhanced punishment for offenders,
increased the period of registration, registration of non- traditional trademarks. The rules of this

6
V K Ahuja, “Law relating to Intellectual Property Rights”, p. 23, Lexis Nexis, (2009).
7
P K Jalan,”Industrial Sector Reforms in Globalization Era”, Pg 33 ,Sarup and Sons,( 2004).
8
India has declared certain countries as convention countries, which afford to citizens of India similar privileges as
granted to its own citizens. A person or company from a convention country may within six months of making an
application in the home country, apply for registration of the trademark in India. If such a trademark is accepted for
registration, such foreign national will be deemed to have registered his or her trademark in India, from the same
date on which he or she made application in the home country.
9
Vinod V Sople,”Managing Intellectual Property” Pg 107, PHI Learning Pvt. Ltd, (2006).

64
Act are called as Trademark Rules 2002. Both the Act and its set of rules presently govern the
trademark law in India.

A “trademark”10 under the Indian law means a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and combination of colours;
and
I. in relation to Chapter XII11 (other than section 10712), a registered trade mark or a mark
used in relation to goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, as the case may be, and
some person having the right as proprietor to use the mark; and
II. in relation to other provisions of this Act, a mark used or proposed to be used in relation
to goods or services for the purpose of indicating or so to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person
having the right, either as proprietor or by way of permitted user, to use the mark whether
with or without any indication of the identity of that person, and includes a certification
trade mark or collective mark. A trademark includes any word, name, symbol,
configuration, device, shape of goods, packaging, combination of colours or any
combination thereof which one adopts and uses to identify and distinguish his goods and
services of one business from those of others. It must be capable of graphical
representation and must be applied to goods or services for which it is registered.
III. A trademark can thus be called a device that gives distinctiveness and a mode of
identification to a particular product or service. An increasing number of countries also
allow for the registration of less traditional forms of trademarks such as single colours,
three dimensional signs (shapes of product packaging), audible signs (sounds) or
olfactory signs (smell).13

10
The Trade Marks Act 1999, S. 2(1) (zb).
11
Trade Marks Act, 1999, Chapter XII deals with offences, penalties and procedure relating to trademarks.
12
Trade Marks Act, 1999, S. 107 deals with penalty for falsely representing a trade mark as registered.
13
Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises, P.3, WIPO,2003 Edition

65
 Well-known Trademark and Trans Border Reputation: India recognizes the concept of
the "Well-known Trademark" and the "Principle of Trans Border Reputation". A well-known
Trademark in relation to any goods or services means a mark that has become so to the
substantial segment of the public, which uses such goods or receives such services such that the
use of such a mark in relation to other goods and services is likely to be taken as indicating a
connection between the two marks14. Section 11(6) of the act lists several factors which must be
considered by the Registrar of trademarks in determining whether the mark is well known. These
include:
I. Recognition/knowledge of the mark among the relevant public sector.
II. Duration, extent and geographical area of use.
III. Duration, extent and geographical area of promotion (eg, advertising, publicity, use at
fairs and exhibitions).
IV. International registrations.
V. Evidence of successful enforcement of the mark in other jurisdictions or recognition of
the mark as a well-known trademark in other jurisdictions.15

A mark can be declared to be well known in India only by a court order in litigation or by the
Trademarks Registry in opposition or rectification proceedings. The Trademarks Registry also
maintains a register of well-known trademarks, which currently lists 56 marks which have been
declared to be well known by either a court or the Trademarks Office (including CARTIER,
DUNHILL, GLAXO, MARS, FORD, PEPSI, TATA and YAHOO!). The declaration of a mark
as well- known enables its owner to initiate action against an infringing trademark across all
categories of goods and services.

Reason for Legal Protection

A trademark is a property of a manufacturer who acquires an exclusive right to protest his
mark by virtue of priority in adoption, long, continuous and widespread use.16 This extensive use
and advertisement helps in building the reputation and goodwill of the company. On the other

14
See section 2(1) (zg), The Trademarks Act,1999
15
Safir Anand & Swati Sharma, “Trademarks: evolving law in India”, Intellectual Asset Management, Pg, 105
(May/June 2013) available at www.iam-magazine.com. (Last visited on Apr.12th2013)
16
See Vijay Grover v. Biocure laboratories, AIR 2002 (2) Raj 111.

66
hand it will thwart the consumer from purchasing inferior goods and services in mistaken belief
that they originates from or are provided by another trader.17 Thus trademarks promote both
businesses and individuals. They allow businesses to build an individuality and reputation with
customers, and allow individuals to be better consumers. In fact, it ensures that consumers can
repeat their positive buying experiences by searching out familiar brand names, and avoid bad
buying experiences.18 The value of a trademark is its communicative value19 i.e., it is not the
trade mark but the mark in addition the information it express concerning the source of the
commodities to which it is applied is an indicator of business goodwill or reputation, and it is this
good will or reputation which need to be protected in a competitor advertisement.

Function of Trademarks
As noticed, a trademark, and obviously the trademark framework, has an imperative part
in the economy, not just in connection to the inception of the products or services, additionally
concerning the quality and the position of merchandise and benefits in the commercial center.20
Thus, in its essence the trademark system is designed to perform the following functions:
I. To identify the product and its origin
The conventional trademark protection principle depends upon the recognition of the source of
particular goods and services. The conventional defence for securing trademarks is that
trademarks upgrade the productive performance of an aggressive marketplace by ensuring that
consumers can either discover merchandise from the same source as products they have enjoyed
previously, or can discover merchandise whose notoriety has been progressed through
advertising.21 The source and origin function of trademarks is the key, and unquestionably an
essential function of trademark law. A trademark ought to have the capacity to work in this way,
or there will be consequences, it couldn't be qualified as a trademark. The intention of this

17
LTC Harms, “The Enforcement of Intellectual Property Rights”, a Case book,3rd Edition, 2012 available at
http://www.wipo.int/edocs/pubdocs/en/intproperty/791/wipo_pub_791.pdf(Last visited on Apr.12th2013)
18
Available at http://marklaw.com/trademark-FAQ/faqbasic.htm
19
Amanda S. Reid, “Trademark Dilution Law: A cross disciplinary examination of dilution and brand equity
scholarship”, Dissertation presented to Florida University Pg: 94 (2004) available at
http://etd.fcla.edu/UF/UFE0008360/reid_a.pdf. (Last visited on Apr.12th2013)
20
Phan Ngoc Tam, “Well Known Trademark Protection- A Comparative study between the laws of European Union
and Vietnam”, Pg: 30 Doctoral Dissertation Submitted to Lund University, Hochiminh city.(2011) available at
http://text.123doc.org/document/2240392-well-known-trademark-protection-a-comparative-study-between-the-
laws-of-european-union-and-vietnam.htm. (Last visited on Apr.12th2013)
21
Graeme W. Austin, “Trademarks and the Burdened Imagination”, 69 Brooklyn L. Rev. 827 (2004).

67
improvement is that the personality of the maker itself is of no significance; trademarks don't tell
customers where the merchandise and/or services originate from. Maybe, consumer are presently
intrigued to realize that specific products and services rise up out of a specific source and starting
point which could be anonymous, and this makes them contrast between those goods and
services from the goods and/or services of others of the same class.22
II. To guarantee the quality of goods and services
Another essential belief is that buyers frequently look for a confirmation that identifies with the
quality of goods or services to which the trademark affirms instead of the inception itself. The
trademark distinguishes a product as satisfactory and thereby stimulates further purchases by the
consuming public.23 Within the meaning of this premise, a trademark serves as an identification
of source as well as the ensuring image of the quality and renown of the products and services
bearing the mark. In other words, the trademark guarantees the consumer contentment and the
chance of repeated satisfaction. For example, with the trademark “Coca-Cola”, consumers will
be educated not only of the source of a well-known brown colour soft-drink of an American
producer additionally its taste and wellbeing.
III. Advertise the Product
The secondary function of trademarks is advertising the product and providing information to the
potential consumers. Trademarks identify products and services to the consumer, and the
advertiser promotes its products and services through the use of trademarks. The advertising
function assists in preventing of the diversion of sales to other undertakings.24 Trademarks also
play an important role in providing consumers with the necessary amount of information that
needs to be communicated.25 In fact, some of the functions of advertising can be said to
synonymous with the function of trademarks26 and when a customer buys an advertised product
it is because of the recognition of the trademark of the product.

22
Sidney A. Diamond, “The Public Interest and the Trademark System”, 62 J. PAT. OFF. SOC'Y 528, 537 (1980)
23
Frank Schechter, “The rational basis of Trade mark protection”, 40 Harvard Law Review Volume 813. (1927)
24
Mohammad Amin Naser, “Re-Examining the Functions of Trademark Law”, 8 Chi.-Kent J. Intell. Prop. 99
(2008).
25
Id at 12
26
Jeerome G. Lee, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71 Trademark
Rep. 620 (1981). wherein the author points out that the functions of adverting are synonymous with trademark law
that is to prevent likelihood of confusion. The author quotes Courtland L. Bovee & William F. Arens,
Contemporary Advertising 6-7 (2d ed., Irwin 1986) where the following functions- a) identification of products
and differentiation from others, b) communication of information about the product, its features etc., c) inducing
customers to try new products and to suggest reuse, d) increasing product usage, e) building brand preference and

68
 These functions are not static. As new market practices develop, so the functions
recognized by judicial interpretation may develop.

Characteristics of Trademark
I. Distinctiveness:
This is the first and imperative component of a mark. This is on account of the historical and
unique capacity of trademark was basically to demonstrate the inception of merchandise by
recognizing the specialists who created them. In the event that a trademark is to shield buyers
from confusion over what they are purchasing, then the trademark some way or another must be
unmistakable, identifiable and not quite the same as different marks. Then again, a trademark can
just satisfy its function as a guarantee of origin if it is exclusive.27 Without a doubt, customers
can perceive and recognize the goods of these producers from those of others, and understand
first in light of the signs connected to those products, thus avoiding confusion, deception or
mistake. A trademark is considered as a good mark when it is distinctive. In case of Imperial
Tobacoo v. Registrar Trademarks28, the word distinctiveness was held to be some quality in
trademark which earmarked the goods marked as distinct from those of other products or such
goods. Uniqueness might be characteristic or obtained over the timeframe. Innate uniqueness
implies that the mark or get up is different in itself from everything else and nobody can
reasonably maintain the right to use it. Acquired uniqueness implies peculiarity through use. The
vast majority of the trade marks procure peculiarity through use. A trade mark would be viewed
as a decent trade mark when it is unique.29
II. Deceptive Similarity:
Deceptive similarity has been defined "two marks, when placed side by side, may exhibit
many and various differences, yet the main idea left on the mind by both may be the same. A
person acquainted with one mark, and not having the two side by side for comparison, might

loyalty are describes as being the primary functions of advertising and further compares them with modern
trademark function and argues that if an advertisement utilizing a trademark identifies the product and
differentiates it from other like products, the likelihood of confusion is reduced and the advertisement achieves a
sale for the trademark owner. Thus, the functions of modern advertising promote trademarks.
27
Arthur R. Miller and Michael H. Davis, “Intellectual property – Patents, Trademarks and Copyrights”, Pg. 156
Thomson West Publishing Co., (2000)
28
AIR 1977 Cal 413.
29
Ashwani Kr. Bansal, “Law of Trade marks in India with Introduction to Intellectual Property”, Pg: 12, 3rd Edition
(2014).

69
well be deceived, if the goods were allowed to be impressed with the second mark, into a belief
that he was dealing with goods which bore the same marks as that with which he was
acquainted”.30 It is one of the vital tribulations that is sought to be resolved by the Trademarks
Act, 1999. Section 1(h) of the Trade Mark Act, 1999 define Deceptively Similar as
“A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that
other mark as to be likely to or cause confusion.”

Nobody can utilize the trademark which is deceptively similar to the trademark of other
corporation. As in the case of Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech
Pharmaceuticals Pvt. Ltd.31 the plaintiff claimed that defendants are selling products under the
trademark FEXIM that is deceptively similar to the plaintiff’s mark PHEXIN, which is used for
pharmaceutical preparations. The defendants are selling antibiotic tablets with the trademark
`FEXIM' with the packing material deceptively similarly to that of the plaintiff, whereby
intending not only to infringe the trademark but also to pass off the goods as that of the plaintiff
as the two marks are also phonetically similar. The Court restrained the defendant from using the
trademark `FEXIM' or any trademark deceptively similar to the trademark of the plaintiff
`PHEXIN', any label/packaging material deceptively similar and containing the same pattern as
that of the plaintiff.

Scheme of Trademark Act, 1999

The Trademark Law in India is now contained in the provisions of the Trademarks Act,
1999.The purpose of the Act as stated in the preamble is to provide for registration and better
protection of trademarks for goods and services and to prevent the use of fraudulent marks. A
trademark enlistment gives select restrictive rights to the rights holder for insurance of their
trademark in India. Be that as it may, as the Indian legitimate framework depends on the
common law framework, even an unregistered trademark is qualified for security and the rights
holder of the unregistered trademark can start activity against an outsider under the law passing
off.

30
Rustam Singh Thakur, “Judicial view regarding Deceptive Similarity: a Chronological Case Study”, available at
http://ssrn.com/abstract=1955436. (Last visited on Ap.12th 2013)
31
MANU/DE/2840/2005 as quoted in Avinash Gadhre, “Trademark Infringement and passing off”, available at
http://www.legalserviceindia.com/article/l226-Trademark-Infringement-&-Passing-Off.html (Last visited on
Ap.12th 2013)

70
Eligibility for filling and Registration
Under the Trade Marks Act, 1999, a person being the owner of the trademark could
submit an application for the registration of its mark for products and services in writing32. Any
word, signature, name, logos, label, numerals or combination of colours utilized by one venture
on products or services can be registered as a trademark. As per the trademark law in India there
are various kinds of trademarks that could be registered. The same are given below:
I. Product trademarks33: that is attached to recognize merchandise.
II. Service trademarks34: they recognize the services of an enterprise, like the symbol
attached to a broadcasting service, marketing outlet, etc. These are utilized in promotion
for services.
III. Certification trademarks35: are those that are fit for recognizing the products or
administrations regarding which these are utilized as a part of the course of exchange and
which are ensured by the proprietor with respect to their root, material, the strategy for
production, the quality or other particular elements.
IV. Collective trademarks36: are enlisted for the sake of gatherings, affiliations or different
associations for the utilization of individuals from the gathering in their business
exercises to demonstrate their enrollment of the gathering.

The marks that cannot be registered

The application to register a trademark can be refused on the basis of two grounds i.e.;
Absolute grounds which relates to the inherent objections to the distinctiveness and certain
public interest objections and the relative grounds which arise because some other trader or
proprietor has an earlier conflicting right.37
The accompanying are the sorts of marks that can't be enrolled in India38:
I. Not equipped for recognizing the merchandise or administrations of one individual from
those of someone else;
32
The Trade Marks Act, 1999, S. 48.
33
The Trade Marks Act, 1999, S. 7.
34
Ibid.
35
The Trade Marks Act, 1999, Chap. IX.
36
The Trade Marks Act, 1999, Chap. VIII.
37
Dr. S.K Singh, “Intellectual Property Laws”, Pg. 294,2nd Edition, Central Law Agency (2013)
38
The Trade Marks Act, 1999, S. 9.

71
 II. Consisting exclusively of marks or indications which may serve in trade to designate the
kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods or
service;
III. Has become customary in the current language;
IV. Of such nature as to deceive the public or cause confusion;
V. Contains or comprises of any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India;
VI. Comprises or contains scandalous or obscene matter;
VII. Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950; comprises solely of the state of products, which comes about because of the way of
the merchandise themselves, or the state of products that is important to get a specialized
result or the shape, which gives generous quality to the products;
VIII. A word that is a normally utilized and acknowledged name of any single synthetic
component or any single concoction compound in admiration of a synthetic substance or
arrangement or which is pronounced by the World Health Organization and told in the
endorsed way by the Registrar every now and then, as a global non-restrictive name or
which is misleadingly like such name;
IX. A generic term.

Procedure for Registration

The registration system in India relies on upon the 'first to record' plan. It is thusly basic
that the rights holder applies for the selection of its imprints as fast as time licenses. The
enlistment of a trademark in India routinely takes around 2 to 3 years, subject to the trademark
not being negated by a pariah. The Office of the Controller General of Patents, Trade Marks,
Industrial Designs and Geographical Indications is the best possible office for documenting of a
trademark application in India. This office has branches in Mumbai, Delhi, Chennai, Ahmadabad
and Kolkata. A trademark application may be recorded in any of these work environments in
light of the local domain.39 The application ought to be documented in the Trademark office
within whose jurisdiction the main place of business of the applicant falls within. In case, the

39
Section 2 (2)(c) and Section 18 (1), The Trademark Act,1999

72
main place of business is not in India, then, the rights holder will be required to document an
application through a trademark agent/lawyer. The trademark specialists/lawyer can do a
trademark search, plan, document and arraign applications.40

The following step is to figure out whether there is any deceptively similar mark that as
of now exists on the Register of Trade Marks as kept up in the workplace of the Controller
General. It is worthwhile to note that a typical law hunt ought to likewise be led to find out if
there are any third parties that may as of now be utilizing the trademark.

Review by the Trade Marks Office: After the application has been recorded, the Trade Marks
Office audits it to guarantee that it is finished in all regards and from that point dispenses an
application number to the applications. In the event that the trademark is enlisted, the application
number turns into the enrollment number.

Preparatory Approval and Publication, Show Cause hearing or Rejection of the Application:
During the strategy of examination the Trade Marks Office makes sense of whether the
trademark is expelled for enrollment either under total justification for refusal and/or relative
reason for refusal as recommended in The Trade Marks Act, 1999. Suitably, they issue an
examination report and the candidate must respond to the complaints that have been raised in the
examination report inside a period of one month from the issuance of the examination report.
From that point and in view of the reaction to the examination report that has been documented
by the Applicant, the Registrar of Trade Marks figures out whether the application should be
refused, acknowledged for advertisement, accepted subject to certain limitations or set up for a
“show cause” hearing, amid which the application may be acknowledged, dismissed or
acknowledged subject to specific constraints. In case the application is discarded, the applicant
can move toward the Intellectual Property Appellate Board to appeal against the order of the
Registrar of Trade Marks.

40
Section 18, The Trademark Act,1999

73
Registration: Within four months of the publication of the trademark in the Trade Marks Journal,
should the trademark not be contradicted by a third party, it will continue for registration and the
Trade Marks Registry will in like manner issue a registration certificate.

Term of Trademark Registration: Trademark protection in India is never-ending subject to

restoration of the registration after every 10 years. The application for renewal can be filed six
months before the expiry of the legitimate time of the trademark.41

If the rights holder of a trademark go over a trademark that is deceptively similar to their
mark and which has been published in the Trade Marks Journal they can contradict the impugned
mark within three months of the publication of the journal. The opposition proceedings in India
perhaps started by a party in order to maintain the transparency of the Register of Trade Marks,
paying little respect to whether they have any locus standi. Along these lines, any third party
who is of the view that the advertised mark ought not to be permitted to register can start an
opposition proceeding by filing a Notice of Opposition in the suitable office of the Trade Marks
Office. The Notice of Opposition ought to be sent to the Trade Marks Office in triplicate. It is
crucial to note that amid the opposition proceedings the Trade Marks Office stick to stringent
deadlines and any deferral in filing the Notice of Opposition or evidence will antagonistically
influence the opposition proceedings. In case a registered trademark owned by a third party
encroach the privileges of the rights holder, the rights holder can start cancellation/ amendment
proceedings against the registered owner. Moreover, any trademark that has not been utilized for
five years and three months from the date of registration in India is open to cancellation on the
ground of non-utilization of the mark.

Infringement of Trademarks
The law considers a trademark to be a type of property. Proprietary rights in connection
to a trademark may be set up through genuine use in the marketplace, or through registration of
the mark with the trademarks office of a specific purview. In a few jurisdictions, trademark
rights can be set up through either or both means. There are two sorts of remedies accessible to

41
Section 25 (1), The Trademark Act,1999

74
the proprietor of a trademark for unapproved utilization of its impersonation by a third party.
These remedies are: an action for passing off on account of an unregistered trademark and an
action for infringement in case of a registered trademark. An infringement action and an action
for passing off are fairly dissimilar from each other, an infringement action is a statutory remedy
and an action for passing off is a common law remedy.

Trademark Infringement42 is a violation of exclusive rights associated with a trademark

without the approval of the trademark proprietor or any licensee. A trademark is assumed to be
infringed by a person, who, not being an allowable user, uses an identical/ similar/ deceptively
similar mark to the registered trademark without the approval of the registered proprietor of the
trademark. Notwithstanding, it is relevant to note that the Indian trademark law ensures the
vested rights of a previous user against a registered owner which depends on common law
standards. Under the Indian Law43, infringement of registered trademark occurs when -
I. a registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which is identical
with, or deceptively similar to, the trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner as to render the use of the mark likely
to be taken as being used as a trade mark.
II. A registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which because of-
• its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
• its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or
•  its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark, is likely to cause confusion on the part of the
public, or which is likely to have an association with the registered trade mark.

42
Trademark Infringement, available at http://www.companylawindia.com/trademark-infringement/. (Last visited on
Aug 23rd 2014)
43
Section 29.The Trade Marks Act, 1999, as available at http://newdelhi.usembassy.gov/iprtrademark.html. (last
visited on Aug. 23rd 2014)

75
III. In any case, falling under clause (c) of sub- section (2), the court shall presume that it is
likely to cause confusion on the part of the public.
IV. A registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which-
• is identical with or similar to the registered trade mark; and
• is used in relation to goods or services which are not similar to those for which the trade
mark is registered; and
• the registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute of
the registered trade mark.
V. A registered trade mark is infringed by a person if he uses such registered trade mark, as his
trade name or part of his trade name, or name of his business concern or part of the name, of
his business concern dealing in goods or services in respect of which the trade mark is
registered.
VI. For the purposes of this section, a person uses a registered mark, if in particular, he-
• affixes it to goods or the packaging thereof;
• offers or exposes goods for sale, puts them on the market, or stocks them for those
purposes under the registered trade mark, or offers or supplies services under the
registered trade mark;
• imports or exports goods under the mark; or
• uses the registered trade mark on business papers or in advertising.
VII. A registered trade mark is infringed by a person who applies such registered trade mark to a
material intended to be used for labeling or packaging goods, as a business paper, or for
advertising goods or services, provided such person, when he applied the mark, knew or had
reason to believe that the application of the mark was not duly authorized by the proprietor or a
licensee.
VIII. A registered trade mark is infringed by any advertising of that trade mark if such
advertising-
• takes unfair advantage of and is contrary to honest practices in industrial or commercial
matters; or
• is detrimental to its distinctive character; or

76
 • is against the reputation of the trade mark.
XI. Where the distinctive elements of a registered trade mark consist of or include words, the
trade mark may be infringed by the spoken use of those words as well as by their visual
representation and reference in this section to the use of a mark shall be construed accordingly.

Action for Passing-Off

Passing off is not defined in the Trademark Act. It is referred to in Sections 27(2), 134(1)
(c) and 135 of the present act. Section 27(2) states that the rights of action against any person for
passing off goods as the goods of another person or the remedies in respect thereof. Section
134(1) (c) refers to injunction of courts to try suits for passing off arising out of the use of any
trade mark. Section 135 specifies the remedies available in respect of passing off arising from the
use of a trademark44.

The Trademark is providing protection to registered goods and services, but the passing
off action is providing a protection to unregistered goods and services. The most important point
is that the remedy is same in both the cases but the Trademark is available only to the registered
goods and services and passing off is available to unregistered goods and services. To understand
this in more depth, we examine the case of Durga Dutt v. Navaratna Pharmaceutical45; in this
case the Supreme Court set out the distinction between infringement and passing off. The action
for infringement is a statutory remedy conferred on the registered owner of a registered Trade
mark and has an exclusive right to the use of the trade mark in relation to those goods. And the
passing off is available to the unregistered goods and services. The second most important point
is that the use by the defendant of the trade mark of the plaintiff is not essential in an action for
passing off, but in the case of an action for infringement, this will not apply. The third important
distinction between these two is that if the essential features of the trade mark of the plaintiff
have been adopted by the defendant, the fact that the get up, packing and other writing or marks
on the goods or on the packets in which he offers his goods for sale marked differences or
indicate clearly a trade origin different from that of the registered owner of the mark would be

44
P. Narayana ., “Law of Trademark & Passing Off”, Published by Eastern Law House, Edition: VI (2006)
45
AIR 1965 SC 980.

77
immaterial; but in case of passing off the defendant may escape liability if he can show that the
added matter is sufficiently to distinguish his goods from those of the plaintiff.46
In the cases of infringement the burden always lies to the plaintiff. In the case of S.M. Dyechem
Ltd. v. Cadbury (India) Ltd.47 it was held that an infringement action fails where plaintiff cannot
prove registration or that its registration extends to the goods or to all the goods in question or
because the registration is invalid and yet the plaintiff may show that by imitating the mark
otherwise, the defendant has done what is calculated to pass off his goods as those of plaintiff.

What the plaintiff must establish in a passing off action?

It is essential for success in a passing off action based on the use of a mark or get up that
the plaintiff should show that the disputed mark or get up has become by user distinctive of the
plaintiff’s goods so that the use in relation to any goods of the kind dealt in by the plaintiff of
that mark or get up will be understood by the trade and the public as indicating the plaintiff’s
goods.48

When the passing off arise?

The passing off action arises when there is misrepresentation, when it harms the existence
of plaintiff’s goodwill, when it is made by a trader in the course of trade, which injures the
business of another trader and which causes actual damage to the business or goodwill of the
trader by whom the action is brought49.

But these requirements were reduced to three in Reckitt & Colman Products Ltd. v. Borden
Inc.50. Now, there are three essential requirements for the passing off action:
I. The Claimant’s Goodwill: Although damage is the gist of an action for passing off, but
the plaintiff must show that there is a reasonable reason of his being injured by the
defendant’s action, even if the conduct of the defendant might be calculated to deceive

46
Dr. B.L Wadhera., “Law Relating To Intellectual Property”, p.206, Universal Law Publishing Co., Edition: IV
(2007).
47
2000 PTC 297.
48
Cornish & Llewelyn, “Intellectual Property”, Pg 47 Published by Thomson, Sweet & Maxwell Publication,
Edn.V.( 2005).
49
Hart Tina & Fazzani Linda, “Intellectual property law”, Pg: 12 published by Palgrave Macmillan, Edition: III
(2004).
50
(1990) 1 AII ER 873.

78
 the public. A private individual cannot institute a suit for passing off even if the
defendant practices deception upon the public; unless it is proved that the defendant’s
action is likely to cause damage to the individual.
II. Misrepresentation: Misrepresentation is the simplest form of passing off. If A says
falsely that these goods that I am selling are B’s goods. It is a clear case of passing off. In
simple way we can say that misrepresentation should lead. Or be likely to lead confusion
on the part of consumers. In case of Khemraj v. Garg51, the defendants had copied the get
up, layout, design and colour scheme, etc. and the name “Manavpanchang, Mani Ram
Panchang” and “Shri Vallabh Mani Ram Panchang” of the plaintiff’s panchang. The
court held that it is similar to the plaintiff’s product and interim injunction was granted.In
the case of Rupa & Co. Ltd v. Dawn Mills Co. Ltd.52, the defendant manufacturing an
underwear named ‘dawn’ as similar to the plaintiff’s manufactured underwear ‘don’ ,
created confusion in the minds of people because the layout, get up and colour
combination was same to the plaintiff’s product.

III. Damage: Damages are available in a passing off action. And remedy is available in both
cases whether the infringement suit or passing off action.

Nevertheless in case of comparative advertisement person’s product does not request to create
his own good alike to the disparaged product; however relatively, on the other hand, seeks to
differentiate his goods as of the disparaged product. The aim of denigration is to create the
‘disparaged product’ emerge to be like close to / alike to the product of the contender. The
contrast, consequently, in cases of ‘passing off’ and ‘disparagement’ are dissimilar. The law as
of today is that, all traders are allowed to puff their goods, even although such puff as a matter of
fact entails denigration of opponent’s goods. Passing off is a unlawful incursion of property
vested in the plaintiff; but the belongings which is sheltered by an action for passing off is not
the plaintiff’s proprietary right in the name or garb which the defendant has embezzle except the

51
AIR 1975 DEL 130.
52
1999 PTC 334(GUJ).

79
goodwill and reputation of his commerce which is possible to be debilitated by the defendant’s
falsification.53

Remedies Available
The Trade Marks Act, 1999 presents for together civil and criminal remedies. With the
approaching in dynamism of the Act, a novel appellate body known as the Intellectual Property
Appellate Board has been formed. Pleas from the Office of the Controller General of Patents,
Trade Marks, Industrial Designs and Geographical Indications at present go to the Appellate
Board in place of the High Courts. This was made with the rationale of dropping the
accumulation of cases and for escalating intellectual property proficiency at the Appellate level.
I. Civil Litigation
A suit can be started either under the laws of passing off or for infringement under The
Trade Marks Act, 1999 depending on whether the trademark is unregistered, pending registration
or registered respectively.54
• Jurisdiction and Venue: The suit for passing off and/or infringement can be started either
in the District Court or in the High Court contingent upon the valuation of the suit. The
suit can be at the place where the rights holder or one of the rights holders in fact and
willingly reside or work for gain or carries on business.
• Elements of the Complaint: In the Complaint the rights holder is necessary to show that
(a) the supposed infringing act includes a mark that is identical or similar to a trademark
of the rights holder; (b) the infringing representation of the trademark is being utilized in
connection with goods or services and may direct to confusion in public concerning the
origin of the infringing goods/services; (c) the unlawful act obstruct with the trademark
holder's rights of restricted use or cause the rights holder financial loss.
• Statute of Limitation: As a general strategy in India, as is recommended in the Limitation
Act, the rights holder has a time of three years from the cause of action for filing the suit.
Though, as trademark infringement is a ongoing offence and the infringer infringe the
exclusive proprietary right of the rights holder every time he commits a discreet
infringing act, the infringing period will run once more with each new act. Nonetheless, it

53
See Colgate-Palmolive (India) Limited v. Anchor Health and Beauty Care Private Ltd., 2009 (40) PTC 653 (Mad)
54
Section 135, The Trademark Act, 1999

80
 is prudent that the lawful action be started against the infringer as easily as probable in
order to ascertain the gravity of the rights holder’s intention before the Court.
• Ex-parte Interim Injunction: Most Indian courts will give ex-parte interim injunctions.
Ex-parte interim injunction is a temporary injunction ordered without any notice to the
infringer controlling him from utilizing the infringing mark amid the pendency of the
trial. This injunction is ordinarily allowed at the early phases of the trial and numerous
times on the primary date of hearing itself, gave that the rights holder can build up its
rights before the Court and proves the gravity of the offence.
• Appointment of the Local Commissioner: Depending on the truths of the case it is
additionally prudent to request the Court to sign up a local commissioner on the first date
of the hearing who will search the premises of the infringer where the infringing goods
are kept with a specific end goal to confiscate the goods.
• Damages: There has been an amendment in the Indian legal framework as of late with a
portion of the courts allowing damages to the rights holders. Be that as it may, such cases
are still not many and far between and the amount of damages not considerable. One of
the landmark pronouncement honouring damages for infringement of trademark was the
case of Time Incorporated v. Lokesh Srivastava and Anr.55 In this matter the Delhi High
Court awarded INR 5 lakhs (approximately $12500) for the Plaintiffs and against the
Defendants on account of damages to the goodwill and reputation of Time Incorporated.
The Court additionally passed a decree of INR 5 lakhs (approximately $12500) in favour
of the Plaintiffs and against the Defendants as penalizing and exemplary damages for
blatant infringement of the Plaintiffs’ trademarks and copyrights by the
Defendants.56

II. Criminal Litigation

The Trade Marks Act, 1999 gives solution for infringement under the criminal laws too.
Under the current legislation, the police have the authority to suo moto conduct search and
seizure operations. Be that as it may, the utilization of such powers by the police is minimal.

55
2005 (30) PTC 3 (Del)
56
Introduction to Trademarks, as available at http://newdelhi.usembassy.gov/iprtrademark.html. (last visited on
Aug. 23rd 2014)

81
Under the criminal laws, as the rights holder is not know about the subtle elements (name,
address, dates of infringement, etc.) of the infringers, it is prudent to obtain a general pursuit and
seizure warrant from the nearby judge and from that point arrange look and seizure operations
around there. In the choice, if the rights holder knows about the details of the infringer, a
grievance can be lodged with the police establishment and raids prearranged consequently. In a
criminal proceeding the prosecution is between the State and the infringer and subsequently the
rights holder has a restricted role to play. The most extreme detainment that an infringer can get
under the Trade Marks Act, 1999 is up to three years with a fine of up to INR two lakhs.
However, criminal sentences are uncommon. 57

III. Provisions under the Customs Laws

Other than the common and the criminal remedies specified above, there are additionally
more provisions under the trademark law and the customs law which preclude the importation of
infringing merchandise in India. The Customs Authorities have as of late proclaimed rules
known as the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, under
which the rights holder can record their registered trademarks with the Customs authorities.
These rules approve the Custom authorities to seize merchandise infringing the trademarks of the
rights holder at the outskirt without acquiring any orders from the court. Under these rules, the
Custom authority have started a recordation framework utilizing which the rights holder might
give a notice in writing to the Commissioner of Customs or whatever other Customs officer
approved by the Commissioner at the port of import of infringing products asking for the
suspension of clearance of goods associated to be infringing the trademarks with the rights
holder. Consequent to the filing of such notice, the Commissioner will undoubtedly tell the rights
holder inside of the recommended time in regards to the acknowledgment or dismissal of this
notice. If there should arise an occurrence of acknowledgment of the notification, the ordinary
time of legitimacy of such registration is one year amid which help will be rendered by the
Customs authorities to the rights holder to preclude the importation of infringing products at the
edge. After the stipend of this registration the importation of products that infringe the rights
holder trademarks are regarded to be disallowed, as has been characterized under The Customs
Act, 1962. The Customs officer have the power to suspend the clearance of such precluded

57
Section 101 to 121, Trademark Act,1999 deals with offences and penalties relating to trade marks

82
products either at the data got by the rights holder or by starting suo moto action, if they have
prima facie evidence or rational grounds to trust that the imported goods are merchandise
infringing the trademarks of the rights holder. After the clearance of the suspected products is
suspended the Customs powers need to illuminate the rights holder of the same and the rights
holder should not execute the requisite bond and join the proceedings against the importer within
the prescribed period the Customs powers will discharge the suspended merchandise. These
principles additionally engage the Custom officers to demolish the suspended merchandise under
official supervision or arrange them outside the ordinary channels of business after it has been
resolved that the products confined have infringed the trademarks of the rights holder and that no
legal proceeding is pending in connection to such determination. These principles likewise
preclude the re-exportation of the products infringing trademarks in an unaltered state.

A Detail Scrutiny of Trademark Law Provisions on Comparative Advertising

This part discusses in detail the relationship between Trademark Act, 1999 and
Comparative advertisement. It further analyze various cases on comparative advertising are dealt
within the ambit of trademark infringement. For the same Section 29(8) and Section 30(1) is
examined in detail.

The law on comparative advertising and product disparagement, in connection to

trademarks, in India, is based upon the law as set down in Irving's Yeast Vite Ltd v FA Horse-
nail58wherein it was reasoned that utilization of another's trademark in comparative
advertisement does not sum to infringement. The above discourse just gives a coarse structure
for comparative advertisement in India; it doesn't manage the idea in incredible point of interest.
For this we have to go for a more profound examination of comparative advertisement in the
statutory foundation of Indian Trade mark Act, 1999.

The Trademarks Act, 1999 attempted to endeavor a harmony between two conflicting
interests i.e.; rights of registered trade mark proprietor on one hand and on the other hand the

58
(1934) 51 RPC 110. In the present case the plaintiffs were the registered proprietors of the trade mark "Yeast-
Vite", and they claimed that the defendant's use of that word in the way described amounted to an infringement. The
House of Lords rejected that claim on the ground that the defendant's use of the mark was not for the purpose of
indicating the origin of his goods and, therefore, did not infringe the right conferred upon the plaintiffs as registered
proprietors of the trade mark under the statutes then in force.

83
consumer interest on comparative advertising. It has made provisions managing honest
utilization of contender's trademarks and use of any trade marks in business papers,
correspondence and publicizing, both in talked and visual configurations. Section 29(6) to 29 (9)
are essential development of the infringement provisions in connection to methods of utilization
of trademarks, specifically, to their use in commercials.

According to section 2959(1) of the Trademarks Act 1999, a registered trade mark is
infringed by a person who, not being registered proprietor or a person using by way of permitted
use in the course of a trade, mark which is identical with, or deceptively similar to the trade mark
in relation to goods or services in respect of which the trade mark is registered and in such a
manner as to render the use of the mark likely to be taken as being used as a trade mark. Section
29(8) of The Trademarks Act, 1999 is thought to be integration of laws of unfair competition and
unfair trade practices, has set parameters for when the utilization of a trademark in advertising
can constitute infringement. In the meantime Section 30 (1) makes comparative advertising an
exception, to acts constituting infringement under Section 29. Comparative advertisement
constitutes trademark infringement if it is without due cause takes unfair advantage of, or is
detrimental to, the distinctive character or repute of the trademark60

Section 3061 (1) of the Trademarks Act 1999 in effect permits comparative advertisement,
stating that nothing under the section 29 shall be avert the use of Trade Mark by any person with
the purpose of identifying good or services as those of the proprietor provided the use:
I. is in accordance with the honest practice in industry;
II. is not such as to take unfair advantage of or
III. be detrimental to the distinctive character or repute of the trade mark.

Section 29 (8) of this Act explains what form of advertisement amounts to infringement if
such advertising:
I. take unfair advantage and is contrary to honest practice in industrial or commercial
matters;

59
Section 29, Trademarks Act,1999 deals with provision relating to infringement of registered trademarks
60
Jeremy Phillips, “Trade marks at the limit”, p.242 Edward Elgar Publishing,, (2006).
61
Section 30 (1) of the Trade Mark Act 1999, deals with Limits on effect of registered trademark.

84
 II. is detrimental to its distinctive character;
III. is against the reputation of the trademark.
An assessment of the legislative provisions divulges that as long as an advertiser uses a
registered trademark, however, demonstrating that he doesn't fall under the realm of any of the
provisos of Section 29(8), he might keep on following comparative advertising.62In this manner,
non honest practices or the use of trademark that is detrimental to the reputation or
distinctiveness of the mark is the lone ground of infringement.
Given beneath is a comprehensive scrutiny of the above said idea:

“Honest practices”- Escape Route for Comparative Advertising

Comparative advertising seeks to autonomously and honestly inform the consumer or
make the consumer alert, supports straightforwardness in the business sector, consummation in
costs and stimulating so as to enhance nature of product competition. Consequently, it is
indispensable to guard the interests of such contenders by not permitting comparative advertising
to bring about uncertainty, deceive, or dishonor a competitor’s product.63

The expression “honest practice” is nowhere clear. By its exceptionally nature; the idea
must tolerate certain amount of flexibility. Its definite shapes might shift every once in a while
and as per circumstances and also the changing view of what is adequate.64 According to Kerly,
the term ‘honest practices’ is a hybrid derived initially from the Paris Convention (article 10 bis),
“honest practices in industrial and commercial matters” (and now in article 6 of the Trademarks
Directive of European Union) and words found in articles 4 and 5 of the Directive
97/55/EC.65The idea of ‘honest practices’ is described as an expression
“an obligation to act reasonably in connection to the rightful benefit of the trademark
proprietor”, and the intent is to “reconcile the primary interests of trademark protection
with those of free movement of products and freedom to provide services in the common
market…in a manner that the trademark rights can satisfy their crucial part in the
arrangement of undistorted rivalry.”66

62
Manisha Singh Nair, “Comparative advertising in Indian legal regime”, Entertainment Law Review,(2009).
63
Arvind Thapliyal, “Comparative advertising; Indian Perspective” pg .15, Newsletter, Indian Legal Impetus,
Vol.V, Issue III.
64
K.C. Kailasam, “Law of Trademark & Geographical Indications: Law & Practice”,421 Wadhwa & Nagpur(2003)
65
Kitchen, Kerly, “Law on Trademarks and Trade Names” p 366, 13th Edn (Oxford, London).
66
Ashwani Kr. Bansal, “Law of Trade marks in India with Introduction to Intellectual Property”, Pg 507, 3rd Edition
(2014)

85
 Further, the issue whether a specific advertisement is ‘honest or not’ is significantly an
open ended question and is to be chosen from the point of view of a reasonable consumer i.e.
whether a reasonable consumer dare to overlook assertions that are considered to be overstated,
exaggeration, would be possible to say that the advertisement is honest.67 There is, however, a
huge and plainly shared center idea of what constitutes honest demeanor in trade, which might be
applied by the courts without immense intricacy and with no extreme threat of extraordinary
swerving explanation.68 Statutory or industry concurred sets of principles are not adequate aide
in respect to whether a practice is honest for the purposes of Section 29 (8) and Section 30 (1).
Honesty must be determined against as what is rational for the related public of advertisements
for the goods or services in use.69 Additionally, the burden of proof stays upon the trademark
owner that the unlawful use of his mark is not honest, and not upon the user of the mark.70

In the historic English case of Barclays Bank Plc v. RBS Advanta71, it was observed by
the court that: the essential target of Section10 (6) was to permit comparative advertising insofar
as the utilization of competitor’s mark is honest. The test of honest practices is an objective one
and it relies upon whether such use might be well thought-out to be honest by members of a
reasonable viewers. Simple trade puffery which might likewise be uncomfortable for the
proprietor of a registered trademark does not bring the advertisement into the domain of
trademark infringement.72

In this way the expression honest practices in business/trade matters must be seen from
the two perspective of neutrality. To begin with is the viewpoint of a reasonable individual in the
trade i.e.; whether he will believe that the said use is in the honest mode in the wake of knowing

67
Uphar Shukla, “Comparative Advertising and Product Disparagement vis-a-vis Trademark Law”, p.412, Journal
of Intellectual Property Rights, Vol II Nov. (2006).
68
“It appears to be now well settled that the test of honesty for the purpose of the proviso is one that has to be
judged by an objective standard, and in my judgment the appropriate question to be asked in relation to that test in
the present case is whether a reasonable motor service provider would think the use complained of in the present
case to be honest, or rather, in accordance with honest practices in that business.” Aktiebolget Volvo v Heritage
(Leicester) Ltd., F.S. R (2000)253.
69
Manisha Singh Nair, “Comparative advertising in Indian legal regime”, Entertainment Law Review, 2009.
70
Ibid.
71
(1996) RPC 307
72
Pepsico Inc. vs. Hindustan Coca- cola, (2001) PTC 699 (Del.).

86
totally well about the trade and furthermore from the point of view of the practices common in
the business, which implies that what the alternate persons/proprietors are doing in the same
trade and if there is a build up practice in the business to utilize such expression in the specific
way, then it would not be unjust to name that practice as honest.73 Under comparative advertising
also these two parameters is looked upon to declare a particular advertisement as legal and
reasonable.

Use should not be ‘detrimental to the distinctive character or to the repute’ or ‘take unfair
advantage of the Trade mark’
The words 'detrimental to the distinctive character' refer to dilution by blurring, while the
words 'detrimental to the repute', refer to dilution by Tarnishment. Dilution by blurring takes
place where a trade mark is utilized by persons other than the registered proprietor in connection
to a variety of different products. This prompts the trudging consumer disassociation of the mark
from the owner’s products. Thus, the distinction and business appeal of the trade mark gets to be
dissolved and is inevitably annihilated. Tarnishment, on the other hand happens where the trade
mark is utilized as a part of connection to substandard products, or where it is utilized as a part of
a hostile or negative setting. This prompts an antagonistic affiliation appending to the mark and
subsequent disintegration of the repute of the mark.74

By and large, the law on this facet of comparative advertising is that it is neither
trademark infringement nor unfair competition to really look at contending items in advertising
and in doing as such to distinguish by trademark, the contender's merchandise. Nonetheless, such
comparative advertising won't be allowed on the off chance that it is prone to confuse purchasers
with reference to what they are getting i.e.; detrimental to its distinct character.75Any damage
depended on by a trade-mark proprietor must be generous as it is liable to bring about

73
Radico Khaitan Ltd. Vs Carlsberg India Pvt. Ltd, 2011 (48) PTC 1 (Del) it was further observed by the court that
Honest practices in the industry/ industrial or commercial matters have to be examined objectively and not
subjectively for which it can be tested on two-fold basis:- i) Reasonable man having knowledge in the trade. ii)
Practice prevalent in the respective industry. Also see Hawkins Cooker Ltd Vs Murgan Enterprises, MIPR 2008 (1)
128.
74
BR Rutherford, “Trademarks and comparative advertising”,npg. 179, The Comparative and International Law
Journal of Southern Africa, Vol. 43, No. 2(JULY 2010),.
75
See Reckitt & Colman Of India Ltd. vs Jyothi Laboratories Ltd. & Ors, (1999) 2 CALLT 230 HC, Godrej Sara
Lee Ltd. v. Reckitt Benckiser (I) Ltd., 2006 (32) P.T.C. 307. Durga Dutt Sharma v. Navaratna Pharmaceuticals
Laboratories MANU/SC/0197/1964 : (1965) 1 SCR 737

87
considerable damage to the uniqueness or notoriety of the trade mark. For instance, the trade-
mark proprietor could demonstrate that the advertisement includes false or disparaging
articulations which are prone to negatively affect the picture or repute of the mark.76

Also, it is seen that the implications of the expressions ‘in accordance with honest
practices’ and ‘is not such as to be detrimental to repute of the trademark’ have all the earmarks
of being interwoven, any examination, which causes damage to the standing of a trademark
proprietor, ought to be deceptive. In the meantime, while making a correlation a dealer can't say
that the products of a contender are undesirable or awful in light of the fact that would sum to
criticizing or slandering the contender and his merchandise, which would not be in accordance
with honest practices, as it would be detrimental to the reputation of a trademark.77 In the event
that, if no critical reference has been made, no activity lies against the advertiser, regardless of
the possibility that the promotion does not contrast like and like and is untrue, as an
advertisement must be 'fundamentally deceptive' keeping in mind the end goal to be
untrustworthy. In this way in the event that, the substance of the correlation stays genuine, the
fact that representation is ‘literally false’ won’t render the advertisement deceitful, On the other
hand, if the representation is ‘materially false’, it would be unfair.

Unlike the idea of detriment to the distinctive character or repute which requires a
dwindling of the distinctive ability or repute of the trade mark, taking unfair advantage includes
the gradual addition to the infringer of some advantage or showcasing advantage spilling out of
the said mark. The proprietor must demonstrate that the infringer has made an association in the
psyches of consumers between the registered trade mark and his infringing mark, which has lead
to shift of reputation from the registered trade mark to the goods of the infringer that would
augment the trade of the infringer's products.78 The advantage must not only be unfair; it must be
of a critical degree to warrant the limiting of non-confounding use.79

76
See Karamchand Appliances Pvt. Ltd. v. Sh. Adhikari Brothers, 2005(31) PTC 1. On similar lines was the case of
Eureka Forbes Ltd. and Anr. Vs. Pentair Water India Pvt. Ltd. ,2007(4)KarLJ122
77
Uphar Shukla, “Comparative Advertising and Product Disparagement vis-a-vis Trademark Law”, p. 407, Journal
of Intellectual Property Rights, Vol. II Nov.(2006).
78
Reckitt Benckiser (India) Limited v. Naga Limited & Others, 2003 (26) PTC 535 (Del.)The court observed that
“there is no impediment to a trader employing any means possible, provided such means are fair, to increase his
sales, even at the cost of its competitors. But the law does not permit any person to use unfair means or practices to

88
 In instances of comparative representation the idea of unfair trade practices incorporate
any endorsement of goods or services that misleads or gives fake information regarding the
products or services of another person. Few more instances of unfair trade practices incorporate
the approval of any unfair or deceptive ways or practices in the representation of products and
services. As examined in the preceding chapter, the whole idea of ‘disparagement of goods of
another person’ therefore, stream from Section 36A of Monopolies and Restrictive Trade
Practices Act, 1969.
The concept of disparagement and its relation with trademark law is discussed below:

Concept of Disparagement
“Mine is best, yours is no good!” this inevitably incriminate disparaging of rivals goods
or services. As per the Merriam Webster’s Dictionary “disparage” means “to lower in rank or
reputation”, “degrade” or “to depreciate by indirect means, as an invidious comparison”. The
Black’s Law Dictionary describes the word ‘disparage’ as meaning “to connect unequally” or “to
dishonor something or someone by comparison” or “to unjustly discredit or detract from the
reputation of another’s property, product or business” or a “false and injurious statement that
discredits or detracts from the reputation of another’s property, product or business”.80 In the
most recent couple of years, advertisers have turned out to be all the more eager to contrast their
items with that of their competitors and most of the time, the contending item is unequivocally
named. At the point when an advertiser takes part in such making so as to publicize false
articulations about his rival or his rival's items, he might cross paths with the basic law
representing defamation and disparagement.81 Commercial disparagement is a common law tort
firmly identified with defamation. It has been characterized as a false proclamation expected to

gain and profit to the detriment of his competitors. Such unfair means or practices include disparaging
advertisements/slander of goods.”
79
Manisha Singh Nair, “Comparative advertising in Indian legal regime”, Entertainment Law Review, (2009). Also
see In L'Oréal SA,Laucóme Parfums et Beauté & Cie SNC and Laboratoire Garnier & Cie v Bellure NV, Malaika
Investments Ltd and Starion International Ltd [2009] EUECJ C^87/07 (18 June 2009).
80
Garner Bryan, A Black’s Law Dictionary, 7th edn (West Group, Minnesota) 1999.
81
Stewart E. Sterk, “The Law of Comparative Advertising: How Much Worse Is "Better" than "Great", pg.88
Columbia Law Review, Vol. 76, No. 1 (Jan., 1976).

89
raise doubt about the nature of a contender's goods or services with a specific end goal to
dispense pecuniary harm.82It just means knocking off contender’s product as being no good.83

Product disparagement is firmly identified with false advertising. At common law,

deception about one's own particular item falls in the domain of false advertising tort and
distortion about another’s product in the sphere of product disparagement.84 Disparagement is
recognizable from different sorts of false advertising in that, it by and large includes throwing
slanders on the nature of goods or service of another. Regardless of this fundamental
qualification, commercial disparagement and false advertising have the same impact, i.e., one’s
goods or services are erroneously introduced to the potential clients in a more ideal light than
85
those of another For setting up of false advertising a deceptive statement of fact about a
product or service which really mislead or tends to mislead a generous section of crowd to whom
the advertisement is directed is made by the advertiser. The deception must be material in that it
is prone to manipulate consumers’ purchasing choices and there is a solid probability of the
opponent being harmed as a consequence of such advertising.86

Regulation of Disparagement in India

‘Disparaging advertising’ as an idea was first taken up in the now revoked the
Monopolies and Restrictive Trade Practices (MRTP) Act of 1964, here Section 36A
characterizes unfair trade practices, sub section (1)(x) specifically bargains straightforwardly
with the idea of ‘disparaging advertising’ and peruses as in this way: (x) gives false or
misleading facts disparaging the goods, services or trade of any other person. But now the
legislation has been repealed by the Competition Act of 200287 In any case, now the enactment

82
Picker Int’l, Inc. v. Leavitt, 865 F. Supp. 951, 964 (D. Mass. 1994) quoted in Julia Huston & Sarah C. Peck,
“Defamation, Commercial Disparagement, and False Advertising”, § 9.2.5, 9–6, Business Torts In Massachusetts
83
Jeerome G. Lee, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71 Trademark
Rep. 620 (1981).
84
Graeme B. Dinwoodie & Mark D. Janis, “Trademarks & Unfair Competition Law Policy”, Pg 525-528. Fourth
Edition, Aspen Publishers, New York.
85
Id at 528
86
Julia Huston & Sarah C. Peck, “Defamation, Commercial Disparagement, and False Advertising”, Chapter 9,
Business torts in Massachusetts, 1st Edition , 2002, § 9.2.5, 9-6.
87
It is pertinent to note the while the MRTP Act stands repealed now, this does not affect the law in substance to
change since the MRTP Act will still be applied but not by the MRTPC but either by CCI (Competition Commission
of India), the Appellate Tribunal under the Competition Act or the National Commission under the Consumer
Protection Act..Also see Section 66, the Competition Act of 2002

90
has been cancelled by the Competition Act of 2002 cases documented before the Monopolies and
Restrictive Trade Practices Commission are at present being dealt by the Competition
Commission of India convey a specific mention as Monopolies and Restrictive Trade Practices
case and it is in this manner simple to separate between the transferred cases and the new cases
to precede the Appellate Tribunal. Varca Druggist v. Chemist & Druggist Association88 is one
such case to be chosen by the Competition Commission of India in 2012 which was started
before the Director General under the Monopolies and Restrictive Trade Practices Act in 2009.
Fascinatingly enough, while according to law, the case ought to have been determined on the
premise of the cancelled Act, it has actually been decided as per the Competition Act.89

In Colgate Palmolive India Ltd. v. HLL90', the Court set out that all together for Section
36A (1) (x), Monopolies and Restrictive Trade Practices Act to be pulled in, the accompanying
conditions must be fulfilled in the confirmatory-

I. Is the representation disparaging in nature?

II. (a) Is the statement false? or,
(b) Is the impact of such a representation on the common man such that he would be
deceived?

The tests in India contrast somewhat from those in England in so far as there is no added
necessity of malevolence with respect to the litigant 91

False Claims:
It has been apprehended that a representation is false, on the off chance if it is false in
matter and in fact. Regardless of the fact that the representation experiences minor mistakes yet it
is all in all steadfast image of the crucial facts then no deception is acknowledged92. It must be

88
MRTP CASE NO. C-127/2009/DGIR (4/28) JUNE 11, 2012 The Competition Commission of India (CCI) has
found Chemist & Druggist Association, Goa (CDAG) in violation of the provisions of the Competition Act, 2002
which deals with anticompetitive agreements.
89
Apurv Tyagi, “Disparaging Advertising and the Media War”, India Law Journal, Vol. 6 Issue.1, Available at
http://indialawjournal.com/volume6/issue_1/article9.html. (Last visited on Aug.23rd 2014)
90
1997 (5) CTJ 421.
91
De Beers v. International General Electric, [1975] 2 All ER 599.
92
Lakhan Pal v. MRTP Commission, 1989 (3) SCC 251.

91
remembered that ambiguous representations made, for example those guaranteeing that the
advertiser's product is the best and so forth would not be viewed as false under this section. An
illustration of the utilization of false data is the case of Director General (Investigation &
Registration) v. Shakthi Publications93, where the litigants in print advertisement assert that their
magazine would give better worth for cash for advertisers as against the plaintiff's magazine.
They construct their case in light of the way that however the two magazines had practically
identical circulation figures, their magazine had the benefit of less expensive promoting rates.
The offended parties could demonstrate that they appreciated a much more extensive readership
than the magazine of the litigants and in this manner the case of the respondents was patently
false. The Court held that the very fact that the defendants had asserted that advertising in their
magazine gave better value for money suggested that advertising in the offended party's
magazine would be less gainful. The Judge presumed this was an unmistakable instance of
disparagement and the respondents were accountable of indulging in unfair trade practices.

A worry has been communicated that if the Court were required to discover the
correctness of the reprove explanations, "...they would be turned into machinery for advertising
rival productions by obtaining a judicial determination on which of the two was better"94. This
conflict was rejected in De Beers95. The courts would just be choosing whether the particular
disparaging statement is or is not genuine, and would not be giving a verdict on which of the
products is better.

Deceptive Claims:
The issue whether an advertisement is ambiguous or not is to be responded by seeing
whether it directs a reasonable person in the place of the buyer to an incorrect ending. In V-
Guard Industries Ltd. v. Pushkar Appliances (Pvt) Ltd.96, the advertisers had depended on data,
which has prima facie deceived the consumers. The company had guaranteed their refrigerator

93
(1999) CTJ 357.
94
White v. Mellin, 1895 AC 154.
95
It was rightly held that "the Court will not become a forum for advertising the plaintiff’s wares by means of a
judicial determination. All that the Courts will decide is whether a specific statement, which may be express or
implied, made concerning the plaintiffs good or services is or is not untrue."
96
1999 CTJ 366.

92
voltage stabilizer have certain "special traits". These components were ended up being available
in other voltage stabilizers too. The Court conceded a provisional injunction to the plaintiffs,
controlling the respondents from utilizing the above commercial.

Another illustration would be In the Matter of Kinetic Honda Motors Ltd.97 a commercial
was discharged by Kinetic Honda setting out the prerequisites of registration under the Motor
Vehicles Act and it was asserted that just Kinetic Honda met these requisites. It was apprehended
that this assertion was false and deceptive because not every element said in the commercial
were prerequisites set down under the Motor Vehicles Act. The Court held that the aggregate
impact of the promotion was to pass on the feeling that bikes other than Kinetic Honda will
undoubtedly arrive up in boundless registration issues.

There might be situations where the ad is disparaging, however, genuine and in this way
not significant. This is likewise called the "Defense of Truthful Disparagement"98. This
resistance has been joined into the area itself. The segment requires that the disparagement ought
to be false or deceiving. In the event that the announcements were false, there would be no
trouble in holding the company liable for indulging in unfair trade practices. Notwithstanding,
the act of telling the client that an adversary's item has or does not have a specific element or
quality, regardless of the fact that it is true, may still have the impact of confusing customers.
This is for the reason that in indicating and highlighting the limitation in the rival's product, the
advertiser is more than likely to overlook its qualities

Notwithstanding when the promoter is coming clean, he may not tell every bit of relevant
information. Case in point, a cigarette maker might be exact in telling customers that his
cigarettes contain less nicotine than the results of a predefined rival. Yet the same producer will
neglect to specify that different elements of tobacco smoke like ammonia gas, carbon monoxide,
and so forth are a greater number of damaging than nicotine and that his opponent's cigarettes
contain less of these.

97
1994 (2) CTJ 157.
98
John Wolff, "Unfair Competition by Truthful Disparagement", 47 Yale Law -Journals 1304 (1938).

93
 In HLL v. Marico Industries99, the complainant sold coconut based hair oil called "Clinic
Plus" while the respondent sold edible coconut oil called "Parachute". The respondent came up
with a commercial, that says "... when they say 'Plus' they mean 42% coconut oil and 58%
paraffin and when we say parachute we mean 100% coconut oil. When you use coconut oil don't
use diluted but buy 100% pure";

It was argued that this was not a false or deceptive statement, as the assertion was correct.
The Court applying the tests set down in the Lakhanpal's case100 held that the impugned
advertisement might pass on an impression to a sensible man that the item sold by the
complainant is not unadulterated. This is not correct as most hair oils, which utilize coconut oil
as their base, likewise contain fluctuating measures of paraffin. Paraffin is a normal ingredient. It
can't be viewed as an adulteration since paraffin is found even in the hair oil sold by Marico
Industries itself. It was held that the correlation was unjustifiable since the two items were not
comparable as for their uses, and consequently had the impact of misdirecting consumers.

Along these lines, a representation containing a statement actually correct in the

industrial sense might have the impact of confusing the buyer by means of complicated lingo

The Disparaging Claim: Setting up the False or Misleading Element

The disparaging representation should be either false or deceiving, to go under the
domain of Section 36 A (1) (x). Consequently, it is the obligation of the Court to choose whether
the case is untrue or deluding, before liability can be imposed. For the most part, the offended
party is required to set up that the representations were disparaging in connection to his goods, as
well as false or deceiving. In Johnson & Johnson v. P&G Ltd.101 the Court held that the
offended party had not discharged his burden of proving that the representations were ambiguous
in character. For this situation, the respondent contrasted its products with low-priced brands of
sanitary napkins in a TV commercial. The impact of the advertisement was to pass on the feeling
that despite the fact that Whisper was more costly, it was better. It was argued that this deluded
the customers by anticipating that less expensive napkins were of a second rate quality. The

99
1999 CTJ 412.
100
Lakhan Pal v. MRTP Commission, 1989 (3) SCC 251.
101
1999 CTJ 244.

94
offended parties led tests in their labs to demonstrate that the nature of the napkins was
significantly the same. Be that as it may, the Court held that these tests were not dependable and
consequently declined the application for interim relief.

In any case, now and again the Courts have held that it is for the advertiser who has made
the case to substantiate such cases. What must be borne in mind a top priority in such cases is
that the representations that had been made were of a dubious nature. The underlying principle is
that when the claims are unclear, it would be tough for the aggrieved party to show their
deceptiveness. Be that as it may, these cases could in any case have the impact of deceiving the
purchaser.

The advertiser might likewise make particular correlations and claim predominance for
his items on the premise of certain data, which is inside of his restrictive possession102. In this
way, a parallel could be attracted to the guideline of res ipsa loquitor", which is broadly utilized
as a tort lawsuit. Hence, in such circumstances, it is even handed to shift the burden on to the
respondent.

Finally, when both sides have depended on the proof of their own investigative specialists
to demonstrate their cases, the Court, with a specific end goal to determine this deadlock, has
ordered a board of specialists to go into the rightness of opponent cases and give its opinion to
the Court.

A critical case on this point in India is the situation recorded by Colgate Palmolive v.
103
Hindustan Lever Ltd. with respect to the commercial of their item - Pepsodent. Both the
parties had gathered proof of specialist- HLL to sustain its claim, and Colgate Palmolive to rebut
it. These assessments were clashing and since the Commission had no machinery of its own to

102
Director General (I&R) v. MIS Fusion Polymers Ltd., 1995 (3) CTJ 181. The respondent was a manufacturer of
fusion plastic tanks. He released an advertisement, which claimed superiority in six critical features in his tanks over
those of Sintex. One of the claims made was that his product was manufactured according to British standards. The
respondent could not produce anye documentary evidence to support his claim of meeting the British standards of
manufacturing. It was held that this amounted to disparagement.
103
1997 (5) CTJ 421.

95
authenticate the claims of the parties, it requested the setting up of a board to investigate the
different cases that had been made.

Trade Puffery or Disparagement?

It is to a certain extent established that simply hyping or distortion of the general
favorable circumstances of one's own items is not offensive where the representations are
genuine or even under the least favorable conditions constitute mere puffing. For the most part,
evident untruths or overstatements expected to delight or get the attention of the customer are
admissible given that they are unmistakably to be seen as amusing or hyperbolic and not prone to
be comprehended as making exacting or deceiving claims for the advertised product. In any
case, particular articulations about supreme qualities or prevalence are actionable when false or
misleading as the deception of cases transgresses the customary limits of puffing.104

In disparagement, puffing includes a correlation between the two items. For whatever
length of time that the examination endeavors principally to upgrade the nature of the
advertiser’s goods without being unduly condemning of the contender's item, there is no
disparagement.105 At the point when a advertiser while putting forth examinations makes false
expressions about the contender or his items' in this way tending to harm his reputation or
reduces his admiration, goodwill, certainty or regard in which he is held, then disparagement is
said to be done. It tends to dishonor or diminish the reputation of another's property, item or
business.

Ordinary countless ads, that praise and celebrate items, show up. However, not every one
of them disparages the rival's product so as to influence the buyers' decision. Such commercials
just sum to 'trade puffery' and are well inside the lawful perimeters put by Section 36 A (1) (x),
MRTP Act.

104
Smith Victor Co. v. Sylvania Electrical Products, Inc. 242 F Supp 302, 309, 149 USPQ 701, 705 (ND III 1965)
quoted in Jeerome G. Lee, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71
Trademark Rep. 620 (1981).
105
Id as above

96
 The most important judgment on this point in England is the case of De Beers v.
International General Electric106. The Court observed that a trader is permitted to puff goods in
his possession, regardless of the possibility that such puff impliedly includes the denigration of
his rival's goods. The test concern was whether a reasonable man would take the claim being
made just like a genuine claim or not. It further went ahead to delineate its point by an instance.
If three adjoining tailors put up notices in their respective windows reading: "the best tailor in the
world", "the best tailor in this town", "the best tailor in this street", none of the three can be held
to have committed an actionable offence. In this specific case, the respondents construct their
case with respect to what were implied to be exploratory tests. In this way, the Court presumed
that they more likely than not proposed the data to be considered important and it was not an
unmoving puff.

Indeed, even in India, the Courts have deciphered this procurement generously to
accommodate trade puffery. In the Federation of Parenternal Manufacturers of India v. Core
Parenternal Ltd.107 the respondent attested that the technology utilized as a part of its item was
the most recent and the most modem and had various focal points over the prior advances. The
Court held that this merely added up to praising one's item. It likewise held that disparagement is
a more grounded word and more extensive than basic cases of superiority. Disparagement
suggested disparaging or running down or painting another's goods in an adverse light. In this
specific case, the respondent had not transgressed the points of confinement of reasonableness.

Another case, which repeats the above rule, is that of Director General (I&R) v. Milkfood
Ltd.108 the respondents had issued a promotion, which said "100% ice-creams". It was asserted
that the utilization of this phrase disparaged the goods of contender. It was held that the
utilization of the impugned phrase was simply to express that the ice cream was free from
adulteration, and could at most add up to a metaphor.. Superlatives like "best", "100%";
"perfect", "purest" are usually used in advertisements. The utilization of such terms in depicting

106
[1975] 2 All ER 599.
107
1994 (2) CTJ 183.
108
1993 (1) CTJ 465.

97
one's item does not sum to disparagement.109 The Commission, though, has not figured any
obvious tests to decide when a representation is a case of trade puffery or amounts to a
disparagement.

This is undoubtedly brought out by the instance of Duracell v. BPL Ltd.110 Duracell
asserted in its commercial that its alkaline battery is "the longest lasting alkaline battery in the
world". The battery was sent to a Swedish laboratory and the report confirmed that the
respondent's alkaline battery was not longer durable than the plaintiff's battery in every respect.
Thus it was held that the claim was not justified and a prima facie case for interim relief was
made out. It is presented that such a methodology is hazardous. Firstly, most advertisements
contain claims that they are the best in their field. Today's purchasers know this is a typical
practice in the publicizing scene and are not influenced by such claims. On the off chance if the
Court were to apply such a strict interpretation, most ads would fall a foul Two tests that might
be seen as helpful in deciding when an advertisement amounts to disparagement are as follows-
I. What is the intention of the advertiser, i.e. whether he projected the consumer to consider the
claim important or whether it was a redundant case of puffery?
II. Whether such claims are taken seriously by a reasonable man or not, and it might possibly
impact his decision?111

This can be better shown by an illustration. If the advertiser was to claim that his item is the
best, without substantiating his case, then the customer would not be taken in. On the other hand,
if the sponsor was to speak to that his item is the best on the premise of certain criteria in
examination to those of his opponent; the customer might accept such a representation.
Notwithstanding, these tests have certain confinements. Firstly, it is a troublesome assignment to
decide the aim of the organization. Also, the “reasonable man “test is an exceptionally subjective
one. What the Judge would be doing is to bring his very own models and responses into judging
the commercial. Hence, these tests can never be totally objective.

109
As said in Balasubramanium v. Jyothilabs Ltd., 1999 CTJ 420, that “Mere claim of superiority is not sufficient.
Puffing of one’s goods is permissible."
110
1999 CTJ 115.
111
Indian Courts have followed the reasonable man test as has been laid down in De Beers v. International General
Electric Co., 1975 2 All ER 599.

98
Disparagement under Trademark Law
However, proceeding onward to the Trademarks Act of 1999, which gives some respite
in the form of Sections 29 and 30 as they talk about infringement of trademark and limits on
effect of registered Trademark respectively. The law on comparative advertising and product
disparagement, in connection to trademarks, in India, is based upon the law as set down
in Irving’s Yeast Vite Ltd v. FA Horse- nail 112in which it was observed that utilization of
another’s trademark in comparative advertising does not sum to infringement.

Section 29(8) of the Trademarks Act, 1999 articulates circumstances, when the utilization
of a trademark in advertising can constitute infringement. In the mean time section 30(1) makes
comparative advertising an exemption, to acts comprising infringement under Section 29.
Section 29(8) and Section 30(1) of the Trademarks Act, are sufficient to tackle issues identified
with trademark infringement, made in the array of comparative advertising. Legal verdict on the
subject have additionally made it clear that there is no damage in contrasting your products with
those of the opponent, however the correlation ought to be reasonable and ought not convey
offensiveness to the contender's items or trademark, i.e. comparative advertising is admissible,
yet comparative advertising prompting product disparagement is not tolerable The idea of
‘disparaging advertising’ is in this manner one that has come principally from the judicial
pronouncement and will be managed extensively in the succeeding part.

The Supreme Court of India has not added much to build up the jurisprudence on
‘disparaging advertising’ which is mostly based on High Court cases. The Supreme Court in the
113
case of Hindustan Lever v. Colgate Pamolive (I) Ltd peeks upon the idea of disparaging
advertising bringing it up only twice. The apex court has perceived and connected standard of
common law, simplex commendatio non obligat, implying that simple commendation must be
viewed as a mere invitation to a customer with no commitment as respects the nature of
products. It was observed that every seller would naturally try and affirm that its wares are good
enough to be purchased, if not better than those of a rival.

112
(1934) 51 RPC 110
113
1998 (1) SCC 720

99
 The High Courts' as said above have exhaustively declared the same matter on numerous
occasions and are genuinely steady in their position. A large portion of the cases have religiously
referred to the Calcutta High Court judgment in Reckitt and Colman of India Ltd. v. M.P.
Ramchandran and Anr.,114 where the law on the subject is stated as follows:-
“A tradesman is entitled to declare his goods to be best in the world, even though the
declaration is untrue. He can also say that his goods are better than his competitors',
even though such statement is untrue. For the purpose of saying that his goods are the
best in the world or his goods are better than his competitors' he can even compare the
advantages of his goods over the goods of others. He, however, cannot, while saying that
his goods are better than his competitors', say that his competitors' goods are bad. If he
says so, he really slanders the goods of his competitors. In other words, he defames his
competitors and their goods, which is not permissible. 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.”

Aside from the aforementioned issues the Delhi High Court in Pepsi Cola and Ors. v.
Hindustan Coca Cola Ltd. and Anr115., the Court laid down certain points which should be kept
in mind when deciding a question of disparagement. These are
I. The intent of the advertisement: This can be understood from its storyline and the
message sought to be conveyed.
II. The overall effect of the advertisement: Does it promote the advertiser’s product or does
it disparage or denigrate a rival product? In this context, it must be kept in mind that
while promoting its product, the advertiser may, while comparing it with a rival or a
competing product, make an unfavorable comparison, but that might not necessarily
affect the storyline and message of the advertised product or have that as its overall
effect.
III. The manner of advertising: Is the comparison by and large truthful or does it falsely
denigrates or disparage a rival product? While truthful disparagement is permissible,
untruthful disparagement is not permissible.

114
1999 PTC (19) 741
115
2003 (27) PTC 305 Del

100
 In electronic media, the disparaging advertisement is communicated to the viewer by often
screening the commercial daily; in this manner guarantying that viewers get a reasonable point,
as the said commercial leaves an ineradicable thought in their psyches. In the event that the way
is scorn or reproving of the competitor’s product, then it amounts to disparaging, however in the
event that the way is just "puffing" in nature and is intended to demonstrate one's item as better
or best without criticizing another item, then that way is not actionable. Nevertheless the
advertiser can't criticize nor slander a contender's products nor call them bad or inferior. But the
issue did not stop here. Contenders discovered better approaches for indulging in comparative
advertising. They began censuring an entire class of results of a particular contending item. This
initiated another types of disparaging advertising called “Generic Disparagement”.

Generic Disparagement
In this new type of comparative advertising, the contender would not only criticize a particular
item but rather would enjoy belittling of a complete class of items. One of the initial few
instances of the Generic Disparagement is the judgment of the Dabur India Ltd v. Emami Ltd116 .
For this case the court was worried with a commercial wherein the whole class of items, in
particular, Chyawanprash was appeared in a negative campaign. Subsequently the Plaintiff had a
reasonable cause of action to keep up the suit regardless of the fact that there could possibly be
an immediate reference to the product of the Plaintiff yet the indication to a whole class of
Chyawanprash. The Learned Single Judge of the Hon’ble Court perceived the idea of Generic
Disparagement and granted an injunction.

This was trailed by another case decided by the Delhi High Court itself in the Dabur
India Ltd v. Colgate Palmolive India Ltd.117 In this case the litigant tried to disparage the tooth
powder manufactured by the plaintiff. In another judgment, Justice Ravindra Bhat of the Delhi
High Court had passed interim orders in the proceeding between Glaxo Smithkline & Horlicks
on one hand and Heinz, the manufacturers of Complan, on the other hand. This specific ad-war
took a fairly terrible turn with the contenders called every others' item ‘cheap’. Ideally Justice
Bhat’s reasoned order elucidated the law to the advertising community. Justice Bhat had

116
2004 (29) PTC 1 (Del).
117
(2004) 29 PTC 401

101
obviously decided for Horlicks since the ad-campaign against them was plainly disparaging and
furthermore ordered Complan to pay Horlicks costs of Rs. 2.2 Lakhs only.

Another vital judgment on this subject is the case of Hindustan Lever Limited (HUL)118
the offended party, Reckitt Benckiser documented a suit for an ad interim injunction against the
broadcast of the TV ad of litigant Hindustan Lever Limited's Lifebuoy Soap, which was
disparaging and denigrating the reputation and goodwill of the plaintiff’s product Dettol in the
commercial market. Justice Kailash Gambhir of the Delhi High Court decided that the
advertisement broadcast by the respondent certainly disparaged the product of the plaintiff and
granted an interim injunction to the plaintiff against the telecast.

The analysis of the different case laws, accordingly unmistakably expresses that the
courts in India have gone past the times of White v. Mellin, wherein the basic principle laid by
Lord Watson was as follows :-
“In order to constitute disparagement which is, in the sense of law injurious, it must be
shown that the defendant’s representations were made of and concerning the plaintiff’s
goods; that they were in disparagement of his goods and untrue; and that they have
occasioned special damage to the plaintiff. Unless each and all of these three things be
established, it must be held that the defendant has acted within rights and that the
plaintiff has not suffered any legal injuria.”119

The idea of comparative advertising and disparagement has now been extended to even a
class of goods and not only clash among the two individual producers. The basic standard being
that no tradesman has a privilege to censure a particular item or a particular class of items while
promoting its own particular qualities.

Limits/Boundaries
There is a flimsy line of distinction between what constitutes ‘disparaging advertising’
and what doesn't yet once more, comprehensively talking mocking the product of contender
boldly would certainly amount to ‘disparagement’ However doing it inconspicuously may not.

118
Reckitt Benckiser (India) Ltd. v. Hindustan Lever Limited, 2008 (38) PTC 139 (Del)
119
1895, A.C 154 at pg. 167.

102
Justice MB Lokur120 cut out a fine peculiarity between describing your product better and calling
the other product poorer. Keeping these standards in mind, it is essential to establish whether in a
comparative advertisement puffing raises to disparagement or not. In the recent Rin-Tide clash, it
was clear that the competitive advertiser patently censured its adversaries; despite the fact that it
guaranteed the impugned commercial depended on laboratory statistics, the court restrained
Hindustan Unilever Limited from broadcasting its detergent advertisement as its intent was
apparently to taunt Procter & Gamble’s Tide Naturals detergent.

Comparative duals happened between wellbeing drinks Horlicks and Complan, private
aircrafts Jet Airways and Kingfisher, driving refreshment players Coca Cola and PepsiCo,
advanced TV administration suppliers Big TV and Airtel, and numerous other opponent players
and it is seen that as compared to its predecessor MRTP, trademark law on comparative
advertisement and disparagement has come a long way.

120
See Dabur India Ltd. v. Colortek Meghalaya Ltd., 2010 (42) PTC 88 (Del.).

103
 CHAPTER-4

RECENT JUDICIAL TRENDS

IN COMPARATIVE
ADVERTISING AND
PRODUCT DISPARAGEMENT
IN INDIA
 CHAPTER-4
RECENT JUDICIAL TRENDS IN COMPARATIVE ADVERTISING AND PRODUCT
DISPARAGEMENT IN INDIA

The comparative advertising like its genus commercial advertising is double edged. It can
be utilized as an effective tool for consumer information for making right purchasing choices or
it can be used to mislead consumers by anticipating false, incomplete, distorted or insignificant
comparison.1 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 goods. 2

Such publicizing has been stepped for sound rivalry, yet the way it works today has been
lessened to a messy session of joke in the middle of brands and barely includes the educated
purchasers' decisions. The thought has developed in the nineties where countless item wars on
the TV sets were seen. The period saw the Pepsi-Coke war which was trailed by Complan-
Horlicks pull of war, the Rin-Tide war and the most recent in the crate is the Colgate-Pepsodent
war. All of these commercials belittled the contender's item to showcase the predominance of
their item in the business sector.

As seen in the previous chapter there are number of enactment that were discussing the
legal status of comparative advertising, but no specific statute is talking about the subject in
detail. It is the legal pronouncements that are assuming a critical part in deciding the ambit of
comparative advertising. The courts have been exceptionally cautious in guarding the purchasers'
enthusiasm and that of the companies whose products are slandered. They have over the time
developed certain rules to check whether there has been any infringement of the rights of the
owner or his products are defamed. Likewise an imperative inquiry has additionally sprung up-
whether these legal measuring sticks are sufficiently adequate to answer the issues on debate
identifying with comparative advertising. The answer requires investigation of the judicial

1
Farooq Ahmed,” Comparative Advertising: Emerging issues” Cochin University Law Review 22 pp.340- 349 Sept
(1998).
2
See Dabur India Ltd. V. Emami Ltd. 2004 (29) PTC 1 (Del).

104
decision and determination of current circumstance in this regard. The present chapter would
discuss in detail the approach of judiciary towards the said research problem. A comprehension
of the judicial opinion may assist in determining a uniform standard of resistance to differentiate
instances of basic puffery from those of noteworthy denigration. To, examine, the researcher, has
analyzed all the cases pertaining to comparative advertisement decided till 2014.

Response of Judiciary: From MRTP Act to Trademark Act

The examination of pronouncements is done by dividing the period in pre- trademark era
to post trademark era. The explanation behind utilizing the above methodology is that the cases
relating to comparative advertising is earlier covered by the Monopolies and Restrictive Trade
Practices Act, 19843 as being a potentially unfair trade practice. It was only after the passing of
the Latest Trade Marks Act, 1999 that some improvement was made in the regime of
comparative advertising vis-à-vis intellectual property jurisprudence. Despite the fact that
carving out a win-win settlement between the two competent interests appears to be troublesome
at this point of time, however, the number of cases decided actually assist in forming certain
standards which are of tremendous utility in deciding the reliability of such advertisement with
reference to trademark and unfair trade practice regime.

Pre- Trademark Era

There are a countless number of cases decided by the courts under the Monopolistic and
Restrictive Trade Practices Act identifying with comparative advertising. While the prominence
of these cases was basically on the protection of the consumer rather than the use of infringed
trademarks, they provide a foundation for the present legal stance towards comparative
advertising and instance of denigration in India.

Turning to the development of law on the issue in India, it appears that the most primitive
decision was that of the Calcutta High Court in Chloride Industries Ltd v. The Standard Batteries
Ltd decided on 30-9-1994. It was an action brought forth by the manufacturers of Exide Battery
against their competitor on the ground that the competitor indulged in disparagement. A single
Judge of the Calcutta High Court held therein that if the goods are disparaged maliciously or

3
Monopolies and Restrictive Trade Practices Act, 1999 (Repealed and replaced by Companies Act,2000)

105
with some other such intent to injure and not by way of fair trade rivalry, the same would be
actionable. Though this is an unreported decision, it was cited and followed in the subsequent
decision of the same High Court.4

However, the landmark pronouncements that have set the trend in the direction of
development of law on the said subject- matter were the two Reckitt & Colman cases. Almost all
subsequent decisions on the point of law refer to the said decision. The decisions are
recapitulated below:

In the case of Reckitt & Colman of India Ltd. v. Kiwi TTK5, The plaintiff company is
engaged in manufacture and sale of consumer products and one of the products of the plaintiff is
liquid shoe polish being manufactured and marketed by them under the name and style of Cherry
Blossom Premium Liquid Wax Polish. Explaining the facts of the case, plaintiff has started with
this unique product in liquid form ten years back.6 The defendant was also involved in
manufacturing and marketing of a similar product namely ‘KIWI”. It has been assumed that the
liquid polish manufactured by the defendant has very less wax content compared to the plaintiff
product. Whereas the plaintiffs liquid shoe polish has a rich wax content that makes it better than
other shoe polishes available in the market.

Further plaintiff explained its unique bottle design which has an angular- neck, for easy
application and an imported applicator fitted on the surface of the bottle The plaintiff has
claimed “its product to be superior to the similar product of the other competitors in every
respect and it is stated that the plaintiff has 68% market share of the liquid shoe polish whereas
the defendant has only 20% of such share”. The issue before the court was that whether
defendant was deploying an advertisement to promote its product through electronic media.

In the commercial the word "KIWI" is written on a white surface which does not dribble
and the other bottle described as "OTHERS" dripped. This other bottle named ‘Brand X” looked

4
Reckitt & Colman of India Ltd. v. MP Ramachandran & Anr, 1999 PTC (19) 741
5
63 (1996) DLT 29.
6
Ibid, “The liquid shoe polish comprises of natural wax available, namely, Carnauba wax allegedly being imported
from Brazil for purposes of making this polish.”

106
similar to the bottle of plaintiff.7 Also the advertisement has been circulated as a "point of sale"
poster material at shops and marketing. It is alleged that the advertisement posters are causing
irretrievable loss to its reputation, goodwill, brand, equity, etc. The advertisement is also stated
to be defamatory and malicious and is bound to create an adverse impact upon the consumers. J.
Mahajan considered the advertisement as comparative advertisement and came up with an
important observation that:
“The settled law on the subject appears to be that a manufacturer is entitled to make a
statement that his goods are the best and also make some statements for puffing of his
goods and the same will not give a cause of action to other traders or manufacturers of
similar goods to institute, proceedings as there is no disparagement or defamation to the
goods of the manufacturer so doing. However, a manufacturer is not entitled to say' that
his competitor's goods are bad so as to puff and promote his goods.”

Further the court explained that the ‘red blob’ on the surface of bottle ‘Brand X’
represent the product of plaintiff. But if the same is removed by the defendants then the viewers
who are seeing this commercial on the electronic media only for a momentary second may not
get the impression that the bottle is of plaintiff.
Finally the Court concluded that:
“Though a comparative advertisement is admissible, the same should not in any
manner be intended to disparage or defame the product of the competitor”8

The Calcutta High Court took an auxiliary step in another case of Reckitt & Colman of
India Ltd. v. MP Ramachandran & Anr9. In the present case plaintiff and defendants were
manufacturing and selling whitener under the brand name ‘Robin Blue’ and ‘Ujala’ respectively.
Defendants in the process to boost their product came up with a commercial that presented the
product of competitor being inferior thereby affecting the market share of the said trader. The
present commercial portrayed the product of the petitioner being inferior by deliberately
presenting the container in which the product of the petitioner is sold.10 While looking at the

7
Id as above ; “The bottle marked "Brand X" also has a red blob on its surface which allegedly represents
"CHERRY" which appear on the bottle of the plaintiff product”.
8
Also see Reckitt & Colman Of India Ltd. vs. Jyothi Laboratories Ltd. & Ors, (1999) 2 CALLT 230 HC
9
1999 PTC (19) 741, In the present case defendants have not only disparaged the products of the plaintiff but also
have tried to impress upon the consumers that their products are better than the plaintiffs. The Calcutta High Court
had stopped the defendant from publishing their advertisement where under the product of. Plaintiff was shown in a
disparaging and defamatory manner.
10
Ibid, “It has then been shown in the advertisement that blue is a product of obsolete technology and therefore, it
cannot dissolve completely in water and as such forms sediments at the bottom of the wash bucket”

107
container, the only conclusion drawn is that the respondents are highlighting Robin Liquid Blue
of the petitioner. They even took a step further by mentioning the price of the ‘other product’ as
Rs.10.Through this defendant have undoubtedly acknowledged the plaintiffs product, as that is
the only whitener being sold at the said market-price.11It shows that the purpose of the
advertisements is to exhibit to the present and potential consumers of the petitioner that even
after spending huge sum of money for whitening newly washed clothes what they are receiving
is blue patched garments by using the petitioner's product. The Hon’ble court made an important
observation at this juncture stating that
“….One can boast about technological superiority of his product and while doing so can
also compare the advantages of his product with those which are available in the market.
He can also say that the technology of the products available in the market has become
old or obsolete. He can further add that the new technology available to him is far more
superior to the known technology, but he cannot say that the known technology is bad
and harmful or that the product made with the known technology is bad and harmful.
What he can claim is only that his product and his technology are superior. While
comparing the technology and the products manufactured on the basis thereof, he can
say that by reason of the new superior technology available to him, his product is much
superior to others. He cannot, however while so comparing say that the available
technology and the products made in accordance therewith are bad and harmful….”

It was further held that the claims made in the commercial was evidently related to the petitioner
and was made to disparage and defame his product. From the said assertion, the law laid by
Calcutta High Court is as follows:
I. A tradesman is entitled to declare his goods to be the best in the world even though
the declaration is untrue.
II. He can also say that his goods are better than his competitor's; even though such a
statement is untrue.
III. For the purpose of saying that his goods are the best in the world or his goods are
better than his competitor's he can even compare that advantages of his goods over
the goods of the others.
IV. He, however, cannot while saying his goods are better than his competitor's, say
that the latter's goods are bad. If he says so, he slanders the goods of his

11
Id as above, Defendants in the present case contended “that at Rs. 10/-, the average blue is the most expensive to
whiten your clothes. Then it has been added "what is more, you have to use lots of blue per wash". While making the
said comment the container of the petitioner has been shown up-side-down and it has further been shown that the
liquid is gushing out. The object is obviously to show that the product of the petitioner priced at Rs. 10/- gushes out
as a squirt and not in drops while using and therefore, it is an expensive way to whiten clothes.”

108
 competitors. In other words he defames his competitors and their goods, which is
not permissible.12

The above principles were also discussed in much publicized war between the two giant
soft-drink companies namely Pepsi Co Inc. v. Hindustan Coca Cola and another.13 The long
history of trade rivalry between these two multinational Corporations has lead to another round
of litigation. However, this case differed from the cases aforementioned in respect of the fact that
herein the Delhi High Court also dealt with copyrights and trademark related issues. The case
started with comparison of two drinks by the respondents in a series of television commercials to
boost its drinks ‘Thumps-Up’ and ‘Sprite’. According to the advertisement ‘PEPSI” was
regarded as ‘bacchonwali drink’ as it is a sweet drink and children generally like sweet things.
On the other hand ‘Thumps Up’ was shown to be a strong drink liked by the grown- up boys.
According to the appellant the present commercial disparaged their product and infringed there
registered trademark ‘PEPSI’, ‘GLOBE DEVICE’ and the phrase "Yeh Dil Maange More".14
Even the roller coaster commercial was also copied and in so doing infringed the copyright of the
appellant.15

In order to settle the question of disparagement the court has to decide as to how many
customers would be influenced by such advertisement fall into not purchasing a particular
product instead of purchasing the rival product. Secondly, the plaintiff can only succeed if he
establishes following key elements:
I. A false or misleading statement of fact about a product.

12
Id as above; Guidelines laid by the court in the present case laid the foundation of law on comparative advertising
in India.
13
(2001) PTC 699 (Del.).
14
In the present case Hindustan Coca Cola and others are endorsing their product with the help of a commercial
which shows that the lead actor asks a kid which is his favorite drink. He mutters the word "Pepsi", which can be
seen from his lip movement though the same is muted. The lead actor thereafter asks the boy to taste two drinks in
two different bottles covered with lid and the question asked by the lead actor is that "Bacchon Ko Konsi pasand
aayegi"? After taste the boy points out to one drink and says that that drink would be liked by the children because it
is sweet. In his words he says. "Who meethi hain, Bacchon ko meethi cheese pasand hai". He preferred the other
drink which according to him tastes strong and that grown up people would prefer the same. And later the stronger
one came out be "Thums Up", and one which is sweet, word "Pappi" is written on the bottle with a globe device and
the colour that of the "Pepsi". Realizing that he had at the initial stage given his preference for "Pepsi" and
subsequently finding it to be a drink for kids, the boy felt embarrassed. There are other commercials by the
respondents where the lead actor said "Wrong choice baby", and that the "Thums Up" is a right choice, and "Kyo
Dil Maange No More" for the appellant’s products.
15
In the present work only the issue of disparagement and trademark infringement are discussed in detail.

109
 II. That statement either deceived, or had the capacity to deceive, substantial segment of
potential consumer, and
III. The deception was material, in that it was likely to influence consumers' purchasing
decisions.

The Single Judge Bench of J. C Mahajan held that mere poking of the appellant product is
considered healthy competition within the realm of comparative advertising rule.
In the judge’s opinion,
“merely puffing is not dishonest and mere 'poking fun' at a competitor is a normal
practice of comparative advertising and is acceptable in the market….The comparative
advertising is a part of people's nature, everyone starts very young. They compare
everything from their teams to their toys, and most everything in between. It is fun and
can be informative. Some of the most effective advertising is comparative….” “Effective
advertising delivers a message that it remembered. It can change the way the world views
a product or service and can generate sales. If the market for a service or product is
well-defined, comparative advertising can held the product or service distinguishes itself
from the competition. Nothing seems to do this more efficiently than comparative
advertising.”16

On the basis of above observation, it was held that there was no disparagement and it was
simply a case of puffery. The court further went on to hold, without precedent, that Pepsi’s
advertising slogan was copyrightable. As mere use of the trademark protected Pepsi logo and
parody of the slogan does not give rise to ipso facto infringement.

Dejected with the decision of the Single Bench, Pepsi Company Incorporation and Others
went in for an appeal against Hindustan Coca Cola and others.17The appellant wanted a restraint
order against respondent that would forbid them from telecasting the said advertisement or any
other form of advertisement18 through print advertising or electronic media.

16
See Reckitt & Colman Of India Ltd. vs. Jyothi Laboratories Ltd. & Ors, (1999) 2 CALLT 230 HC
17
Pepsi Co Inc. and Ors. vs. Hindustan Coca- cola and Anrs., 2003 (27) PTC 305 Del
18
The second advertisement shows“the star actor asks the audience. "Ek Sawaal do glass. Bacchoako konsi drink
pasand aayegi?" As in the first commercial, in this commercial also the drinks are covered and one described as a
sweet drink called "Bacchonwala" and the bottle comparing the Globe Device and the mark "PAPPI". Like in the
first advertisement, in this also the boy covers his head with his arms and hands in the gesture of embarrassment”.
Then there was another commercial that was similar to the previous one. “The word "PEPSI" is uttered in muted
way. Similarly the globe device and the mark "PAPPI" is used on the bottle. On the choice of the boy for Peppi i.e.
Pepsi the lead actor mockingly says, "Wrong Choice Baby". In these commercials the bottle which resembles

110
 The important issues before the appellant court was whether the act of respondent prima-
facie lead to trademark infringement and disparagement or is it merely puffing of its goods.
Court observed that by merely seeing at the commercial, it could be perceived that design, and
globe device of bottle named ‘PAPPI’ is similar to the bottle of ‘PEPSI’; Secondly the boy
called from the audience also murmur Pepsi that was muted shows that it is comparative
advertisement.

Disparagement as per The New International Webster’s' Comprehensive Dictionary

means, “to speak of slightingly, undervalue, to bring discredit or dishonor upon, the act of
depreciating, derogation, a condition of low estimation or valuation, a reproach, disgrace, an
unjust classing or comparison with that which is of less worth, and degradation." The Concise
Oxford Dictionary defines disparage as under, “to bring discredit on, slightingly of and
depreciate."

In the electronic media the disparaging message is conveyed to the viewer by repeatedly
showing the commercial everyday thereby ensuring that the viewers get clear message as the said
commercial leaves an indelible impression in their mind. To decide the question of
disparagement we have to keep the following factors in mind, namely19;
I. Intent of commercial
II. Manner of the commercial
III. Story line of the commercial and the message sought to be conveyed by the commercial.

Out of the above, "manner of the commercial", is very important. If the manner is ridiculing
or the condemning product of the competitor, then it amounts to disparaging, but if the manner is
only to show one's product better or best without derogating other's product then that is merely
puffery.20

"PEPSI" and is referred to as "PAPPI" is termed as "Bacchon Wali". "Thums Up" is referred to as "Bado Ke Liye
and Damdar Hai". Pepsi is projected to be a drink for kids, as it is "Sweet"...”
19
Uphar Shukla, “Comparative Advertising and Product Disparagement vis-a-vis Trademark Law”, Journal of
Intellectual Property Rights, Vol II, p.409-414 (Nov.2006).
20
Court further observed that “...Puffing does not indicate that one should defame the product of the competitor.
Admittedly puffing one's product by comparing others' goods and saying his goods are better is not an actionable
claim but when puffing or poking fun amount to denigrate the goods of the competitor, it is actionable.”

111
The court said that it is a settled law
“that mere puffing of goods is not actionable. Tradesman can say his goods are best or
better. But by comparison the tradesman cannot slander nor defame the goods of the
competitor nor can call it bad or inferior.”

By calling the Cola drink of the appellants "Yen Bacchon Wali Hai. Bacchon Ko Yeh
Pasand Aayegi", "Wrong Choice Baby", the respondents depicted the commercial in a
derogatory and mocking manner. It can’t be called puffing up. Repeatedly telecasting this
commercial will leave a wrong impression on the mind of the viewers that product of the
appellant i.e. "PEPSI" is simply a sweet thing nor meant for grown up or growing children. If
they choose PEPSI, it would be a wrong choice”

In the present case, it has been seen that the manner in which the advertisement is shown.
suggest a wrongful impression about product of the appellant which amount to disparagement.
Especially, the way the child has reacted and felt about his choice depicts a sense of shame and
humiliation. It is nothing but defaming the product of appellant.

But as far as trademark infringement is concerned court took a different view; it says
where the impugned advertisement neither uses the trade mark of plaintiff in course of trade nor
in any manner suggests the connection of plaintiff‘s trade mark with the defendant’s goods the
plaintiff would not be entitled to injunction.21

Hence in analysis of the law laid down is that comparative advertising is allowed and the
breach occurs only when the registered mark is used by the opponent with the intention of
indicating the origin of the goods as being his.

Need of Decision by Supreme Court: The ratio in all the above high court cases has given
groundwork on the legal stance for development of law on comparative advertising. But these
decisions only have a persuasive value for future conflict. It was only in a case coming out of an

21
Kritika Bhardwaj, “Law on Trademark Infringement in Comparative Advertisements”, Karnataka Law Journal
3(11), pp-58 (2010). Also see Grand Chemical Works v. Nirmala Dyechem, 2003 (27) PTC 27 (Del), here injunction
was not allowed as the defendants’ advertisement did not contain any disparaging comments with reference to the
plaintiff’s product.

112
interim order of injunction by MRTP Commission that the first case reaching apex level has
come up. It’s a war between the two dental creams namely Pepsodent and Colgate.

In the case of Hindustan Lever v. Colgate Palmolive (I) Ltd.22,Hindustan Lever Limited
advertised its toothpaste, ‘New Pepsodent’ in print, visual and hoarding media, claiming that its
toothpaste 'New Pepsodent' was ‘102% better than the leading toothpaste’. In the television
commercial, samples of saliva were taken for testing from two boys, hours after brushing. One
boy has brushed with the New Pepsodent while another has brushed, ‘with leading toothpaste’.
The tests of the two samples are visually depicted side by side. The saliva of ‘the leading
toothpaste’ shows large number of germs. While the slide of the New Pepsodent shows
insignificant quantity of germs. When the sample was being taken from the boys, they were asked
the name of the toothpaste with which they had brushed in the morning. One boy had said
Pepsodent. The response of the second boy was muted. However, lip movement of the other boy
would indicate that he was saying ‘Colgate’. Also, when the muting was done, there was a sound
of the jingle used in the Colgate advertisement.

The case first came before the Monopolies & Restrictive Trade Practices Commission
thereinafter called the Commission It has been seen that the market share for toothpaste for
Colgate and Hindustan Lever was 59% and 27% respectively. The Commission, thus, was of the
view that a reference to ‘leading brand’ and ‘famous brand’ was to Colgate.

A doubt, however, arises that the statistics on market share are produced by market
research agencies. The consumers do not know about these. Thus, a viewer need not necessarily
interpret ‘leading brand’ to mean Colgate. The Commission, however, was of the view that
Colgate has been in the business of manufacturing and selling toothpaste in India for more than 50
years. According to the Commission, the word toothpaste has become synonymous with Colgate
over the years. The Commission, in addition noted that the jingle in the background was a familiar
one of Colgate. The comparative product in the television commercials could, thus, be identified
as Colgate dental cream. Thus, it became a case of comparative advertisement and a claim could

22
Hindustan Lever v. Colgate Palmolive (I) Ltd. 1998 (1) SCC 720

113
be made of disparagement of Colgate’s products.23

Unhappy with the decision of Commission, respondent went in for an appeal to the
higher court stating that appellant was accountable of unfair trade practice under Section 36A
(MRTP Act) in as much as the appellant allegedly adopted, for the purpose of promotion sales,
use or supply of its goods, an unfair method or deceptive practice by making a representation as
stated in Section 36A (viii) and giving false or misleading facts "disparaging" the goods of the
appellant as stated in Section 36A (x).

The Court was of the opinion that although a seller has the latitude to represent his
product in such a manner that he attracts more customers than he normally would have, such
latitude would translate into description and “reasonable assertion” of the product, but not to
misrepresentation. In other words, factual representations are perfectly legitimate. The Apex
Court went a step further to state that “commendatory expressions” are not dealt with as serious
representations of fact. When the Supreme Court says that “commendatory expressions” are not
dealt with as serious representations of fact, it does not mean that such representations are untrue
or misleading. On the contrary, what it means is that such representations cannot be taken
seriously and that there is no obligation on the part of the seller to the customer with regard to
the true quality, rather standing of goods merely because the seller has resorted to puffing.

To support this, the Apex Court relied on a rule of civil law, "simplex commendatio non
obligat" , which means simple commendation can only be regarded as a mere invitation to a
customer without any obligation as regards the quality of goods. In other words, every seller is
entitled to call his goods “world’s best”, “India’s no.1”, “world-class quality” and so on.

However, the Apex Court also cautioned that these principles are by no means conclusive
since, by and large, cases of puffing are borderline cases, and that there exists a very thin line
which separates puffing from falsehood.

23
According to Commission in the present case-“the inference was that the appellant was not merely treating its
toothpaste as superior but was treating Colgate as 102% 'interior'. It was not necessary that there should be any
direct reference about inferiority and it was sufficient if there was an allusion, hint etc, to that effect and such a
reference prima- facie amounted to 'disparagement' for purposes of Section 36A(X).”

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 In a nutshell, although commercial speech is available under the Indian Constitution to
every seller, if the advertisement is false, unfair, misleading or deceptive, the seller is not entitled
to seek protection behind “commercial speech”. Thus, this case clarified an important aspect that
mere puffing of goods is not actionable. The court propounded here too that a tradesman can say
his goods are the best or better; however by comparison the tradesman cannot slander nor
defame the goods of the competitor nor call it bad or inferior.

In the present case, court has examined the scope of comparative advertising in
accordance with the law in developed countries, however, no test has been laid down to show
what amount to product disparagement. But unfortunately the Supreme Court did not go into the
question of law in great detail.

In another case the court differentiated between a truth statement and an exaggerated
claim, it says that:
“if a statement used by defendant is true in comparative advertising then the plaintiff
cannot claim relief under comparative advertising.”24

Court also expressed its disappointment over not having an authority to check false
advertising held that
“If a competitor makes the consumer aware of his mistaken impression, the Plaintiff
cannot be heard to complain of such action. I find it difficult, nay impossible; to hold a
party liable for libel when all that has been stated by the competitor is the truth. Truth is
always a complete defense against any assault or challenge regardless of whether any
damage is sustained as a result of it”.25
In the present case the Delhi High Court was shown an advertisement in which Dettol
soap was allegedly depicted in poor light by the manufacturer of Ayurvedic soap26. But the
plaintiff only filed for injunction and not damages. The issue before the court was whether the
Defendant could be liable to disparage the Plaintiff's product even though no false statements

24
Ankur Mishra, “Comparative Advertising: Comparative study on U.S. and India” Pg.9 (2011) available at,
http://www.lawyersclubindia.com/articles/Comparative-Advertising-Comparative-Study-on-U-S-and-India--
4186.asp#.UBFAvGEb994 (Last visited Apr.12th 2013).
25
Reckit Benckiser (India) Limited v. Naga Limited and Ors, 2003(26)PTC535(Del)
26
The commercial depicts a woman advanced stage of pregnancy needing urgent medical assistance during a train
journey. The doctor calls for hot water and is handed a cake of soap which she rejects, stating that an antiseptic soap
is needed. The doctor states in the commercial that "at a time like this, you do not need just antiseptic, you need a
protector". The Defendant's Ayurvedic soap is then shown and it is concurrently stated that it is a body 'rakshak'
soap, the first Ayurvedic soap that completely removes all seven kinds of terms and protects from infection

115
have been made by the Defendant. The court observed that “the T.V. commercial has the effect of
making the viewer alive to two factors--firstly, that Dettol Soap is not an antiseptic and, secondly
that the Defendant's Ayush Soap is an antiseptic soap and a protector from infection. … In my
opinion, the Plaintiff's claim that its soap has been disparaged is entirely indefensible”27

Therefore, the learned Judge of the Delhi High Court refused to grant an injunction on the
ground that in the absence of a primary and substantive claim (for damages) the relief of
injunction would ordinarily be debarred.

Analysis
There are numerous other cases delivered by the MRTP Commission which have played
a major role in development of the rules against comparative advertising. In some cases the
Commission examined that as long as the product is not identifiable to the consumers, the
advertisement could not be misleading or cause disparagement.28 In another case Supreme Court
ruled that showing association to the trademark in a commercial rather than its main corporation,
with which advertiser has worked together doesn’t lead to perversion amounting to deceiving the
consumers.29 But if the advertisement creates an impression in the mind of the consumer about
the product of the competitor in a wrongful manner it amounts to disparagement30 Thus in all the
above cases, Commission has maintained that unless the product of the competitor could not be
particularly identifiable it will not be an instance of disparagement. Likewise, not all the
instances of disparagement are covered under doctrine of unfair trade practices unless it is
recognized that the facts in the representation are false or misleading. This shows that MRTP Act
provide insufficient shield and guiding principle to the companies. The trade mark issues were
missed and fair competition was not the focal point.

27
As stated by the learned counsel of defendant- “ Dettol Soap is marketed as a toilet soap under IS:2888-1983 and
not as an anti- bacterial toilet soap which falls in the classification IS:11479-1985. The Plaintiff's soap Dettol is
necessarily, therefore, a cosmetic as defined in Section 3(aaa) of the Drugs and Cosmetics Act, 1940. Dettol soap is
neither labeled nor marketed as anti-bacterial toilet soap "or as an antiseptic soap" but is simply labeled as a soap
which "helps ensure general skin cleanliness and high standard of personal hygiene".
28
See the case of M Balasundaram vs. Jyothi Laboratories Ltd, 1995 (82) CC 830 (MRTPC), Godrej Soaps Limited
v Hygienic Research Institute, 2001 (43) CLA 300.
29
See the case of Lakhanpal National Ltd. V. MRTP Commission, 1989 AIR 1692.
30
Palmolive (India) Limited v Vicco Laboratories, 1997 (5) CTJ 488.

116
Decisions under Trademark Regime
With the enactment of the Trademarks Act in 2003, there have been just a modest bunch
of judgments in the new era of comparative advertising governance. The first of these was the
triumvirate of Dabur cases. These cases have given a new connotation to the idea. Prior just to
the express situations where the contender is identifiable are secured under the instance of
denigration. However, now regardless of the fact that there is no immediate reference to the
product of the plaintiff and just a reference is made to the whole class in its non specific sense,
even in those circumstances disparagement is possible.

The first important case is that of Dabur India Limited v. Emami Limited31, here the
commercial sought to express that consumption of Chayawanprash during summer is not prudent
and Amritprash, that is also an Ayurvedic formulation was claimed to be useful, by the
defendant.32 This was assumed to be a clear case of defamation to the product of the plaintiff as
the existence of allusion was evident. It was opined by the court:
“even if there be no direct reference to the product of the plaintiff and only a reference is
made to the entire class of Chayawanprash in its generic sense, even in those
circumstances disparagement is possible. There is insinuation against user of
Chayawanprash during the summer months...”

Here the defendants were circulating an advertisement which shows that there should not
be any use of Chawanprash during summers; i.e. indirectly the Chawanprash sold by plaintiff is
not good for health when consumed in summers instead defendant’s product Amritprash should
be taken. Such an advertisement is clearly disparaging the product of plaintiff as there is an
element of insulation present in the said commercial.

31
Dabur India Limited vs. Emami Limited, (2004) 29 PTC 1.
32
In the said commercial star actor the dressed up as an Army outfit walking through the desert with another Army
officer It further depicts that on account of excessive heat, the other commander faints and the hero who was
walking ahead of him comes back running to rescue the fainted officer, puts him on his shoulder and walks to the
camp. The commercial shows the hero carrying a bottle of Himani Sona-Chandi Amritprash. Towards the end of the
commercial he declares “GARMION MEIN CHYAWANPRASH BHOOL JAO, HIMANI SONA-CHANDI Amritprash
KHAO”

117
 Even in the case of Unibic Biscuits India (P) Ltd. v. Britannia Industries Ltd.33, the court
held that,
‘a word is said to not have been used generically if it is used to describe the product of
the competitor, attempting to indirectly insinuate such product; the product insinuated
should have strong resemblance with the product of the insinuator’.

In this case, the appellant came up with a product tag-line, ‘Why to have good day, when
you can have a great day’, this tag-line was promoted through advertisements. Respondent
alleged that through this tag-line the product of the respondent, Good-Day, has been put to
disparagement. Appellant contended that the words- ‘good’ and ‘great’- are generic, hence no
disparagement is caused. Holding against the appellant, the Karnataka High Court held that,
disparagement has been caused.

Nevertheless the decision in the case of Dabur India Ltd. v. Colgate Palmolive India
Ltd.34, settled the new standard governing the law relating to comparative advertising. The
commercial showed a cine-star discouraging the buyer of Lal Dant Manjan powder and showing
their ill-effects by rubbing the same on the spectacles leaving abrasive marks. On the other hand,
defendants Colgate tooth powder is considered less damaging while tested on spectacles.
Considering the above facts, court granted injunction against the defendant but doubted the
applicability of English precedents35, in his judgment and held as follows: -
“generic disparagement of a rival product without specifically identifying or pin pointing
the rival product is equally objectionable. Clever advertising can indeed hit a rival
product without specifically referring to it. No one can disparage a class or genre of a
product within which a complaining plaintiff falls and raise a defence that the plaintiff
has not been specifically identified.”

No one can defame competitor’s products in this manner and claim the defence of no
direct reference is made. The decision and surveillance like this safeguard against the covert

33
MANU/KA/0240/2008
34
(2004) 29 PTC 401
35
See Para 19 & 20 of the above judgement, “The practice of undue obeisance to English jurisprudence without any
thought to the merit and reasoning of such judicial wisdom should also be discouraged.”

118
form of comparative advertising and reveal an optimistic approach to proprietors of the targeted
brand or trademark.36

Similar decisions were taken in the case of Frankfinn Aviation Services Pvt. v. Akash
Gupta37and G.M. Pens International Pvt. Ltd. v. Cello Plastic Products and Ors38. In both cases
the sole objective of the defendant was to portray the product of its competitor in bad light. They
tried to compare their product with the leader in the market and not with insignificant local
product of similar nature.39 Such advertisement was adjudicated as being disparaging and
prejudicial in the interest of general public, as a consequence debarred and restrained.

In another landmark case of Karamchand Appliances Pvt. Ltd. v. Sh. Adhikari

Brothers, court for the first time referring to the aspect of manufacturer vis-à-vis trader
observed that a disparagement can be restrained even at the instance of a party who
manufactures or trades in that class of goods40. In the present case, parties were fighting over
an advertisement campaign meant to promote sale of Mosquito Repellents, which both the
parties were manufacturing and marketing. Here the defendants commercial has shown a
pluggy device of plaintiff and called the same as fifteen years old outdated method of chasing
mosquitoes as compared to its latest machine available in the market that chases away
mosquitoes at a twice fast speed.

The Single Judge Bench of Delhi High Court found that the commercial is disparaging
and reserved its telecast. In an appeal the Division Bench made a variation to the degree that
the advertisement can go on but without disparaging the plaintiff’s product. The defendant's
case now was that it had modified the advertisement and replaced by showing a different

36
Kritika Bhardwaj, “Law on Trademark Infringement in Comparative Advertisements”, Karnataka Law journal
3(11), pp-58, 2010.
37
2010 (42) PTC 294 (Del)
38
G.M. Pens International Pvt. Ltd. vs Cello Plastic Products and Ors. On 13 December, 2005, available at
http://www.indiankanoon.org/doc/1406557/(Last visited on Apr.13th 2013)
39
It was observed by the court in the above case that “No one while high lighting the merits of his goods can
compare it with a product of an insignificant local producer. The respondent is also a big company and cannot
compare its goods with cheap goods produced by a very small producer in home industry. A horse can be compared
by a horse. The arguments that the goods disparaged should be of the known manufacture are also of no avail in the
present case...”
40
2005(31) PTC 1

119
device which has a different design and color combination. The court took cognizance of two
important aspects i.e.
I. whether the altered design of the pluggy device makes any material difference
in the matter of conveying the message which the commercial intends to convey
to the viewers; and
II. whether a disparagement of a general concept is actionable in law, if such
disparagement is otherwise unsustainable on the touchstone of any
technological advantage, which the defendant's product may be enjoying over
the product, that is, disparaged.41

While answering the first issue the court observed:

“It is trite that no one can by his act of omission or commissions cause to another an
injury to his or her reputation or goodwill nor can a rival in trade or industry slander
or defame the goods or products of another trader or manufacturer. Law would
consider any slanderous campaign or comment to be an actionable injury”

In the present case, the product of the appellant is shown in a bad light. The trifle
changes made in the second advertisement doesn’t make any material change in the message
conveyed to the consumers. The audience will, in all probability, view the modified version
also in the light of the first version that appeared on their T.V. sets.

In the next issue, court dealt in length about various aspect of disparagement. It says
that whether the goods of traders are disparaged depend upon facts of each case. It may be
direct, clear or brazen on one hand or implied, covert or clever in other instances. What
matters is that how it belittles, discredits or detracts the goodwill of another's property, product
or business?

Further referring to the aspect of manufacturer vis-à-vis trader, had observed thus:
“A disparagement even if generic would remain a disparagement and can be
restrained at the instance of a party, who manufactures or trades in that class of goods
regardless whether the technology used is modern or obsolete. The defendant is indeed
entitled to boast that its product is the latest in the market and even the best but it
cannot describe either the technology or the concept used by any other manufacturer
or trader in the manufacture or sale of his products as obsolete or worthless.
Comparative advertisement is permissible, so long as such comparison does not
disparage or denigrate the trademark or the products of a competitor. Comparison of

41
Para 12, Id as above

120
 different features of two products showing the advantages, which one product enjoy
over the other is also permissible provided such comparison stops short of discrediting
or denigrating the other product.”

“Viewed thus the defendant's commercial, which shows the model in the same taking
out the pluggy device by describing it as 15 years old and obsolete method is a clear
case of disparagement of devices like that of the plaintiffs that are based on that
concept or technology and would therefore, be impermissible.”42

The said truism was even applied in Eureka Forbes Ltd. and Anr. v. Pentair Water India
Pvt. Ltd.43, the Karnataka High Court also followed the ratio laid down in all the aforesaid
rulings and granted an injunction restraining the defendant from disparaging either UV water
purifiers in general or the plaintiff’s product Aquaguard in particular. The appellant's were a
pioneer and leader in U.V. water purifiers sold under the brand name "Aquaguard" having 70%
of the market share in the U.V. purifier segment. The respondent has issued an advertisement
denigrating the UV technology of the appellant product.44 The court took a stand that Eureka
Forbes is synonymous with the word "Aquaguard" and, in turn, Aquaguard is synonymous with
"UV". As such, the advertisement in question does affect the product of the appellant company
since the said Aquaguard uses UV technology. Therefore, the argument of the respondents that
the appellant is not a manufacturer of UV purifiers, therefore, does not make much difference in
as much as both the manufacturer as well as the trader can approach the Court if there is
disparagement of the product.

What is pertinent to examine is the advertisement in question in the context of the

business of the appellant herein? Viewed from the said angle, though the respondent has every
right to market its product by claiming that its product is superior in quality, yet, at the same
time, the freedom of expression i.e., the right to advertise, does not permit one to go to that
extent as to cause damage or irreparable injury to the product of others. Merely because the
respondent has every right to market its product by stating that its products are of superior
quality over others, yet, it cannot go to the extent of stating that the contaminants are invisible
even to UV water purifier.
42
Para 30 , Id as above
43
2007(4)KarLJ122
44
The commercial says-“Water contain contaminants that are invisible to the naked eye and to your UV water
purifier...” And Pentair’s Home RO system with PXP removes contaminants as small as 0.0001 microns...”

121
 In other words, had the advertisement in question stopped with the words "water contains
contaminants that are invisible to the naked eye", certainly, the appellant would not have any
reason to complain. But, having said so as above, the advertisement goes on to say that "it is
invisible even to the UV water purifier". The mention of 'UV' has further given rise to
disparaging the water purifier of the appellant company. As such, in my considered opinion, the
rulings referred to by the learned senior counsel for the respondent cannot come to its aid so as to
contend that the advertisement in question is not one causing disparagement to the appellant
company.45

Perhaps the position of the courts has been serene with the decision in the case of
Dabur India Ltd. v. Wipro Ltd., Bangalore46 In this case; the court added a new dimension to
the existing test for disparagement by laying down that “the degree of disparagement must be
tantamount to or almost tantamount to defamation”.47 In the present case it was alleged that
the defendant’s commercial was showing the product of plaintiff i.e.; ‘Dabur Honey’ in poor
light. But in the view of the court defendants were only showing their own product as best than
the rest available in the market and there is no disparagement or defamation in any manner.
The judgment further went on to say that:
“a manufacturer of a product ought not to be hyper-sensitive in such matters. It is
necessary to remember that market forces are far stronger than the best
advertisements. If a product is good and can stand up to be counted, adverse
advertising may temporarily damage its market acceptability, but certainly not in the
long run.”

The decision in Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd. 48was intuitive of what
is the courts notion on honest comparative advertising. In the present case, the defendants
advertised their product ‘Mortein’ which was intended to kill both cockroaches and mosquitoes
and thus commercial highlighted this aspect in their advertisement. The plaintiff claimed that
while boosting about the advantages of their product defendants attempt to disparaged their
product ‘Hit’, which had two separate versions for killing cockroaches and mosquitoes.

45
Para. 24, Id as above..
46
129 (2006) DLT 265
47
Para. 23 of the judgment in Dabur case.
48
2006 (32) P.T.C. 307.

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 The court relying on precedent on comparative advertising analyzed the case in detail,
saying that a promoter is permitted to highlight the advantage of its item, despite the fact that
same are untrue. Yet, he can't depict his rivals’ great in terrible light. In the present case the
litigant were just contrasting their item and that of offended party. It has not decried or shown the
product of the plaintiff in poor light. It has not expressed that one result of the offended party
implied for securing cockroaches and other implied securing mosquitoes are in any way
incapable in doing their separate occupation. What is underlined is that the respondent is giving
so as to give a superior and more advantageous arrangement two-in-one item.49

The court in its verdict also stated that the advertiser has a right to boast of its
technological superiority in comparison with product of the competitor. By merely informing the
consumer that he could use one sole product to kill two diverse species of insects without
dejecting the plaintiff’s products, by no stretch of imagination amounted to disparaging the
product of the plaintiff.

A leading example of comparative advertising is Horlicks v. Complan50 . This case

relates to the commercial conflict between the two well-liked health drink brands Horlicks and
Complan in India. The war for dominance between the two giants started as early as in 1960s
and had continued till 2010. Over the years, they have taken pot shots at each other with
spoofs in advertising. The brands were involved in aggressive comparative advertising in print
and television over aspects like ingredients, protein content, growth, and flavors. However, in
late 2008, Horlicks, the health drink from Glaxo SmithKline (GSK) in its TVC blatantly
showed its competitor brand Complan and compared how Horlicks was a smarter choice.51
Industry observers felt that in their bid to outdo each other, the two companies had ended up

49
The court observed in Para 24 that “…products the simple message which is sought to be conveyed is that the
product of the defendant is better in the sense that it is more convenient to use the same for destroying two different
kinds of insects at the same time. There is neither any negative reference to the plaintiff's products nor it is
defamatory or libellous. This kind of advertisement is permissible as it would fall in principle No. (iii) carved out in
Reckitt & Colman of India Ltd. v. M.P. Ramchandran and Anr. ,which, inter alia, lays down that for the purpose of
showing that his goods are best in the world or his goods are better than competitors he can even compare the
advantages of his goods over the goods of others.
50
Decided On: 12.11.2010, I.A. No.(un-numbered) (O-39, R-1&2 CPC) in CS(OS) 547/2010, available at :
http://lobis.nic.in/dhc/SRB/judgement/22-11-2010/SRB12112010S26462008.pdf (Last visited on Apr.12th 2013)
51
Tuhina Anand, “Comparative advertising: Too hot to handle”, available at
http://www.exchange4media.com/33411_comparative-advertising-too-hot-to-handle.html (Last visited on Aug 23rd
2013).

123
 denigrating the competitor brand. According to Manish Bhatt, VP and ECD, Contract
Advertising,
“Comparative advertising, when tastefully executed, can be an example of successful
advertising. Brands are built on competitive spirit, but there has to be a long term
strategy in building brands and the proposition should be unique enough to make it
convincing. Else it’s akin to salesmen fighting among each other proving their brand to
be better, which ends up actually mocking the product.”52

Usually issues related to disparaging commercial by rival companies were resolved by

the Advertising Standards Council of India (ASCI). But with constant mudslinging at each
other, the two companies decided to solve the issue in courts. In September 2008, Heinz
moved the Bombay High Court objecting to the Horlicks advertisement, while in December
2008, GSK approached the Delhi High Court against the Complan advertisement. Experts felt
that the latest tiff between GSK and Heinz had brought to the fore the concern and confronts
involved in comparative advertising and the legal/ethical issues involved in such kind of
advertising53.

In a recent judgment, Justice Ravindra Bhat of the Delhi High Court has passed interim
orders in long standing litigation between Glaxo Smithkline & Horlicks on one hand and
Heinz, the manufacturer of Complan, on the other hand. This particular ad-war took a rather
horrible turn with the opponent calling each other’s product 'cheap'. All three suits pertain to
commercial disparagement. Justice Bhat has very clearly ruled in favour of Horlicks since the
ad-campaign against them was clearly disparaging and also ordered Complan to pay Horlicks
costs of Rs. 2.2 Lakhs only54.

The history of inter se litigation between the parties is provided as below:

First Suit – M/s Glaxo Smithkline Consumer Health Care Ltd. v. Heinz India (P) Ltd., 2008

52
Id as above
53
http://www.icmrindia.org/casestudies/catalogue/marketing/MKTG209.htm (Last visited on Aug.23rd 2013)
54
http://spicyipindia.blogspot.com/2010/12/delhi-high-court-rules-on-horlicks-v.html (Last visited on Aug.23rd
2013).

124
 The first suit pertains to two advertisements by Complan (Heinz). In the first
advertisement Kavita, (the “Horlicks mother”) is out shopping when she is approached by
another young mother, known to her (the “Complan mother”). The latter asks Kavita why she
has started compromising on her child’s health; to which, Kavita gets confused and seeks an
explanation. The Complan mother explains by telling that she (Kavita) was buying a product
made of cheap ingredients and that she is compromising with her child’s growth.The Complan
mother then picks out a Complan packet and explains how it has 23 vital ingredients which
would ensure fast growth of a child. The ad then shows the Horlick’s mother visibly pushing
away a package bearing the Horlicks trademark explaining how she had been misled and how
she would no longer repeat the same mistake again. In the second advertisement by Complan, a
Horlicks mom asks the Complan Mummy how her son was so tall and strong. The Complan
mother then explain the qualities of Horlicks after which she asks the Horlicks mother: “have
you ever read the label of cheap Horlicks?” This is followed by the Complan mom explaining to
the Horlicks mom that Horlicks is made of cheap products and ingredients which means less
nourishment & protein. The ad ends with a voiceover praising Complan “drink Complan and see
the difference”.

Second Suit – M/s Glaxo Smithkline Consumer Health Care Ltd. v. Heinz India (P) Ltd., 2008
The second suit pertains to a print advertisement in leading Delhi newspapers comparing
the ingredients of Complan and Horlicks with specific emphasis on the fact that some of the
ingredients in Horlicks are ‘cheap’ and how a Child’s growth would be compromised by
consuming Horlicks. The advertisement also draws attention to a scientific report by the National
Institute of Nutrition which substantiates the fact that Complan has good ingredients etc.

Third Suit – (Heinz India (P) Ltd. v. M/s Glaxo Smithkline Consumer Health Care Ltd.), 2010
This suit which was transferred from the Bombay High Court to the Delhi High Court was
filed by Complan (Heinz) against Horlicks. This 30 seconds advertisement placed both the
products i.e. Complan & Horlicks next to each other, compares the prices and according to
Heinz, passes disparaging comments against the quality and nutritional value of Complan when
compared to Horlicks.
The law on commercial disparagement is crystal clear i.e.

125
 a trader can puff up his goods in comparison to his competitors goods but he cannot
denigrate or disparage the competitor’s goods while doing so. Therefore while it may be
permissible to state that Product A is better than Product B it is not permissible to state
that Product B is worse than Product A.

In his order, Justice Bhat finds the two advertisements in the first suits as disparaging
and beyond the dominion of permissible puffing. The primary reason for this is that the repeated
use of the word ‘cheap’ & ‘compromise’ along with the remaining insinuations would definitely
harm the reputation of Horlicks.55 The advertisements in the second suit were held to be within
the domain of puffing as they seem to be based on some scientific report, the validity of which
could be established only during trial. The advertisements in the third suit were held to be in the
realm of puffing.56 Justice Bhat did not agree with Complan’s allegation that the manner of
comparison between both products disparaged its own product and held the same to be fair.

The interesting part of this judgment is where Justice Bhat draws a distinction between
advertisements in different mediums i.e. print and television with the standard of judicial
scrutiny being much higher in the latter than in the former.57 The reason for this according to
Justice Bhat is the fact that:
“television advertisements unlike print advertisements make an instant impact across
consumer classes and the level of impact of such advertisements on the consumer is much
greater than a print advertisement where each word has to be read, analyzed and
understood. Advertisers therefore will have to tread much more carefully when creating
comparative advertisements for television.

In Reckitt Benckiser (India) Limited v. CavinKare Pvt Ltd.58 , Reckitt filed suit against
CavinKare for disparagement of its product Harpic (a toilet cleaner) in a television
advertisement. Its main contention, together with false and misleading comparisons, was that the
blurred image of the bottle with which CavinKare's product was compared was virtually identical

55
It was observed in Para 25 of the said judgement that “The line between the a permissible expression, and the
pejorative or what is likely to cast a slur on another’s goods, is slight, and determined by the context in which terms
and expressions are used. While “cheap” may be positive, in the context of a trader proclaiming that his wares are a
bargain, or good value for money, (since in the case of many products, consumers are price sensitive) “cheap” used
by a rival, in an advertisement might well connote not just inexpensive, but inferior.”
56
See Para. 31.
57
Also see Para.27 of the above said judgement.
58
2007 (35) PTC 317 (Del)

126
to the Harpic product in terms of the shape of the bottle, its blue colour, its red cap and its white
label. CavinKare provided evidence to counter Reckitt's allegations.

Since the act of disparagement depends on the facts and circumstances of the case, the
court pointed out that disparagement may be subtle, clever or covert as well as clear, direct and
brazen.
Every disparagement is not actionable and for disparagement to be actionable it should
be such as to bring it within the tort of malicious falsehood and the plaintiff as a result of
the same should be shown to have suffered a special damage.

As the advertisement in no way mentioned Reckitt's product and the bottle was blurred to
the extent that no exact shape was visible, the court stated that the comparison showed only be
with the positive attributes of CavinKare's product. The court thus held that CavinKare was not
attempting to disparage Reckitt's product.

Even in the case of Hindustan Unilever Limited v. Procter & Gamble Home Products59
the fight is about two fairness cream companies Ponds and Fair & lovely. It was alleged that the
respondent company through their TVC were showing plaintiff product in negative light.60After
evaluating the contention of both the parties the court observed that there has been comparison
done by the respondent. But in doing so it doesn’t denigrate the product of appellant nor it has
given any such indication to the audience that the product of appellant is bogus or bad. By
simply saying the phrase “sirf upar se kaam karti hain.......andar se nahin”, the respondent has
just made a general comparison with his competitor, it no where indicates that appellant product
is inferior to that of defendant.

In the case of Paras Pharmaceuticals Ltd. v. Ranbaxy Laboratories Ltd.61 the court came
with criteria of objective test of reasonable audience. The case pertains to dispute between the
manufacturer of two pain-relieving companies MOOV and VOLINI respectively. The appellant
(MOOV) urged that through negative advertising the defendants have disparaged their product.

59
C.S.NO.43 OF 2010, available at http://www.indiankanoon.org/doc/1738868/. (Last visited on Aug 23rd. 2013).
60
The facts of the case says that the respondent fairness cream goes inside the skin and produce glow from within,
but other fairness cream does not at all go inside the skin.
61
AIR 2008 Guj 94.

127
The TV commercial, in question, contains a subtle message and suggestion that the product
shown in the advertisement are ineffective as ache reliever and the viewer shall thus, switch to
the product of the respondents.62 The same was agreed by the learned judge, it was observed that
“the Court was not convinced with the submission of the defendant as there appears to be
no honest practice of comparing one's product with a non-existent product. By adopting a
violet colour which is adopted by the appellant to cover up its product and the appellant's
product is by and large known in the general public with that colour, and since the
appellant's product is much popular amongst the general public as a pain reliever, the
respondent has tried to take unfair advantage which may amount to an infringement of
the Trade Mark within the meaning of Section 29(8)(a) of the Act. By taking shelter of a
non-existent product violet coloured pack,, if the respondent tries to establish that its
product is true pain reliever than the other product, it would certainly affect the
reputation of the Trade Mark of the appellant and to this extent, Clause (c) of Section
29(8) of the Act can also be invoked for the purpose of satisfying the Court that the
respondent has infringed the Trade Mark of the appellant.”

In all such cases, the basic criterion is test of average consumer. The reasonable
audience would normally go by the colour which is shown on the TV commercial. In a
country like India, lacks of people are illiterate and they are in need of pain reliever at
every stage. The figures given by the appellant indicate that the turnover of the
appellant's product MOOV is on a very large scale and the TV has reached to the remote
villages and areas of this country. Thus, there may not be an objection against the TV
commercial of the respondent's product but the way in which the said product was
introduced T.V. Commercial and telecasted, is certainly objectionable.”

Thus the said commercial was considered as objectionable disparaging the product of the
appellant and causing infringement of their respective trademark.

In the case of Reckitt Benckiser v. Hindustan Lever63, the learned Judge of Delhi High
Court had to determine whether the impugned advertisement promoting lifebuoy is attacking on
the goodwill and reputation of its competitor brand Dettol in an indirect manner. The TVC
skillfully showed a woman using a new orange colored soap for bathing and was made fun for
62
According to the TV commercial a lady was suffering from the ache, she takes out a box of pain reliever product,
is clearly identical with the box used by the appellant for marketing its product MOOV as the box is having
distinctive artistic work and colour scheme. The appellant submits that in the fourth, fifth, sixth and seventh frames
of the TV commercial a lady comes to the MOM (lady) and suggesting her to use another remedy and gives her
respondent's product VOLINI Gel and says "YOU NEED A TRUE PAIN RELIEVER". The indirect message and
suggestion contained in the advertisement is that the product of the appellant, namely, MOOV is not enough and has
not acquired good quality for remedy of backache, lower backache and joint pain and for other aches and the
customers shall continue to suffer from the various aches, as mentioned above, if they continue to use the appellant's
product, so the respondent's product, namely, VOLINI, is better and a true pain reliever.
63
2008 (38) PTC 139 (Del)

128
the same by her husband and kids.64 The next frame showed that how her doctor husband
explained the ill- effects of ordinary antiseptic soap on skin while the new lifebuoy skin Guard
being free from all such flaws.65 The defendant pleaded that the said commercial was not
directed towards Dettol, as the defendants soap is not an antiseptic soap. A reference was also
made to a decision of this Court in the case of Reckitt Benckiser (India) Limited v. Naga Limited
& Others66in which it was allegedly held that the plaintiff's soap is not an antiseptic soap.

But the High court rejected this argument as well stating that the test to be applied is that
of perception of an ordinary person with imperfect recollection who should be picked from the
category of users of the product allegedly sought to be disparaged or slandered. The court also
awarded punitive damages of Rs. 5 Lakhs with an explanation that the said disparaging
commercial was a deliberate act of the defendants to reduce their sales and providing undue
advantages to its own product.67

The court also viewed that:

“the law permits a businessman to puff up his product and show it in a better light than
that of his competitors. But it doesn’t permit a manufacturer or a trader to advertise in
such a manner that it slanders the products of its competitors, virtually rubbishing the
same, while promoting his own product”

In the present case Court has found that

“the defendant has been intentionally unfair in it’s said advertising campaign, it is
reason enough for this Court to impose punitive damages so as to discourage such a
sharp practice and to put to an end to this growing tendency.”

64
The commercial shows the husband, a medical doctor, and the children telling the lady of the house not touse the
soap and the vocals state: "Oh God bachaa lena naadaan ko aql dena....Hum sab ko bachaa lena".
65
The next frame shows that the Plaintiff's soap is not effective against fighting germs whereas the Defendant's soap
is effective against fighting germs. The words used in the advertisement are: - "Dua ki zarurat padegi is dawa ke
saath. Aam antiseptic sabun twacha ko rukha kar dete hai jis se dararon mein kitanu ghus jaate hain...isi liye naya
Lifebuoy skin guard jo kare kitanuon per waar aur banaye suraksha ki bhi deevar."
66
2003 (26) PTC 535 (Del.)
67
The court observed that “there is no impediment to a trader employing any means possible, provided such means
are fair, to increase his sales, even at the cost of its competitors. But the law does not permit any person to use
unfair means or practices to gain and profit to the detriment of his competitors. Such unfair means or practices
include disparaging advertisements/slander of goods.”

129
 Even in the case of S.C. Johnson & Son, INC & Anr. v. Buchanan Group Pty Ltd. &
Ors68, it was held that the impugned advertisement prima facie does seem to denigrate the
plaintiffs' product and, therefore, the Court should restrain the defendants, the respondent herein
from using the impugned advertisement. Here the defendant were comparing their product ‘CIF
cream’ to be better than the plaintiff product "MR. MUSCLE KITCHEN CLEANER" by
virtually showing similar container and alluding audience to believe that tough kitchen stains can
only be removed by using advanced product, that is, "CIF cream" with least amount of effort.
The court declared this to be an innuendo reference to plaintiff product wherein the defendants
alluding to a "specific defect" or "demerit" in the plaintiff’s product. Thus prima- facie the
impugned advertisement denigrate the goods of plaintiff and liable to be set aside.

This case was shortly followed by the case of Procter & Gamble Home Products v.
Hindustan Unilever Limited,69 wherein the Calcutta High Court highlighted the difference
between express denigration and puffery. The petitioners were manufacturers of a detergent
powder brand ‘Tide’, while the respondents were the market rivals of ‘Tide’ and the
manufacturers of the detergent powder ‘Rin’. The respondents aired a commercial that compared
both the products and allegedly portrayed the petitioner’s product in a negative manner, claiming
that ‘Rin’ was more effective than ‘Tide’ in providing ‘whiteness’ to clothes.70 The petitioner
thus prayed for an injunction to restrain the respondent from telecasting the advertisement,
contending that the same had not stopped at merely puffing the advertised product, but had
disparaged the competing product. The respondents herein submitted that the assertions in the
advertisement were a comparison of the quality of the two products, in particular the ‘whiteness’
quotient, that the respondent’s product was imparted due to the use of certain chemical
fluoresces. They argued that the fact that the whiteness provided by Rin was better could be
inferred from laboratory tests conducted by both the respondent and independent agencies, thus
resulting in an absolute defense of truth. Since the comparison was strictly restricted to the
whiteness as provided by the respondent’s product due to the chemical fluoresces, it was argued
that the commercial fell within the ambit of permitted comparative advertising. Nevertheless the

68
2010 (42) PTC 77
69
C.S. No. 12 of 2010, Calcutta High Court, Judgment on: 20th May, 2010, BEFORE: The Hon'ble Mr. Mohit S.
Shah, C.J. and the Hon'ble Mr. Justice Pinaki Chandra Ghose.
70
A recent advertisement shows Rin, a product of Hindustan Unilever Limited, directly attacking the Tide Naturals
product by Procter & Gamble. ‘Tide se kahin behatar safedi de Rin’ (Rin gives better whiteness than Tide).

130
said contention was not accepted by the court and it was declared to be a clear case of
disparagement, being specific feature to feature comparison. Later the commercial was modified,
however it was still in violation of court-order dated 5th March, 2010.71 This time a contempt
application was forwarded in the High Court of Calcutta. The court after hearing the parties came
to the conclusion that
“the advertisement aired by the alleged contemnor- respondent company subsequent to
the said order nowhere mentions the product "Tide" but it certainly has chosen the same
models and same music. This, it could not have done as by the said order the alleged
contemnor- respondent company was restrained from "disparaging the petitioners in any
manner whatsoever". If it had no intention of remotely also associating its product with
that of the petitioner, there was no need to use the same models wearing the same sari or
playing the same music as was done in the earlier advertisement.”72

Therefore, it is seen that that there has been violation of courts order and accordingly the
advertisement was set aside.

In Eveready Industries India Ltd v. Gillette India Ltd73, the Eveready batteries were
shown in bad light as being inferior to Durecell alkaline batteries manufactured by Gillette
Company.74 The court after considering the advertisement observed that “the product, ordinary
battery shown in the advertisement did not have any label; however, it was painted red. Since the
product of Eveready had a dominant effect on the indigenous market and most of their products
having color as red 'unwary purchasers' might think that such ordinary battery would mean
Eveready.” The abridged view of the learned judge on the issue was that
“An advertisement would have to be examined as a whole to find out the dominant effect
of it. If the dominant effect would give sufficient indication that it was disparaging
someone's product or a class of product, the action would deserve redressal by the Court
of law…The manufacturer and/or trader would be at liberty to advertise their product in
the way they want. However, such advertisement must not offend the laws of the land. If
someone tries to depict, his product is the best, he is at liberty to do so. If he tries to
depict, his product is better than the product of X, he would offend X and would be

71
Procter & Gamble Home Products v. Hindustan Unilever Limited C.C. No. 42 of 2010 with C.C. No. 27 of 2010,
Calcutta High Court, Judgment on: 26 April, 2011, BEFORE : The Hon’ble Justice Patherya.
72
Id as above.
73
As delivered by Calcutta High Court and available at http://judis.nic.in/Judis_Kolkata/detail.aspx.(Last visited on
Apr.12th 2013)
74
The commercial on electronic media showed ordinary batteries in red color do not last long. It was complained by
the petitioner that color red always played a dominant role on their product and Duracell thereby made disparaging
remark about their product by giving enough indication to the members of the public that Eveready batteries were
substandard to Duracell.

131
 vulnerable for an action for disparaging attempt. Similarly, if someone unfairly
disparages a class of product, that would equally be vulnerable for an action of the like
nature. Once such action is brought and the defendant is able to prove that his remark
was backed up by concrete evidence he would succeed to resist such action.”

In the present case if the commercial only illustrate that alkaline batteries were superior
to Zinc/Carbon Battery, no action lies. But here, the word 'Zinc/Carbon' battery shown as
average battery was printed in microscopic font and could not be easily readably the viewer,
making it a clear case of disparagement.

Departure from Norms laid in previous cases

One case, however, has marked a significant departure from the traditional approach to
commercial puffery (where there is no disparagement) i.e.; Colgate Palmolive (India) Ltd. v.
Anchor Health & Beauty Care Private Ltd.75 Here judge at the High Court of Madras held that
false claims by traders about the superiority of their products, either directly or by comparing
them against the products of their rivals, were not permissible. In this case, an advertisement was
telecast by the defendant, Anchor, claiming that:
I. its product was the only toothpaste containing the ingredients calcium, fluoride and
triclosan;
II. it was the first all-round protection toothpaste;
III. the fluoride in Anchor toothpaste gave30% more cavity protection; and
IV. the triclosan contained in Anchor toothpaste was ten times more effective in reducing
bacteria.
The plaintiff, Colgate, objected to these claims, stating that it was the pioneer in the field and
that its own toothpaste contained the three ingredients prior to Anchor. Colgate claimed that
Anchor’s statement with regard to fluoride protection, and the efficiency of triclosan, was false
and misleading as the amount of fluoride in toothpaste is mandated by Rule 149-A of the Drugs
and Cosmetics Rules. Colgate claimed that “a false statement which stops at being a mere puffery
may be within the tolerance limits permitted by law. A claim which exceeds the said limit would
amount to disparagement of the other people’s product and that, therefore, the same cannot be
allowed to continue”. In its interim order, the court restrained Anchor “from using the words

75
(2008) 7 MLJ 1119)

132
‘only’ and ‘first’ in the offending advertisement, in a manner sending a message as though the
respondent’s product is either the only one containing all three ingredients, or the first to provide
all-round protection”.

The court asserted that consumer interest is an element which should be considered when
evaluating comparative advertising. It further observed that the law in India neglected to make
note of the demands of consumer justice, despite the introduction of the Consumer Protection
Act, 1986, and the resulting widening of the law and approach identifying with consumer
protection. This gives off an impression of being the first run through a court has of consumer
interest in its analysis of such advertising.76 At first glance, the pronouncement has all the
earmarks of being conflicting with prior case law on this issue.

However, as no other rulings have referred to the interests of consumers, the Colgate Case is
not in direct contradiction to prior decisions – though the High Court of Madras failed to notice a
recent order of the Delhi High Court in the case of Reckitt Benckiser v. Hindustan Lever77, which
held that mere ‘generic’ puffery is not actionable. The Madras High Court observed that:
“Recognizing the right of producers to puff their own products even with untrue claims,
but without denigrating or slandering each other’s products, would be to ‘de-recognize’
the rights of the consumers guaranteed under the Consumer Protection Act 1986.” The
court also held that: “To permit two rival traders to indulge in puffery, without
denigrating each other’s products, would benefit both of them, but would leave the
consumer helpless.”

The court further held:

“If on the other hand, the falsity of the claim of a trader about the quality and utility value
of his product is exposed by his rival, the consumer stands to benefit by the knowledge
derived out of such exposure. After all, in a free market economy, the products will find
their place, as water would find its level, provided the consumers are well informed.
Consumer education, in a country with limited resources and a low literacy level, is
possible only by allowing a free play for the trade rivals in the advertising arena, so that
each exposes the other and the consumer thereby derives a fringe benefit.“Therefore, it is

76
It was observed by the court-“ the first lesson taught to a consumer, in movements to create awareness, is that and
every rupee spent on advertisement is a nail on the coffin of consumer's sovereignty”
77
2008 (38) PTC 139(Del)

133
 only on the touchstone of public interest that such advertisements are to be tested.”78

Based on these findings, the court crafted the following principles:

I. Publication of advertisements as free commercial speech is protected by Article 19(1)(a)
of the Constitution;
II. Restrictions contained in statutes such as the Monopolies and Restrictive Trade Practices
Act and the Consumer Protection Act satisfy the test of reasonable restrictions allowed by
Article 19(2) of the Constitution;
III. If a case of disparaging advertising falls within the definition of the term ‘unfair trade
practice’, an action may be brought before a consumer court or a civil court by a
consumer, a group of consumers, a consumer association, the central or state
governments, a manufacturer or marketer where the advertising contains a false
representation as per Section 2(1)(r) of the Consumer Protection Act;

Section 2(1)(r)79 of the Consumer Protection Act categorizes four types of representations as

78
Here the court expressed their doubt on maintainability of false claims as to the superiority of a product and
further said that if the trader indulge in puffery without hitting each other, the consumer would be mislead by both,
he will only stand benefited if these rivals are restrained from making false and misleading representation.
79
Consumer Protection Act, 1986, S.2(1)( r) - "unfair trade practice" means a trade practice which, for the purpose
of promoting the sale, use or supply of any goods or for the provision of any service, adopts any unfair method or
unfair or deceptive practice including any of the following practices, namely;—

(1) the practice of making any statement, whether orally or in writing or by visible representation which,—
(i) falsely represents that the goods are of a particular standard, quality, quantity, grade, composition, style or
model;
(ii) falsely represents that the services are of a particular standard, quality or grade;
(iii) falsely represents any re-built, second-hand, renovated, reconditioned or old goods as new goods;
(iv) represents that the goods or services have sponsorship, approval, performance, characteristics, accessories, uses
or benefits which such goods or services do not have;
(v) represents that the seller or the supplier has a sponsorship or approval or affiliation which such seller or supplier
does not have;
(vi) makes a false or misleading representation concerning the need for, or the usefulness of, any goods or services;
(vii) gives to the public any warranty or guarantee of the performance, efficacy or length of life of a product or of
any goods that is not based on an adequate or proper test thereof;
Provided that where a defence is raised to the effect that such warranty or guarantee is based on adequate or proper
test, the burden of proof of such defence shall lie on the person raising such defence;
(viii)makes to the public a representation in a form that purports to be—
(i) a warranty or guarantee of a product or of any goods or services; or
(ii) a promise to replace, maintain or repair an article or any part thereof or to repeat or continue a service until it
has achieved a specified result, if such purported warranty or guarantee or promise is materially misleading or if
there is no reasonable prospect that such warranty, guarantee or promise will be carried out;
(ix) materially misleads the public concerning the price at which a product or like products or goods or services,
have been or are, ordinarily sold or provided, and, for this purpose, a representation as to price shall be deemed to

134
actionable ‘unfair trade practices’, namely: false representations falling under sub-clauses (i), (ii)
and (iii); representations which may not necessarily be false but are nevertheless incorrect under
sub- clauses (iv) and (v); warranty or guarantee under sub-clauses (vii) and(viii); and false or
misleading representations that fall under sub- clauses (vi), (ix) and (x).

The court, observing the statutory basis of unfair trade practices, noted that:
“It is doubtful if false claims by traders, about the superiority of their products, either
simpliciter or in comparison with the products of their rivals, are permissible in law. In
other words, the law as it stands today, does not appear to tolerate puffery anymore.”

Notably, the court found this to be permissible advertisements which “tend to enlighten
the consumer, either by exposing the falsity or misleading nature of the claim made by the trade
rival or by presenting a comparison of the merits (or demerits) of their respective products”.

Interpreting such advertisements to be in the ‘public good’, the court referred to two
examples as a special case to this – in particular, if advertising is roused by malice, and on the off
chance that it is false. The court held this kind of advertising would advantage society in light of
the fact that contenders are normally better prepared to uncover an adversary's untrue case.

The court also held that the benefit to society from such an exposure would “outweigh the
loss of business for the person affected”. This observation was based on the court’s assumption
that comparative advertising, even if it did not amount to a disparagement of other goods, could
result in consumers being misled.

The court held that it was ultimately to the benefit of consumers to allow truthful

refer to the price at which the product or goods or services has or have been sold by sellers or provided by suppliers
generally in the relevant market unless it is clearly specified to be the price at which the product has been sold or
services have been provided by the person by whom or on whose behalf the representation is made;
(x) gives false or misleading facts disparaging the goods, services or trade of another person.
Explanation. - For the purposes of clause (1), a statement that is—
(a) expressed on an article offered or displayed for sale, or on its wrapper or container; or
(b) expressed on anything attached to, inserted in, or accompanying, an article offered or displayed for sale, or on
anything on which the article is mounted for display or sale; or
(c) contained in or on anything that is sold, sent, delivered, transmitted or in any other manner whatsoever made
available to a member of the public, shall be deemed to be a statement made to the public by, and only by, the
person who had caused the statement to be so expressed, made or contained;
 

135
‘exposures’ and to restrain traders from making “false, incorrect, misleading representations or
issuing unintended warranties (as defined as ‘unfair trade practice’ under the Consumer Protection
Act, 1986)”.This balancing of trader interests with consumer interests means that an
advertisement which makes false claims whether comparative or not, may be subject to an
injunction or restraining orders from a court.

Hence the Court accepted the defendant’s argument that there had been no active
disparagement of the plaintiff’s product. However, the use of the terms ‘only’ and ‘first’ in an
untruthful and misleading manner was considered to be constitutive of an unfair trade practice.
Hence, the Court admitted the prayer of the plaintiff to a limited extent and restrained the
defendant from the usage of the words ‘first’ and ‘only’ in the said manner.

Another important case that has turned the course of law laid on comparative advertising
is of Dabur India v. Colortek Meghalaya Ltd.80. This was the first case that has overruled the
settled principle of law on comparative advertising. It was the case where the Appellant Dabur
contended that its mosquito repellent brand “Odomos” was disparaged by an ad of the
respondent Colortek which owned the rival brand “Good Knight”. The Division Bench of the
Delhi High Court affirmed the Single Judge’s decision that there was no disparagement of
Odomos in the impugned advertisement.81 Consequently, no injunction was granted against the
respondent Colortek. To support its decision, the Court referred to a host of Supreme Court
decisions on various aspects of the issue.82

On the basis of law laid down by the Supreme Court, the court came with four important
guiding principles that are as follows:

80
2010 (42) PTC 88 (Del.).
81
It was observed in the present case by the Single Judge Bench that “The statement made by the defendant may be
an idle boast or puffery but it certainly does not constitute disparagement. The defendant cannot generally be seen
to disparage mosquito repellent creams because it manufactures the same as well. There is another way of looking
at it. Suppose the defendant were to say that Good Night Naturals is a milk protein based product which does not
cause allergy and rashes, would that amount to disparagement ? The answer would be a clear No. If that be so,
merely because it says the same thing in a more round about manner- which is .if you apply you get rashes, there is
a risk of allergy and top of that it is sticky and if you don't then it is fun time for mosquitoes........- is not in my view a
statement which disparages the rival's product.”
82
Refer Tata Press Ltd. v. MTNL & Ors., (1995) 5 SCC 139, In Colgate Palmolive (India) Ltd. v. Hindustan Lever
Ltd., (1999) 7 SCC 1, Pepsi Co. Inc. & Ors. v. Hindustan Coca Cola Ltd. & Another, 2003 (27) PTC 305 (Del.)

136
 I. An advertisement is commercial speech and is protected by Article 19(1) (a) of the
Constitution.
II. An advertisement must not be false, misleading, unfair or deceptive.
III. Even if there would be some grey areas but these need not necessarily be taken as
serious representations of fact but only as glorifying one's product.
IV. While glorifying its product, an advertiser may not denigrate or disparage a rival
product.

It simply implies that protection given under Art.19 (1) (a) of the constitution is available
to the extent that an advertisement is fair. As soon as an advertisement becomes false,
misleading, unfair or deceptive, it would not have the benefit of any protection.

The court also amplified the factors laid in Pepsi Co. case83 relating to the question of
disparagement. The amended factors are reiterated below: (1) The intent of the advertisement -
this can be understood from its story line and the message sought to be conveyed. (2) The overall
effect of the advertisement - does it promote the advertiser's product or does it disparage or
denigrate a rival product? (3) The manner of advertising - is the comparison by and large truthful
or does it falsely denigrate or disparage a rival product? These amended factors suggest that
while endorsing a product the advertiser may, make an unfavorable comparison but that may not
necessarily affect the story line and message of the advertised product. Similarly truthful
disparagement is acceptable but untruthful disparagement is not permitted.

The pronouncement delivered in the present case assumes significance in the regulation
of comparative advertising as it focuses out bleak differences between tolerable amounts of
puffery and what might amount to denigration.84

The Court declined the argument of the appellant that it was an implied case of
denigration since it had a dominant market share. The underlying principle behind this argument

83
Pepsi Co. Inc. & Ors. v. Hindustan Coca Cola Ltd. & Another, 2003 (27) PTC 305 (Del.)the factors laid by court
are as follows: (i) Intent of the commercial, (ii) Manner of the commercial, and (iii) Story line of the commercial
and the message sought to be conveyed.
84
Parth and Shreya, “Comparative advertising in India: Evolving a Regulatory Framework”, 4 NUJS Law Review
131, January-March, p.145 (2011).

137
would be that the appellant sought to create a monopoly in the market, or had wanted to embed
the monopoly it had already established. If such a thing were to happen, then no company in the
market could advertise its product as doing so would necessarily mean that the appellant’s
product was being targeted.85 The commercial in dispute merely enlisted the qualities of the
advertised product rather than denigrating that of the competitor. The Court found no content in
the commercial to suggest overt or even implied denigration. It was held to be natural to assume
that
“while comparing its product with any other product, any advertiser would naturally
highlight its positive points but this cannot be negatively construed to mean that there is
a disparagement of a rival product.”

An additional submission by the appellant was that the use of expressions such as ‘an
apprehension of getting rashes and allergy with the use of mosquito repellent creams’, or an
allegation that other creams caused stickiness, amounted to disparagement of its product. This
was again rejected by the Court as there was no suggestion that any specific product caused
rashes or allergies or was sticky. A general proposition had been advanced which suggested that
if a mosquito repellent cream was applied on the skin, there may be an apprehension of rashes
and allergy. Since the respondents were also promoting a mosquito repellent cream, there was no
reasonable apprehension that they would denigrate all mosquito creams or of the fact that such
creams caused rashes or allergies. The respondents were only suggesting that since their product
contained certain exclusive ingredients like tulsi, lavender and milk protein, there is a lesser
chance of the consumer suffering from any side effects. With regard to the point on stickiness,
the Court observed that it was entirely dependent on the subjective opinion of the consumer, and
thus ended all apprehension of denigration of the appellant’s product.86 Besides, it referred to the
appellant as being ‘hyper-sensitive’ and suggested that the parties were settling a commercial
rivalry by using the courts as a medium to ward off challenges to their monopolistic position in
the market.

85
Dabur case, Para 20.
86
Also see, S.C. Johnson & Son, Inc & Anr. V.Buchanan Group Pty Ltd., High Court of Delhi at New Delhi CS (OS)
No. 2173/2009.

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 While wrapping the case, the Court concluded that with reference to the preposition laid
in M.P.Ramchandran case87 and the ratio given in the Tata case88 the propositions (a) and (b)
above and the first part of proposition (c), are not good law. 89The court also observed that while
puffed-up advertising may be permissible, it cannot transgress the grey areas of permissible
assertion. In case it does so, the advertiser must have some reasonable factual basis for the
assertion made. The medium of advertisement was also one of the determining factors for
denigration. The far-reaching consequences of the electronic media were looked into. Since “a
telecast reaches persons of all categories, irrespective of age, literacy and their capacity to
understand or withstand the impact of a telecast on society was held to be phenomenal.” 90

On similar line dispute between Fortune and Saffola91 wherein the latter has contended
that the latest advertisement of the former cooking oil is false and disparaging its goodwill and
reputation. The television commercials and print advertisements issued by the defendant by
making patently false, unsubstantiated and misleading claims and statements in respect of
Fortune RBO as being, (a) healthiest oil in the world even healthier than the plaintiff’s
SAFFOLA brand edible oil as it has RBO which is good for heart, skin and immunity. The court
after looking into the electronic and print media advertisement and the settled principle of law
held that “a trader was entitled to advertise that his product has a cost or price advantage over
the rivals’ goods as long as it is accurately done.”

The court based its judgment on principle enumerated in Colortek case92 saying that the
intent, storyline and the message conveyed by the advertisement in both electronic and print
media nowhere denigrate the product of plaintiff or showed it in bad light. It merely informs the
consumer about the advantages of the defendant’s goods over the goods of others. Again the
court gives similar ratio as in the previous case that:

87
Reckitt & Colman of India Ltd. v. M.P. Ramchandran and Anr., 1999 (19) PTC 741
88
Tata Press Ltd. v. MTNL & Ors., (1995) 5 SCC 139,
89
Reckitt & Colman of India Ltd. v. M.P. Ramchandran, preposition: (a) A tradesman is entitled to declare his goods
to be best in the world, even though the declaration is untrue. (b) He can also say that his goods are better than his
competitors', even though such statement is untrue. (c) For the purpose of saying that his goods are the best in the
world or his goods are better than his competitors' he can even compare the advantages of his goods over the goods
of others.
90
D.N. Prasad v. Principal Secretary, 2005 Cri LJ 1901.
91
Marico Limited vs Adani Wilmar Ltd, 2013 INDLAW DEL 1027
92
Dabur India Ltd vs. Colortek Meghlaya Ltd, 2010 (42) PTC 88 (Del.).

139
 “it cannot adopt a hyper- technical view and penalize the defendant for not disclosing
each and every detail regarding the product so long as the intent, storyline and message
sought to be conveyed by the advertisement is not entirely untrue.”93

“The promotion of a robust market for trade and commerce requires that the Courts
grant some latitude to the advertisers in designing and crafting their pitch to the
consumers and the tendency to scrutinize such advertisements with a magnifying glass
must be eschewed unless of course the claims made are found to be totally
unsubstantiated and to have no basis in reason or logic.”94

Thus prima facie case is made out and the plea of the plaintiff was rejected.

Even in the case of Reckitt Benkciser (India) Ltd v. Hindustan Unilever95, plaintiff sought an
injunction against an impugned commercial disparaging their new launched product ‘DETTOL
HEALTHY KITCHEN Dish and Slab Gel’. The issue started with its own advertisement that
compared the germ killing capabilities of its product with that of defendant ‘VIM LIQUID’. For
which defendant filed a suit in Calcutta High Court vide Suit No. TN 50 of 2013. However, the
Court passed a consent order in the said matter allowing the plaintiff to continue with the
impugned television advertisement subject to small variations. As a reprisal measures defendant
came up with the impugned advertisement in print media declaring the plaintiff product as a
‘harsh antiseptic’. It was contended by the plaintiff that the advertisement campaign was purely
intended to promote their product to be superior to those of other competitors and is considered
to be outside the parameters of allowed competitive advertising.

The court after hearing the parties and looking into settled law laid, came up with following
guidelines on puffery of the goods: An advertisement is commercial speech and is protected by
Article 19(1) (a) of the Constitution; An advertisement must not be false, misleading, unfair or
deceptive; Of course, there would be some grey areas but these need not necessarily be taken as
serious representation of facts but only as glorifying one’s product; While glorifying its product,
an advertiser may not denigrate or disparage a rival product.

93
Para 19 of the Anchor judgment.
94
Para 20 of the Anchor judgment.
95
CS (OS) No. 375/2013, decided on May 14, 2013

140
 In context of the present case on the basis of the above guidelines, it was considered that the
impugned commercial was actually targeting the plaintiff product DETTOL. It creates an
impression in the mind of public that there is some linkage between dettol liquid and dettol
kitchen cleaner, as being harmful antiseptic product, thus misleading the consumer and
prejudicially affecting plaintiff product.

Thus, the Court passed an interim order restraining the defendant to the extent indicated
above from publishing the impugned advertisement or any other similar advertisement or
depiction aimed at disparaging the goodwill and reputation of the plaintiff’s brand.

Analysis based on the provisions which were mostly argued in the cases
The present scrutiny is an attempt to discover how judiciary has responded to the concept
of comparative advertising through their decisions in the backdrop of present ongoing debate and
conflicts regarding comparative advertising.

Table No. 1
The position taken on the issue of Comparative Advertisement
SNo. CASE-LAW Status of ISSUE INVOLVED CONCEPT
Court
Disparaging Advertisement though a comparative
1. Reckitt & Colman campaign for advertisement is
v. KIWI ‘KIWI’ in admissible, the same
comparison with should not in any manner
‘Cherry Blossom’ be intended to disparage
or defame the product of
the competitor
Reckitt & Colman Disparaging ‘Ujala’ in 1. boast about
2. v. comparison with technological
Ramachandran ‘Robin Blue’ – superiority
pertaining to price 2. Five essential
principle.*
3. Pepsi Co v. Disparaging ‘Thumps-UP’ v. “that mere puffing of
Hindustan Coca- ‘PEPSI’ – pertaining goods is not actionable.
Cola to PAPPI Tradesman can say his
goods are best or better.
But by comparison the
tradesman cannot slander
nor defame the goods of

141
 the competitor nor can
call it bad or inferior.”
4. New Pepsodent v. Disparaging ‘New Pepsodent’ in that a tradesman can say
Colgate comparison with his goods are the best or
‘Colgate’ – better; however by
pertaining to the comparison the tradesman
superiority of the cannot slander nor
product. defame the goods of the
competitor nor call it bad
or inferior
5. Reckit Benckiser Not Dettol soap- ayush “if a statement used by
(India) Limited v. Disparaging ayurvedic soap defendant is true in
Naga Limited comparative advertising
then the plaintiff cannot
claim relief under
comparative advertising.”
6. M Balasundaram Not the product is not
vs. Jyothi Disparaging identifiable to the
Laboratories Ltd consumers, the
advertisement could not
be misleading or cause
disparagement
7. Lakhanpal Not association to the
National Ltd. V. Disparaging trademark in a
MRTP commercial rather than its
Commission, main corporation, with
which advertiser has
worked together doesn’t
lead to perversion
amounting to deceiving
the consumers
8. Palmolive (India) Disparagem if the advertisement
Limited v Vicco ent creates an impression in
Laboratories, the mind of the consumer
about the product of the
competitor in a wrongful
manner it amount to
disparagement
9. Dabur India Generic Chayawanprash vs. even if there be no direct
Limited vs. disparagem Amritprash reference to the product
Emami ent of the plaintiff and only a
Limited reference is made to the
entire class of
Chayawanprash in its
generic sense, even in
those circumstances

142
 disparagement is possible
10. Unibic Biscuits Generic Good-Day biscuit …. if it is used to describe
India (P) Ltd. v. disparagem the product of the
Britannia ent competitor, attempting to
Industries Ltd. indirectly insinuate such
product; the product
insinuated should have
strong resemblance with
the product of the
insinuator’
11. Dabur India Ltd. Generic Colgate Tooth “generic disparagement of
Vs. Colgate disparagem powder- Lal Dant a rival product without
Palmolive India ent Manjan specifically identifying or
Ltd pin pointing the rival
product is equally
objectionable.
12. Karamchand Disparagem Mosquito repellents disparagement can be
Appliances Pvt. ent restrained even at the
Ltd. v. Sh. instance of a party who
Adhikari Brothers manufactures or trades in
that class of goods
13. Eureka Forbes Disparagem Aquaguard- UV
Ltd. and Anr. Vs. ent Water purifier Both the manufacturer as
Pentair Water well as the trader can
India Pvt. Ltd. approach the Court if
there is disparagement of
the product.
14. Dabur India Ltd. Dabour honey a manufacturer of a
v. Wipro Ltd., No product ought not to be
Bangalore dispargeme hyper-sensitive in such
nt matters. It is necessary to
remember that market
forces are far stronger
than the best
advertisements. If a
product is good and can
stand up to be counted,
adverse advertising may
temporarily damage its
market acceptability, but
certainly not in the long
run.”
15. Godrej Sara Lee No Mortien v HIT for the purpose of
Ltd. v. Reckitt dispargeme showing that his goods
Benckiser (I) Ltd nt are best in the world or
his goods are better than

143
 competitors he can even
compare the advantages
of his goods over the
goods of others..”

16. Horlicks v. Dispargeme Horlick-complan a trader can puff up his

Complan nt goods in comparison to
his competitors goods but
he cannot denigrate or
disparage the
competitor’s goods while
doing so. Therefore while
it may be permissible to
state that Product A is
better than Product B it is
not permissible to state
that Product B is worse
than Product A.
17. Reckitt Benckiser No Harpic- Every disparagement is
(India) Limited v. dispargeme not actionable and for
CavinKare Pvt Ltd nt disparagement to be
actionable it should such
as to bring it within the
tort of malicious
falsehood and the plaintiff
as a result of the same
should be shown to have
suffered a special
damage.
18. Hindustan No Ponds v Fair
Unilever Limited dispargeme &Lovely
vs. Procter & nt
Gamble Home
Products
19. Paras Disparagem Moov – volini criteria of objective test of
Pharmaceuticals ent and reasonable audience
Ltd. vs. Ranbaxy Compar-
Laboratories Ltd ative
Advertising
20. Reckitt Benckiser Dispargeme Lifebuoy- dettol the law permits a
v. Hindustan nt soap businessman to puff up
Lever his product and show it in
a better light than that of
his competitors. But it
doesn’t permit a
manufacturer or a trader

144
 to advertise in such a
manner that it slanders the
products of its
competitors, virtually
rubbishing the same,
while promoting his own
product
21. Procter & Gamble Disparagem Rin – Tide Court highlighted the
Home Products v. ent difference between
Hindustan express denigration and
Unilever Limited puffery.
22. Eveready Disparagem Alkaline Batteries An advertisement would
Industries India ent have to be examined as a
Ltd vs Gillette whole to find out the
India Ltd dominant effect of it. If
the dominant effect would
give sufficient indication
that it was disparaging
someone's product or a
class of product, the
action would deserve
redressal by the Court of
law.
23. Colgate Palmolive No Anchor- colgate- all tend to enlighten the
(India) Ltd. v. disparagem round protection consumer, either by
Anchor Health & ent exposing the falsity or
Beauty Care (Consumer misleading nature of the
Private Ltd. welfare) claim made by the trade
rival or by presenting a
comparison of the merits
(or demerits) of their
respective products
24. Dabur India v. No Good Knight- “while comparing its
Colortek Disparagem Odomos product with any other
Meghalaya ent or product, any advertiser
implied would naturally highlight
disparagem its positive points but this
ent cannot be negatively
construed to mean that
there is a disparagement
of a rival product.”
25. Marico Limited vs No Fortune- Saffola a trader was entitled to
Adani Wilmar Ltd Disparagem advertise that his product
ent has a cost or price
advantage over the rivals’
goods as long as it is

145
 accurately done

26. Reckitt Benciker Disparagem Vim -Dettol While truthful

Ltd. v. Hindustan -ent disparagement is
Unilever Ltd. permissible, untruthful
disparagement is not
permissible.

In light of the above analysis, it may be inferred that various issues regarding comparative
advertisement are addressed by courts in detail. The grey areas which were referred / argued
mostly in the cases are:
I. A trader can puff up his goods in comparison to his competitor’s goods but he cannot
denigrate or disparage the competitor’s goods while doing so. Therefore while it may be
permissible to state that Product A is better than Product B it is not permissible to state
that Product B is worse than Product A.
II. The manufacturer and/or trader would be at liberty to advertise their product in the way
they want. However, such advertisement must not offend the laws of the land. If someone
tries to depict, his product is the best, he is at liberty to do so. If he tries to depict, his
product is better than the product of X, he would offend X and would be vulnerable for
an action for disparaging attempt. Similarly, if someone unfairly disparages a class of
product, that would equally be vulnerable for an action of the like nature. Once such
action is brought and the defendant is able to prove that his remark was backed up by
concrete evidence he would succeed to resist such action.
III. Comparative advertisement is permissible, so long as such comparison does not disparage
or denigrate the trademark or the products of a competitor. Comparison of different
features of two products showing the advantages, which one product enjoy over the other
is also permissible provided such comparison stops short of discrediting or denigrating
the other product.
IV. An advertisement would have to be examined as a whole to find out the dominant effect
of it. If the dominant effect would give sufficient indication that it was disparaging
someone's product or a class of product, the action would deserve redressal by the Court

146
 of law. But if such puffery is backed by concrete evidence then the advertiser can succeed
to resist court action.
V. The manufacturer of the goods should not be hyper- sensitive in such matters.
VI. Truth is always a complete defence against any assault or challenge, regardless of
whether any damage is sustained as a result of it. While truthful disparagement is
permissible, untruthful disparagement is not permissible.

Legal Norm is Still Not Settled

It is obvious from the above that judiciary has gone far in resolving the dispute of the competitors’ interest.
Amongst various cases, the most illustrative example of contemporary comparative
advertisement in India would be the Dental War campaigns (Colgate v. Pepsodent). These
commercials are debilitating the very quintessence of comparative advertisement and are
deteriorating it into simple joke. The disposition of the courts has been such that the
advancement of hot air is permitted just inasmuch as a contender is not denigrated. Besides the
law with respect to disparagement is very much settled which is reflective from the legal
pronouncements of different courts. The most recent ruling additionally convey an expression of
alert for the contender that judiciary has been making a move against misleading promotions and
are not any more hesitant in honoring damages. These affirmations have taken comparative
advertising to another stature 96.

In any case, judgments like the one given in Dabur India Ltd. v. Emami Limited97 sow
seeds of uncertainty as to the Indian position. The conventional perspective that has been there for almost a
decade fell short in terms of addressing the demands of consumer justice. An appreciated step has been taken in
Colgate v. Anchor case98, however that too is hypothetically binding on simultaneous courts in
Madras and on lower courts within its jurisdiction, judges who oppose with the findings in a case
have the choice to offer another sentiment or allude the matter to a Divisional Bench (of two or
more judges) for a authoritative interpretation. This judgment is relied upon to be persuasive
among high courts in different locales. In any case, it is likely that the law here will witness some
irregularity until the most noteworthy Supreme Court makes a conclusive decision.
96
Decisions like those made in the cases of Dabur India Ltd.v. Wipro Limited, Bangalore and Godrej Sara Lee Ltd.
v. Reckitt Benckiser (I) Ltd. are in conformity with the position of law in the UK and USA
97
Dabur India Limited vs. Emami Limited, (2004) 29 PTC 1.
98
Colgate Palmolive (India) Ltd. v. Anchor Health & Beauty Care Private Ltd, (2008) 7 MLJ 1119)

147
 CHAPTER-5

INTERNATIONAL
DIMENSION ON
COMPARATIVE
ADVERTISING AND
PRODUCT DISPARGEMENT:
LAW IN UK AND USA
 CHAPTER-5
INTERNATIONAL DIMENSION ON COMPARATIVE ADVERTISING AND
PRODUCT DISPARGEMENT: LAW IN UK AND USA

Two major impacts of globalization and expansion of the international trade framework
in the area of trademark law is the striking raise in the figure of trademarks made and utilized as
a part of the world commercial centre, and globalization's difficulties to the customary legitimate
standards of the trademark law framework. The fundamental standards underlying the protection
of trademark rights are endangered by the deteriorating significance of physical borders between
nations and today’s blast of data innovation. Thusly there is urgent call for nations to try to
rebuild and blend the worldwide lawful framework managing matters of trademark security, and
particularly those with reference to disparagement or comparative advertising.

This chapter focuses on exhibiting and interpreting the lawful structure for the assurance
of trademarks from a global viewpoint with an extraordinary spotlight on the United Kingdom
and United States legitimate frameworks which the thesis utilizes as the fundamental
establishment of the lawful correlations it makes later. As studied in the previous chapters the
idea of comparative advertising is permitted in India yet there is no unequivocal regulation to
manage the said idea. Likewise the Indian Trademark regulation on comparative advertising
draws motivation from Section 10(6) and 11(2) of the 1994 UK Trade Marks Act. As needs be it
gets to be critical to study the law on the said topic in the international sphere. The scope of my
research is confined just to the law in UK and US.

Law on Comparative Advertising in United Kingdom

In the UK, advertising is managed through self-regulation, case law and statute.
Comparison lies at the heart of modern advertising and it has been premeditated that more than
30 per cent of advertising here is comparative to some degree.1 This is one of the initial Member
States of the EU, which viewed comparative advertising as legitimate and embraced a more
casual approach even before the EU Directives managing deluding and comparative advertising

1
Cornish, “Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights” p. 655, 4th ed., (1999)

148
were adopted.2 It is frequently seen as an amusement played by "the enormous young men" with
broad publicizing spending plans. It tends to summon solid and enthusiastic feelings on both
sides and perpetually people in general fight results in writs flying and both sides hurrying to the
courts to figure out if the advertising is legal.3 This type of advertising campaign should give
purchasers valuable data support, promote fair competition and suppliers and upgrade market
productivity.4 Comparative advertising, if performed in an unauthorized manner which exhibits
deficient or excessively subjective data on contending goods and services may denigrate
competitors and gain unfair advantages from such erroneous contrast. The present research
analyzes the lawful position of comparative advertising in United Kingdom. Legal expansion in
the United Kingdom is discussed at both from an historical standpoint and in the light of the
latest suggestion for harmonizing directive from the European Commission.

Concept of Comparative Advertising under English Law

The expression “comparative advertising” might cover diverse types of publicizing cases.
Normally the objects of the comparison are the product or service offered by the advertiser and
those of his opponent. An advertisement which expressly or by suggestion distinguishes a
contender or products of a contender would be covered under the meaning of comparative
5
advertising. Direct comparative advertising is available when the name or brand of the
contender or the product of the contender is explicitly specified in the correlation. Indirect
identification exists if there is a indication to the contender, the business circumstances of the
opponent or a straight or oblique group designation.6

2
Brunhilde Steckler and Frank Bachmann, “Comparative Advertising in Germany with Regard to European
Community Law”, p.578,10 E.I.P.R (1997).
3
Belinda Mills, “Comparative Advertisement –Should it be allowed in the United kingdom”, 86 Trademark Rep.
174 (1996).
4
See Preamble of Directive 97/55 and European Association of Commercial Communications Agencies (EACA) at
http://www.eaca.be affirm that “comparative advertising, when correctly done is a desirable means of product
communication.”( Last reviewed on Aug. 24th 2014)
5
Theo Bodewig, “The Regulation of Comparative Advertising in the European Union”, p.185, 9 Tulane
European & Civil Law Forum .(1994)
6
Péter Miskolczi- Bodnár, “Definition of Comparative Advertising”, p. 25, 3 European Integration
Studies (2004)

149
 In the case of Bismag Ltd v. Amblins (Chemists) Ltd7, the court held that despite the fact
that the litigant had just utilized the offended parties' trade mark as a expedient method of
depicting the benefits of their own merchandise, they had infringed the exclusive right of the
plaintiffs.8 In Compaq Computer Corporation and Another v. Dell Computer Corporation
Limited and Another,9 Dell Ltd put two ads which utilized the offended parties trade mark
COMPAQ in respect of the plaintiffs' personal computers to compare the plaintiffs' computer
system with the defendant’s. In this case, the court likewise held that there was a reasonable
instance of infringement of the registered trade mark. These judgments’ affirms that comparative
advertising is a sort of advertising in which a trader refers to the trademarks of other traders
(generally its rivals) to distinguish its products or prices with those of the other dealers in order
to emphasize its products.

It is important to see that the meaning of comparative advertising does not necessitate
that the indication to a contender or products of a contender includes an actual comparison.
Specifically, it is not the case that promoting must contain assertion on its dominance to its rival
or with respect to the products of the advertiser and those of opponent. In Toshiba v. Katun10,
that Katun in its catalogue refers to the Toshiba machines with which its spare parts can be
utilized and that in the list of available parts identifies the corresponding Toshiba part under the
heading OEM product number could be considered as a reference to Toshiba. In spite of the fact
that there is no case containing a correlation saying, for instance, that Katun’s product is superior
then Toshiba’s, there is a competitive relationship and there is a reference to a rival or product of
contender. This reference is sufficient to comprise comparative advertising.

The UK is a member of European Union, hence all the activities relating to advertising is
also regulated and implemented as per EU directives. In statutes comparative advertising was
first defined under Control of Misleading Advertisement Regulation (Amendment), 2000. This

7
[1940] 2 All ER 608.
8
In the present case Amblins issued an advertising pamphlet in which they claimed that most patent medicines were
sold at too high a price by comparing its product formula and prices with those of well known proprietary
medicines, including Bismag’ product, to highlight its own lower prices.
9
[1992] F.S.R. 93
10
Toshiba v Katun, Case C-112/99 available at
http://www.ippt.eu/files/2001/IPPT20011025_ECJ_Toshiba_v_Katun.pdf. (Last visited on Apr.12th 2013)

150
enactment transposes the direction as given under EU directives 84/450/EEC. With an
amendment in EU Direction and coming of EU Directives2006/114/EC, there was a change in
the national law as well and Business Protection from Misleading Advertisement Regulation,
2008 was implemented. Here comparative advertising is defined as:
“advertising which in any way, either explicitly or by implication, identifies a competitor
or a product offered by a competitor.”11

Keeping in mind the end goal to take part in comparative advertising under English law,
an advertisement must identify “a competitor or products offered by a competitor.” Moreover, in
view of case law, the European Court of Justice additionally expressed that the test for the
comparative nature of advertising is whether this advertising could distinguish, unequivocally or
by suggestion, a contender or products or services offered by a contender. The recognition of a
contender or of the product of a rival assumes an imperative part in figuring out if an ad is a
comparative one or not. Therefore, an advertisement that just looks as the promoter's own items,
for instance contrasting the present cost of an item with the old cost or a before model with its
new item, are not considered as comparative advertising. Comparative advertising is available
when the names or brand of the contender or the product of the competitor is explicitly
mentioned in the comparison. Indirect identification exists if there is a reference to the rival, the
business circumstances of the contender or a direct or indirect group designation.12

Regulation of Comparative Advertising in U.K

The lawful position relating to comparative advertising in the United Kingdom is
complicated administered as it is by a web of statutory enactment, torts, regulations and codes of
practice. The Consumer Protection Act 1987 sets out the restriction for utilizing price
comparisons and the Trade Marks Act 1994 control the use of registered trademarks by third
parties for evaluation use. The torts of trade libel and passing off likewise have importance in
connection to the exactness of the information particularly in the event that it is deceptive,
confounding or untrue. The Control of Misleading Advertisements Regulations 1988 applies in

11
The BPRs , Regulation 2(1).
12
Nguyen Mai Han, “A comparative study of comparative advertising in Vietnamese and English law”,
Pg:21.Available at
http://privat.bahnhof.se/wb250067/buongiorno/vietnam/documents/theses/Nguyen%20Mai%20Han.pdf (Last visited
on Apr.12th 2013)

151
connection to the rightness of data in ads all in all and the Advertising Standards Authority
likewise issues a code of practice for publicizing related substance. Therefore there is no single
source for figuring out what is or is not worthy as a comparative advertisement in the United
Kingdom. Therefore it is seen that comparative advertising has been managed in the UK by an
interface of three lawful modules: self-regulation, basic law torts and enactment, especially in the
field of trade-mark law. In the present research the consideration would be centered on
utilization of contender's trademark in comparative advertising. The key feature of this unstable
structure is examined beneath:
I. UK Code of Non Broadcast, Advertising, Sales, promotion and Direct Marketing. (CAP
Code)
II. Advertising Standard Authority
III. Business Protection from Misleading Advertisement Regulation. (BPRs,2008)
IV. Directives concerning Misleading and Comparative Advertising. (2000/114/EC)
V. Trademark Directives. (2008/95/EC)
VI. Trademark Act,1994 (Section 10(6) and Section 11(2)
VII. Other Provisions

Self Regulation: CAP and ASA

An important concept for analysis of comparative advertising is the self regulatory
structure of the British Code of Advertising, Sales Promotion and Direct Marketing, and therein,
especially Regulation 18.1, which gives that
“comparative claims are permitted in the interests of vigorous competition and public
information. They should neither mislead nor be likely to mislead”.13

The Code provides that comparative advertising ought to value the principle of fair
competition and consumer protection. Advertisements ought to dodge vague attestation about

13
The  rest  of  Regulation  18  reads  like  a  summary  of  the  EU  Directive:  
18.2  They  should  compare  products  meeting  the  same  needs  or  intended  for  the  same  purpose  
18.3  They  should  objectively  compare  one  or  more  material,  relevant,  verifiable  and  representative  
features  of  those  products,  which  may  include  price  
18.4  They  should  not  create  confusion  between  marketers  and  competitors  or  between  marketers'  
products,  trademarks,  trade  names  or  other  distinguishing  marks  and  those  of  competitors  
18.5  Certain  EU  agricultural  products  and  foods  are,  because  of  their  unique  geographical  area  and  method  of  
production,  given  special  protection  by  being  registered  as  having  a  'designation  of  origin'.  Products  with  a  
designation  of  origin  should  be  compared  only  with  other  products  with  the  same  designation.  

152
either the product advertised or the product compared. Claims must not concede a false
advantage on the publicist and correlation must be both sensibly chosen and in light of realities
which can be authenticated. The Code is the original copy for non-broadcast advertisements and
marketing communications. Two authorities are responsible for the effectual running of the
regulation: The Advertising Standards Authority (ASA)14 is a self-governing body that authorize
and administer the Code, ensuring that the self-administrative plan works in public interest. The
Committee of Advertising Practice (CAP)15 is the self- administrative body that expertise,
revises and execute the Code. With respect to their power, one ought to note that the ASA and
CAP persuade and accord the key policy of their actions.
The detailed working of the said body is illuminated below

The Committees of Advertising Practice (CAP) compose and keep up the UK

Advertising Codes, which are regulated by the Advertising Standards Authority They offer the
industry authoritative suggestion and assistance on the best way to make promotion that confirm
with the rules. CAP writes the UK Code of Non-broadcast Advertising, Sales Promotion and
Direct Marketing and upholds ASA decisions. The Advertising Standards Authority (ASA) is the
autonomous body that controls the Codes and researches complaints. It is not a deliberate
framework and all ASA maintained mediations are entirely implemented by a range of business
sanctions16 and it is completely supported by industry. The ASA is the UK publicizing controller.
Its part is to guarantee UK promotions adhere to the Advertising Codes which require that
advertisements are legal, decent, honest and truthful. It reacts to worries from purchasers and
business and in addition proactively observing promotions, making a move to boycott
advertisements that are deluding, hurtful, hostile or reckless.

The ASA was set up in 1962 to give autonomous inspection of the recently made self-
administrative framework set up by the business. Its central undertakings are to advance and
authorize elevated expectations in advertising correspondences, to explore objections, to
recognize and resolve issues through examination, to guarantee that the framework works in the

14
For details see http://www.asa.org.uk/About-ASA.aspx(Last visited on Apr.12th 2013)
15
For details see http://www.cap.org.uk/About-CAP.aspx(Last visited on Apr.12th 2013)
16
For details on Sanction visit https://www.asa.org.uk/Industry-advertisers/Sanctions.aspx (Last visited on Apr.12th
2013)

153
public interest and to proceed as the channel for communications with the individual who have
an interest in advertising communication standards. The ASA is a limited company and is
autonomous of both the Government and the advertising business. The Chairman of the ASA is
designated by Advertising Standards Board of Finance and is detached with the promoting
business.. Most of the 12-member Council appointed by the Chairman to oversee the ASA is
additionally detached with the advertising business. All Council individuals sit as people and are
chosen, quite far as possible, to mirror a variety of foundation and experience. Vacancies for
independent members of Council are openly advertised. Individuals serve for a most extreme of
two three-year terms. The ASA examine complaints from any source against marketing
communications in non-broadcast media. Advertisers are told the result of the ASA Council's
decisions and, if necessary, are requested to pull back or change their promoting
correspondences. The decisions came to by the Council are in print weekly. In that way the ASA
can recognize developments and counteract future issues. Publicizing the ASA's strategy and
actions is vital to filling wide approval of the framework's trustworthiness.

While the CAP's task is to guarantee that promoting correspondences inside the Code's
concern that are commissioned, arranged, placed or distributed in the UK agree to the CAP
Code. CAP harmonizes the activities of its members to accomplish the most noteworthy level of
consistence with the Code. It makes audits and revises the Code. It supervises the sanctions
managed by its members. It controls a site, www.cap.org.uk, to give data and direction to the
business, including access to Help Notes, Advice Online and applicable Ad Alerts. It meets ad
hoc Working Groups for restricted periods to address particular subjects emerging out of the self-
administrative procedure. The Code sets up a standard against which showcasing
correspondences are evaluated. The Chairman of CAP works on a part-time basis and is
designated for a specific period and compensated by the Advertising Standards Board of Finance
(ASBOF). CAP effectively energizes interest in the self-administrative framework. Proposals for
enhancing Code administers or altering their application ought to be sent in writing to the
Chairman. In the event that progressions are embraced by CAP their presentation is ordinarily
conceded for a brief timeframe to give advertisers a satisfactory chance to revise their promoting
interchanges. CAP likewise puts extraordinary accentuation on the counteractive action of
breaches and attempts to advance high consistence.

154
 Committee of Advertising Practice CAP is in charge of composing and keeping up the
UK Advertising Codes. The UK Code of Non-broadcast Advertising, Sales Promotion and Direct
Marketing apply over all non-communicate channels including online and all alone sites, open
air, print media, silver screen and direct showcasing. CAP likewise gives guidance and
recommendation to assist organizations and advertisers adhere to the guidelines.

Trading Standards Trading Standards take action on behalf of consumers and business.
They prompt on and authorize laws that oversee the way individuals purchase, offer, lease and
contract merchandise and services. Trading Standards Officers inspect complaints about business
associations and, when in doubt take legal action against the traders who infringe upon the law.
Camden Council's Trading Standards group has been selected by the National Trading Standards
with financing from the Department for Business, Innovation and Skills to uphold promoting
rules broadly. The fundamental advantage of this framework is: Easier for customers – Single
promoting controller for all complaints.; Free for the taxpayer – The structure is supported by the
commerce, not the citizen; Easier for advertisers – Nearly all features of advertising parameter
are under one umbrella; know-how is impartial and high standards for all approach – All
advertisement, wherever they show up, are liable to the same elevated requirements; Harmonious
basic leadership – Cross media settling decisions are made by a solo body i.e. the ASA.;
Corporate social obligation –The promoting industry has a solid enthusiasm for keeping up the
framework and a level playing field that is cost effective.

CAP Code on Comparative Advertising

CAP code doesn’t define comparative advertising however it sets down extent of the control of
promoting practice. The ASA will consider inadequate superlative cases comparative claims
against all contending items. Predominance claims must be upheld by proof unless they are clear
puffery. Comparisons with identifiable competitors is clarified under 3.33- 3.37.

I. Marketing communications that incorporate a correlation with an identifiable contender

must not delude, or be prone to misdirect, the purchaser about either the publicized item
or the contending item.

155
 II. They must analyze items meeting the same need or planned for the same reason.
III. They should unbiased look at one or more material, applicable, certain and representative
highlight of those items, which may incorporate cost..
IV. They must not make disarray between the advertiser and its rivals or between the
advertiser's item, trade mark, trade name or other distinguishing mark and that of a
contender.
V. Certain EU agricultural products and foods are a direct result of their one of a kind
topographical zone and strategy for creation, given exceptional security by being enrolled
as having a “designation of origin”. Products with a designation of origin should be
contrasted with other products with the similar designation.

Advertisers, organizations and distributers have essential obligation regarding guaranteeing that
all that they do is lawful. Since the Code was initially published, the number of laws intended to
ensure consumers has greatly increased. More than 200 UK statutes, orders and controls and in
addition a few specifically viable European laws influence promoting correspondences here (see
www.asa.org.uk or www.cap.org.uk for a non exhaustive rundown). The ASA keeps up a
compatibility with those in charge of starting or controlling any law that has a heading on
advertising interchanges. The framework is strengthened by the legitimate reinforcement
accommodated the work of the ASA by the Consumer Protection from Unfair Trading
Regulations 2008 and the Business Protection from Misleading Marketing Regulations 2008.17

Control of Misleading Advertisements Regulations:

Business Protection from Misleading Advertisement Regulation. (BPRs, 2008)
The BPRs substitute the Control of Misleading Advertisements Regulations 1988 (CMARs),
which were repealed in 2008. This regulation states that if the following attributes are present in
an advertisement then such advertisements are not allowed:
I. The advertisement gives false information to, or deceives consumers, and this causes,
or might cause, the average consumer to take a different decision about any goods,
services, rights and/or obligations than they otherwise might have taken.

17
For more detail and available on https://www.cap.org.uk/Advertising-
Codes/~/media/Files/CAP/Codes%20CAP%20pdf/The%20CAP%20Code.ashx(Last visited on Apr.12th 2013)

156
 II. The advertisement fails to give consumers enough information about a product and
this cause, or might cause the average consumer to take a different decision about any
goods, services, rights and/or obligations than they otherwise might have taken.
III. The advertisement is misleading under the BPRs. (• it deceives, or is likely to deceive
the traders it addresses or reaches, and • the deception is likely to affect the economic
behaviour of those traders or • as a result of the above effect on traders it injures or is
likely to injure a competitor in some way.)
IV. The advertisement compares products that do not meet the same needs or are not
intended for the same purpose.
V. The advertisement fails to objectively compare one or more material, relevant,
verifiable and representative features of those products, which may include the price.
VI. The advertisement creates confusion (among traders) between the advertiser and a
competitor or between the trademarks, trade names, other distinguishing marks or
products of the advertiser and those of a competitor.
VII. The advertisement discredits or denigrates the trademarks, trade names, other
distinguishing marks, products, activities or circumstances of a competitor.
VIII. The product advertised, which has a particular designation of origin, is compared to a
product with a different designation of origin.
IX. The advertisement takes unfair advantage of the reputation of a trade mark, trade
name or other distinguishing marks of a competitor, or of the designation of origin of
competing products.
X. The advertisement presents goods as imitations or replicas of goods with a protected
trade mark or trade name.18  

Enforcement Authority
A violation of the BPRs can be made obligatory by the Office of Fair Trading and by
local authority, Trading Standards Services (TSS) and the Department of Enterprise Trade and
Investment in Northern Ireland. If it is viewed as that there has been, or is liable to be a breach of
the regulations, enforcement authorities can start court procedure for an injunction against the
individual concerned, or likely to be concerned, in order to avoid or prevent a breach of the

18
As available at http://www.nfopp-regulation.co.uk/media/539474/bprs.pdf Last visited on Apr.12th 2013)

157
BPRs. The court may require the individual concerned to give proof to maintain any verifiable
case made in an advertisement. The dealer can likewise be required to issue a remedial
articulation about the commercial. Breach of an injunction order is regarded as contempt of court
and can prompt up to two years detainment and/or an indefinite fine. The OFT will for the most
part look to guarantee consistence with the BPRs through instruction, exhortation and direction
in the principal occasion. An injunction will probably be required simply after the OFT has
discuss with the trader in an effort to acquire consistence and this meeting has been futile. Rather
than looking for an order of injunction an enforcer might acknowledge endeavours from the
merchant, promising not to participate in or rehash the behaviour constituting a breach of the
regulations. Taking part in promoting that is deceiving is additionally a criminal offense, which
on conviction can prompt up to two years detainment and/or a boundless fine. On account of
criminal offenses by a corporate body, if the offense has been carried out with the assent or
conspiracy or as a consequence of carelessness of an officer of the body they will be liable of an
offense alongside the corporate body. An officer can be a chief, supervisor, secretary or
comparative officer or any individual implying to go about in that capacity.19

EU Directive on Comparative Advertising

Advertising traditions and legitimate guidelines are entirely distinctive in the European
Union. One evident reason is that the regulation of comparative advertising in most affiliated
states is much stringent than in the United States. Another rationale is that even in moderately
tolerant jurisdictions, businesses make just restricted utilization of their generally more
prominent publicizing flexibility.20

The EU embraced the Misleading Advertising Directive in September 1984 (Directive

84/450/EEC). Misleading advertising is characterized in Article 2(2) as
“any advertising which in any way …deceives or is likely to deceive the persons to whom
it is addressed or whom it reaches and which, by reason of its deceptive nature is likely to
affect their economic behaviour or which, for those reasons, injures or is likely to injure
a competitor”.

19
Id  at  12
20
Theo Bodewig, “The Regulation of Comparative Advertising in the European Union”, 9 Tul. Eur. & Civ. L.F.
179.(1994)

158
 Article 3 of the Directive says that ‘in determining whether advertising is misleading,
account shall be taken of all its features, and in particular of any information it contains
concerning:
(a) the characteristics of goods or services, such as their availability, nature, execution,
composition, method and date of manufacture or provision, fitness for purpose, uses,
quantity, specification, geographical or commercial origin or the results to be expected
from their use, or the results and material features of test or checks carried out on the
goods or services;
(b) the price or manner in which the price is calculated, and the conditions on which the
goods are supplied or the services provided;
(c) the nature, attributes and rights of the advertiser, such as his identity and assets, his
qualifications and ownership if industrial, commercial and intellectual property rights or
his awards and distinctions.

It is for the domestic courts to decide the states of every specific case and to choose whether the
advertising is deceiving considering every relevant element incorporating the data in the
publicizing and every one of its elements and the assumed capability of an average consumer
who is sensibly well informed, vigilant and prudent21

In spite of the fact that there was a proposal to incorporate provisions on comparative
advertising in the Misleading Advertising Directive that did not eventuate until the October 1997
Directive 97/55/EC amending Directive 84/450/EEC concerning misleading advertising in order
to grasp comparative advertising. To put it plainly, EU law on comparative advertising is an
expansion to the law on misleading advertising embraced years before. That it was at last
acknowledged following quite a while of civil argument that "looked like a tug-of-war between
contending interest groups and polarized Member States” is evidence of the endeavours of the
EU to utilize the law to finish and guarantee the smooth running of the internal market. The
enactment on comparative advertising can be viewed as an indication of the freedom of
commercial speech under Article 10 of the European Convention of Human Rights. 22

The directive just sets down uniform general standards and permits Member States to
pick the structure and appropriate method by which to accomplish these targets in their own
particular national laws, regulations and administrative provisions. It is intriguing to note when

21
Estee Lauder Case C-220/98
22
Theo Bodewig, “The Regulation of Comparative Advertising in the European Union”, 9 Tul. Eur. & Civ. L.F.
179.(1994)

159
Spain neglected to satisfy its commitments under the mandate to establish important national
laws by the April 2000 due date, the EU looked for and obtained court orders to this effect.23

The History of the Directive

The European Union start to perceive and address the pattern of comparison advertising
in the late 1970s, when the European Commission displayed a draft mandate on deluding and
24
unjustifiable publicizing , which, in its Article 4, enclose a provision on comparative
advertising. i.e.; if a promotion or commercial presents verifiable component and is neither
misdirecting nor unfair, comparative advertising ought to be viewed as legal. While this
European methodology was of rather liberal character, enactment and jurisdiction in Member
States fluctuate to a great degree, as well as took a more sceptical and firm outlook. The
Misleading Advertising Directive of 1984 imprints the main legitimate point of interest on the
Commission's approach to blend the law. In the outcome of the named Directive, the
Commission evacuated the field of comparative advertising and exhibited a draft directive on
comparative advertising in 1991.25 This proposal was censured and rejected by different Member
States. At the Edinburgh summit of 1992, the draft mandate was voted to wind up part of a
bundle of draft orders that were to be postponed as a result of reservations of the draft directives
consistency with the principle of subsidiary. A further draft mandate in 1994 enclosed
comprehensive bearing as to when a comparative advertisement was legitimate, a pattern that
marked in the adoption of the Directive in 1997.26 For detail see the table below27:

23
Commission of the European Communities v Kingdom of Spain, 28 November 2002, Case C-392/01.
24
Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997, amending Directive
84/450/EEC concerning misleading advertising so as to include misleading advertising.
25
Morasch, Manuel, “Comparative Advertising - A Comparative Study of Trade-mark Laws and Competition Laws
in Canada and the European Union”, (2004). University of Toronto, Faculty of Law - Dissertations, Thesis.
Available at SSRN: http://ssrn.com/abstract=685602 (Last visited on 24th Sept 2014)
26
Ansgar Ohly, and Michael Spence, “The Law of Comparative Advertising: Directive 97/55/EC in the
United Kingdom and Germany”, pg.44 Oxford and Portland, Oregon: Hart Publishing, (2000). The author’s remark
that the criteria for permissible comparative advertising had grown from three contained in the 1991 draft of the
relevant Article 3a to seven contained in the 1997 draft.  
27
Ross D. Petty and Paul M. Spink, “Comparative Advertising Law in the European Community: Will the Proposed
Directive Harmonize across the Atlantic?” pg. 312, Journal of Public Policy & Marketing, Vol. 14, No. 2 (Fall,
1995.  

160
Table- 2 European Community (EC) suggestions to Harmonize Regulation of Comparative
Advertising

DATE DOCUMENTS SUBSTANCE

November 1975 First Draft Directive on Comparative advertising is
Misleading Advertising prohibited when it is
misleading or based on facts
unfairly selected.
March1978 Proposed Directive Comparative advertising is
allowed as long as material
and verifiable details are
compared and not
misleading or unfair
July 1979 Amendment Authorizing comparative
advertising when it is illegal
it is not appropriate for this
harmonization Directives.
September 1 984 Final Directive on At a second stage, unfair
Misleading Advertising and comparative advertising
should be dealt with.
June1991 EC Proposal on Labelled as too permissive
Comparative Advertising by strict member state
April1 994 Amended Draft Criticized as too restrictive
by permissive member
states.

161
Summary of the Directive’s Position on Comparative Advertising: CAD
As per Article 1, the aim of directive 97/55 is to ensure consumers, persons carrying on a
trade or business or honing a specialty or vocation and the hobbies of the general population all
in all against confusing advertising and the unreasonable consequences thereof and to set out the
circumstances under which comparative advertising is allowed.

Comparative advertising, defined in Article 2a as “any advertising which explicitly or by

implication identifies a competitor or goods or services offered by a competitor‟, is allowed in
the event that it fulfils various combined criteria. The important conditions are set out in Article
3a and are as per the following:
I. it is not deceiving as indicated by Articles 2 (2), 3 and 7 (1) of Directive 84/450/EEC;
II. it evaluates goods or services meeting the same needs or else anticipated for the same
intention;
III. it impartially thinks about one or more material, related, provable and representative
description of those goods and services, which may incorporate cost;
IV. it does not generate uncertainty in the market place between the advertiser and a
contender or between the advertiser's trademarks, trade names, other distinctive
marks, goods or services and those of a opponent;
V. it doesn't dishonour or slander the trademarks, trade names, other distinguishing
marks, products, services, activities, or circumstances of a contender;
VI. for goods with designation of origin, it relate in each case to goods with the same
designation;
VII. it does not take unfair advantage of the reputation of a trade mark, trade name or
other distinguishing marks of a opponent or of the designation of origin of rival
goods;
VIII. it doesn't display products or services as impersonations or copies of goods or
services bearing a protected trade mark or trade name. 28
These Directives set out the pre -requisites under which comparative advertising is allowed
and, specifically, it obliges dealers to ensure that their promotions are not deceptive; compare

28
Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997, amending Directive
84/450/EEC concerning misleading advertising so as to include misleading advertising.. Recital 6.

162
"like with like" products and services addressing same needs or expected for the same point;
objectively look at critical components of the products or services concerned; do not disgrace
other corporations trademarks; do not construct misunderstanding among traders. The
implementation of this enactment is the duty of the competent authorities and courts in the EU
nations.

The Directive necessitates the EU nations to provide a sufficient system that empower people
and associations having a real interest to put an action to the concerned courts or administrative
authorities for the suspension and/or the preclusion of misdirecting or unlawful comparative
advertising.

The Directive in Relation to Trade-marks law

The utilization of trademarks in Europe is primarily managed by Council Directive
89/104/EEC (Trade Marks Directive)29, which begins from the reason that a registered trade
mark proprietor has a monopoly right to utilize the trade mark and whatever thing bafflingly
alike to it for the products and/or services for which it is registered. Trademarks registered under
the Trade Marks Directive’s regime give the proprietor a right of action against anybody
utilizing, in the course of trade:
I. An identical sign on identical goods or services (Article 5(1)(a));
II. An identical or similar sign on identical or similar goods or services where there is a
likelihood of confusion on the part of the public (Article 5(1)(b)); and
III. An identical or similar sign on any goods or services where the mark enjoys a
significant reputation and the use of the mark takes unfair advantage of or causes
detriment to the distinctive character or repute of the trade mark (Article 5(2)).
In case infringement of a trade mark is seen, the owner will ordinarily be qualified for an
order to stop the infringing use and damages or an account of profits in respect of the use. These
directives are put into practice in UK by means of Trademark Act, 1994.

29
The Trade Marks Directive has been implemented by national legislation in the EU member states. In the UK, the
implementing legislation is the Trade Marks Act 1994

163
Trademark Legislation-Use of Registered Trademarks under the Trademark Act, 1994
Like a pendulum, the methodology of the United Kingdom lawmaking body to the
utilization of registered trademarks with regards to comparative advertising has rolled in from
permitting it (before the days of the Trade Marks Act 1938) to discouraging it (under Section 4(l)
(b) Trade Marks Act 1938 as amended) and now emerge to be en route back to its prior position
(under the provisions of the Trade Marks Act 1994 Section 10(6)). In any case, now the position
is considerably relieved by the present Trade Marks Act, which got from a 1989 EEC order
ascertained to synchronize trade mark law all through the single business sector.30

The preeminent change in the conceptualization was brought by the instance of Irving's
Yeastvite Ltd. v. Horsenail.31 Here plaintiff asked for an injunction order to avoid the litigant
from utilizing the expression "Yeast tablets a substitute for Yeastvite" on the respondent's marks.
No order was allowed preventing the respondent from utilizing the offended parties trademark,
subsequent to the Trade Marks Act then in force did not consider utilization of the trademark
along these lines as "trademark use" (i.e., use to identify origin) thus it didn't fall inside of the
significance of trademark infringement and was not actionable.32 It was as a response to the
outcome for this situation and the way that utilization of the offended parties’ trademark was
viewed as "unfair" that the Trade Marks Bill 1938 was revised as it ensued through Parliament.
A section was added to the bill whereby utilization of a registered trademark in an advertisement
to the public in the course of trade would constitute trademark infringement.33

The significance of the section and its proposition were spelt out in the case of Bismag
Ltd. v. Amblins (Chemists) Ltd.34 In this case the litigant utilized the offended party's trademark
as a chart contrasting products made by the respondent with the plaintiffs branded alike (i.e., a
Direct Comparative advertisement to position the defendant's medicines as equivalent to those of

30
See Belinda Mills, “Comparative Advertisement –Should it be allowed in the United kingdom”, 86 Trademark
Rep. 174 (1996) and Directive 89/104/EEC (1989) O.J. L40/1 (11 Feb.).
31
(1934) 51 RPC 110.
32
Irving's case proved the catalyst for statutory control of the practice under section 4(1) of the Trade Marks Act
1938. By that provision, the owner of a trade mark was entitled to sue for infringement if a competitor featured his
mark in an advertisement, even where the advertiser had done so in a fair and honest comparison of the competing
products
33
Section 4(I b), Trade Marks Bill 1938
34
[1940] EWCA, Ch.D 667.

164
the plaintiff by association). The Master of the Rolls, Sir Wilfred Greene, apparently expressed
that
“it was legislature's intention that this "obscure" section (Section 4(l)(b)) should check
the defendant from using the plaintiffs trademark in its pamphlets and posters "for the
purpose of advertising and compendiously describing the virtues of their own [i.e., the
defendant's] goods and thus obtaining for themselves a benefit from the reputation
enjoyed by the plaintiffs goods."

As it were, Sir Wilfred Greene expected that it was Parliament's aim to stay away from
outsiders from utilizing registered trademarks as publicizing shorthand to depict the qualities of
their own brands in Direct Comparative advertisements, in that way achieving an "unjustifiable"
practical gain.

For the consequent fifty years or so the standard laid by Bismag case was convinced. To
a few, the terms of Section 4(l)(b) affirm to be a noose that caught their comparative
advertisements.35 For others, it bears a challenge of how to advance in a comparative sense
without utilizing a contender's registered trademark.36 One such occurrence is the situation of
37
Duracell International Ltd. v. Ever Ready Ltd. In the present case it was expressed by Ever
Ready that there batteries kept going longer than those delivered by its rival, Duracell. The
advertisement as opposed to utilizing the trademark Duracell demonstrated the corporate name
Duracell Batteries Limited and fused a highly contrasting portrayal of a battery that seemed
suggestive of the understood well-known trade dress ("get up") of the Duracell battery being
66% dull and 33% light in shading. It was held by the court that Ever Ready had not infringed
the trademark registration for Duracell as it is not the trademark but rather corporate name has
been utilized. Also, despite the fact that Duracell had enlisted its surely understood get up, the
registration was limited to the particular colors combination i.e.; copper and black and, as the as
the portrayal utilized by Ever Ready was high contrast, it was not liable for infringement of mark
either.

35
See the case of Campaq Computer Corporation v. Dell Computer Corporation Ltd., [19921 FSR 93. and Chanel
v. Triton Packaging Ltd., [1993] RPC 32.
36
Belinda Mills, “Comparative Advertisement –Should it be allowed in the United kingdom”, 86 Trademark Rep.
174 (1996).
37
[1989] FSR 87.

165
The Effect of the Trade Marks Act 1994
In October 1994, however, the circumstance changed and Section 4(1) (b) Trade Marks
Act 1938 was substituted by Section 10(6) Trade Marks Act 1994. The present Act, which by
and large terms actualizes the EC Trade Marks Harmonization Directive38, no more consider use
of a registered trademark by some individual other than the registered proprietor for the reason of
identifying the goods or services of the proprietor as trademark infringement. Nevertheless,
Section 10(6) is not without precondition, it includes that
“...any such use other than in accordance with honest practices in industrial or
commercial matters shall be treated as infringing the registered trade mark if the use
without due cause takes undue advantage of, or is detrimental to, the distinctive
character or repute of the trade mark”

Under this most recent law, comparative advertisements that permitted a competitor's
registered trademark may still be accountable for trademark infringement if the use is
I. contrary to "honest practices"; and
II. without due cause, "takes unfair advantage of' or is "detrimental to" the distinctive
character or repute of the mark.
The essence of this subsection is vague. As, in the language of Justice Laddie,
"It is a mess… the first half of the subsection allows comparative advertising. Its meaning
is clear. However, the second half is a qualifying proviso… and its meaning is far from
clear."39

The significant motivation behind this section is to allow comparative advertising subject
to provisos (a) and (b) above. The new domestic regime was well thought out by Laddie J in
Barclays Bank plc v. RBS Advanta40," here the litigant, RBS Advanta, utilized the trademark
Barclaycard as a part of an examination graph connoting inter alia the yearly expense payable,
the interest charges and other comparative information. Barclays Bank contradicted to such
utilization of their trademark on the base that it was as opposed to Section 10(6) i.e.it is not as
per the "honest practices" as RBS had neglected to bring up that clients of Barclays Bank got
different advantages which were not expressed in the commercial. Subsequently the commercial
did not compare like for like. While coming to a decision J. Laddie condemned the drafting of
38
First Council Directive of December 21, 1988 to approximate the laws of Member States relating to trademarks
(Directive 891104/EEC, OJ [1989] L40/1).
39
Barclays Bank plc v. RBS Advanta, [1996] RPC 307.
40
Id as above

166
section 10(6) and the clear tautologies nature of its aggregate variables, yet declined to hold that
a promotion could be effectively confronted solely on the basis that the featured trade mark was
being unduly misused. J. Laddie held that it is planned to allow comparative advertising where
exercise of the competitor's mark is pronounced to be honest by a reasonable audience.

He additionally clarified that honesty ought to be an objective test "gauged against what
is reasonably to be expected by the relevant public of advertisements for the goods or services at
issue." While perceiving this could vary contingent on the nature of the goods or services, he
ruled out the possibility of depending simply upon industry forced codes of promoting. Also, to
constitute infringement, the use "must give some advantage to the defendant or inflict some harm
on the character or repute of the registered trade mark which is above the level of de minimis."
On the facts, J. Laddie found the commercial comparatively not detrimental, in that it just
imparted the promoter's conviction that its card offered clients a superior deal than others
available. As needs be, the grant of interlocutory relief was refused.

Section 10(6) was additionally a concern in Vodafone Group plc v. Orange Personal
Communications services Ltd.41 This case identifies with an action brought against Orange for
malicious falsehood and trade mark infringement. Vodafone's grievance was motivated by a
publicity campaign which expressed that Orange users would spare, by and large 20 pounds for
each month contrasted with "identical "Vodafone and Cell net taxes. J. Jacob considers in respect
to what a normal, sensible viewer would have taken the advertisement to mean. In this manner,
the judge endorsed that the general public are hard-nibbled to a specific level of exaggeration in
promoting, and very much aware of the way that sponsors have a tendency to underscore the
qualities of an item over its shortcomings Support the line taken by J. Laddie in Barclays Bank,
J. Jacob derived that Section 10(6) ought not be dealt with as striking a protectionist or rigid
subjugation on sponsors. Both courts thought that it was preposterous and unreasonable to
anticipate that a publicizing will showcase either the benefits of a contender's item or the
disadvantages of its own, or neither one of the judges appeared to be too much bullied by the

41
[1997] F.S.R. 34.

167
conventional cut and push of comparative advertising.42 Therefore, as long as any overt claim is
justifiable, it seems the bench is tending to presume Section 10(6) in such a manner as to allow
advertisers a specific level of space to take part in lateral insinuation and mild "knocking
copy".43

The next section of this chapter gives a broad indication of case laws determined by the
ECJ on the analysis of the directives on deceptive advertising and comparative advertising and
related orders. The cases have dealt with subject such as the meaning of comparative advertising,
price comparisons and when the utilization of trademarks in comparative advertising amounts to
trade mark infringement. Two late judgements commenced in the UK considered the connection
between the comparative advertising directive and the December 1988 directive to generally
comprehend the laws of Member States identifying with trade marks (89/104/EEC). They are
discussed below:

O2 Holdings Limited and O2 UK Limited v. Hutchison 3G UK Limited44, emerged out of

advertisements in the UK for cellular phone services. O2 and O2 (UK) are the registered
proprietors of trade marks in connection to telecommunications equipment and services
comprising of a picture of bubbles. Evidence established that, in connection to cell telephones,
UK shoppers related images of bubbles in water with these companies, particularly if the bubbles
image was alongside a graduated blue background. Even Hutchinson 3G gives mobile phone
services in the UK and in 2004 launched an advertising campaign to endorse its pay-as-you-go
service known as “Threepay”. The TV commercial that was the subject of this dispute evaluated
the price of Hutchinson 3G services with those of O2 and O2 (UK). This was ended by utilizing
the word O2 and black and white bubble imagery followed by the “Threepay” brand and 3G
imagery and a declaration that “Threepay” services were cheaper. O2 and O2 (UK) challenged
the promotion in the High Court of Justice not on the premise of the price comparison (which it
acknowledged was valid) or on the premise that the ad was misdirecting (it didn't recommend

42
Spink, P. & Petty, R “Comparative advertising in the European Union”, pg. 845, International and Comparative
Law Quarterly 47. (1998)
43
See Ross D. Petty, "The Evolution of Comparative Advertising Law: Has the Lanham Act Gone Too Far?" pg168,
10(2) J. of Public Policy and Marketing. (1991)
44
12 June 2008, Case C-533/06

168
any association between the different mobile service providers) yet relatively on the premise that
the commercial infringed their trade mark. The act was dismissed by the Trial Judge who held
that the utilization of the bubbles image fell within Article 5 (1)(b) of Directive 89/104 yet in
view of the fact that the commercial conformed with the conditions set out in Article 3a(1) of
Directive 84/450, this gave Hutchinson a complete defence to trade mark infringement. The UK
Court of Appeal was not persuaded the issues were so obvious and referred a number of
questions to the ECJ requiring an interpretation of both Article 5(1) of directive 89/104 and
Article 3a (1) of directive 84/450.

The ECJ held that utilization by a promoter of a sign identical with or similar to a
contenders mark was to be viewed as “use” of a trade mark within Article 5 of Directive 89/104
and may perhaps be prevented where required. However the obvious intention of the Legislature
as demonstrated in the preamble and articles of Directive 97/55 was that the rights granted by the
trade mark be restricted to a certain extent so as to advance comparative advertising and the
related advantages to customers. To accommodate the protection of registered trademarks and
the utilization of comparative advertising, the Court held that the important articles must be
deciphered such that the proprietor of a registered trade mark is not allowed to thwart the use by
a third party of a sign identical with, or similar to, his mark, in a comparative advertisement
which fulfil all the conditions, set down in Article 3a (1) of Directive 84/450. On the other hand,
if the utilization of a trade mark would likely bring about disarray with respect to people in
general between the promoter and a contender, the commercial would not fulfil the condition, set
down in Article 3a(1)(d) and would not be allowed. The Court noticed that on the facts,
Hutchinson did not utilize the registered bubbles trade mark of O2 but a sign similar to that
trademark. As Article 5(1)(a) of 89/104 just applies to the utilization of an identical trade mark,
the issue required interpretation only of Article 5(1)(b) that connected to the utilization of signs
similar to the trademark. The court was satisfied that Hutchinson used the sign like the O2 trade
mark “in the course of trade”; that the utilization was without the assent of O2 and it was utilized
as a part of connection to services identical with those for which the trade mark is being
registered. In any case, the utilization did not give rise to a likelihood of confusion with respect
to general public thus the proprietor was not qualified to prevent the use of the trade mark by a
third party in a comparative advertisement.

169
 This verdict appears to permit a more liberated bridle to utilize the trademarks of
contenders for comparative advertising purposes. The proprietor of a trade mark trying to
challenge the utilization of a similar sign to that trademark in a comparative advertisement must
base any lawful dispute to that use not on the trade marks directive but rather on the conditions
set out in Article 3(a) that allow comparative advertising. 45

In L’ Oréal SA, Lancôme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie v. Bellure
NV, Malaika Investments Ltd, Starion International Ltd,46 the ECJ pursue its pronouncement in
O2 Holdings in its scrutiny of the relationship between the comparative advertising directive and
the trade marks directive. The case included the promoting of impersonations of well-known
brands of aromas (Trèsor, Miracle, Anaïs Anaïs) for which L‟Oréal et al were the trade mark
proprietors. The names of the impersonation aromas were not like the names of the scents
replicated however now and again, the bottles and packaging were analogous. This practice
augment to questions about the accurate interpretation of the concept of “unfair advantage”
within the meaning of directive 89/104 on trademarks. Vendors of the impersonation scents were
furnished with correlation records which showed the word mark of the perfume of which it was a
replica. This practice augment to questions about the extent of comparative advertising within
the directive 84/450.

Is it accurate to say that it was unfair advantage of a trade mark if the public was not
likely to be confused? The court affirmed at that
“the taking of unfair advantage of the distinctive character or the repute of a mark…
does not require that there be a likelihood of confusion or a likelihood of detriment to the
distinctive character or the repute of the mark or…to its proprietor”.

Where an advertiser deliberately utilizes a trade mark to ride on the coat-tails of the mark
with a reputation (to benefit from the force of fascination, the reputation and the prestige of that
mark and to make use of the advertising effort of the marks proprietor) that is taking advantage
of the distinctive character or the repute of that mark.

45
England, Paul. “Advocate General says comparative advertising is not a matter of trade mark law”.Pg.284 Journal
of Intellectual Property Law & Practice 3(5), (2008).
46
18 June 2009, Case C-487/07

170
 In connection to the comparison price lists, the court referred to preceding case law (O2
Holdings) and noticed that such records may amount to comparative advertising. It likewise
affirmed that the methodology taken in O2 Holdings, to be specific, that an trade mark owner is
not permitted to avert the utilization by a third party of its mark in a comparative advertisement
that fulfils all the conditions set down in Article 3a(1) of the comparative advertising directive.
The court expressed that the rationale of the “cumulative‟ conditions set out in paragraphs (a)
through (h) was to attain a harmony between the distinctive interests which might be influenced
by permitting comparative advertising. Subsequently, those conditions had to be analysed so as
to allow comparative advertisements which impartially evaluate the attributes of goods and
services while likewise guaranteeing the ads are not utilized anti-competitively and unjustly. The
court noticed that the utilization of a contender’s trademark was the theme of four conditions for
acceptable comparative advertising and that the recitals made it apparent that the object of those
conditions is
“to accommodate the enthusiasm of the proprietor of the mark in the form of protection
of his exclusive right, on the one hand, and the interest of the proprietors opponents and
of consumers in having effective comparative advertising impartially highlights the
contrasts between the goods or services offered.”

Article 3a(1)(h) gives that comparative advertising must not exhibit products or services
as impersonations or copies of goods or services bearing a secured trade mark or trade name. The
court decided that the utilization of the comparison price list to sell the replica perfumes breach
this condition and that it was immaterial whether the commercial specify it identifies with an
impersonation of the whole item or only an impersonation of an vital feature of the product (in
this case, the smell of the product). Moreover, the benefit achieved by the advertiser of illicit
advertising within Article 3a(1)(h), must be considered as exploiting an unfair advantage of the
reputation of the trade mark within the meaning of Article 3a(1)(g).

Other Provisions
Passing off Action for Unregistered Trademarks
Utilization of a contender's unregistered trademark in a comparative advertisement carry
with it the risk of an action for passing off if the offended party can demonstrate that there is a

171
deception, i.e., that clients are misdirected into considering that the litigant's produce is that of
the offended party. This can result where two brands are judged against and the buyer is left
theorizing whether both brands stem from the same maker or from various
47
organizations Passing-off action in respect to comparative advertising are fairly outstanding,
primarily because of the way of a difference as a means to distinguish one’s product from that of
other. A case where an action based on passing-off was successful was McDonald’s Hamburgers
Ltd. v. Burger King (UK) Ltd.48 In this case, McDonald’s accused Burger King with regard to a
commercial that used the tagline “It’s not just Big, Mac” The interpretation for determining
passing-off claim was based on J. Whitford finding that the focused on viewers at whom the
commercial was aimed would assume that the “Big Mac” was offered at Burger King, as well.49
Subsequently, court found that along these lines of utilization of the trade mark BIG MAC by
Burger King shaped a risk of disarray in that it was indistinct whether the WHOPPER item was a
variety of the BIG MAC product and whether it was accessible at Burger King or McDonald's.
Therefore it was held that Burger King's commercial constituted passing-off.

It is fairly uncommon that comparative advertising will offer ascent to passing-off. Actually,
comparative advertising is by and large more concerned with discerning the two products and
suggesting that the comparative advertiser's product is equivalent or better than the host product
which it seeks to parasitize.50

The recent Directive offers rather comprehensive action of the subject engender by a passing
off-type action. As changed by the new enactment, Directive 84/450 deal specifically with the
issue of confusion in Article 3 a (1) (d). Denigration and taking an unfair advantage of a trade
mark etc. are barred in Article 3 a (1) (e) and (g) respectively, and the presentation of goods and
so forth as impersonations or imitations of trademarked merchandise is restricted by Article 3a
(1) (h). In future, joining a passing-off (and, possibly, injurious falsehood) with a grievance
under the Directive will put forth substantial extra load and open new opportunity of inspection

47
Belinda Mills, “Comparative Advertisement –Should it be allowed in the United kingdom”, pg: 184, 86
Trademark Rep. 174 (1996)
48
1986] FSR 45.
49
It should be noted that at the time of the legal action Big Mac was not a registered trademark. If Big Mac had been
registered, McDonald's could possibly have brought an action for trademark infringement instead.
50
OH Dean, “Intellectual Property and Comparative Advertising”, 7 Stellenbosch L. Rev. 25 (1996).

172
under an overall less liberal system. Such a course of action will frequently present a fine
strategic alternative for the plaintiff.51

Injurious Falsehood
The claim of injurious falsehood and slander of goods52 is of a relatively narrowed
scope53. At first, glance it, may be believed that this old customary tort has been obsolete by
infringement actions under the Trade Marks Act 1994 if there should arise an occurrence of
comparisons against registered trademarks. This is additionally upheld in Cable & Wireless v.
British Telecommunication54 and BA v. Ryanair55 where J. Jacob addressed whether a case to
injurious falsehood included something that was not introduced under a case of trade mark
infringement:

“It is difficult to imagine a case where, given a valid trade mark registration covering the
goods or services concerned, could add anything. Including such a claim was, for
instance, wasteful in one of the earlier telephone wars”.56
The learned judge added that it become noticeable to him that the case for injurious
falsehood only put the offended party to the extra burden of proving malice and managing issues
in regards to the “one meaning rule”57 in this manner raising the cost of the proceedings.

However, the renowned cases on the law of injurious falsehood are acknowledged to
contain guiding philosophy that can be acknowledged and useful in cases of trade mark
infringement. An overview of the landmark decrees regarding the tort of injurious falsehood can
be established in the judgment by Walton J. in De Beers Abrasive Products Limited and Others

51
Id as above.
52
Slander of goods is a branch of the tort of malicious falsehood involving the malicious publication (either orally or
in writing) of a false statement which disparages the claimant’s goods.
53
Ohly, Ansgar and Spence, Michael, “The Law of Comparative Advertising: Directive 97/55/EC in the
United Kingdom and Germany”, 3002, Oxford and Portland, Oregon: Hart Publishing, (2000).
54
[1998] F.S.R. 383 at 385.
55
[2001] E.T.M.R. 235.
56
The “earlier telephone wars” referred to was Vodaphone Group Plc v Orange Personal Communications Services
Ltd [1997] F.S.R. 34.
57
In defamation proceedings “The judge's function is to delimit the range of meanings of which the words are
capable and to rule out any meanings outside that range: the jury's role is to decide what meaning within that
permissible range the words actually bear”--see para. 30.4 Gatley , “Libel and Slander”, 9th edn. Publisher: Sweet
& Maxwell.(2008)

173
v. International General Electric Co. of New York Ltd.58 This case gives an essential
investigation of the vital distinction between simply “puffing” one's own goods and disparaging
the products of a contender. The prior is considered as a lawful action while the latter can
perhaps result in liability for injurious falsehood. The division among these two is evidently
poles apart yet it is not generally as clear as one may expect.

The particulars of the De Beers case were that the litigant connected to strike out the
offended party's case for defamation of products (injurious falsehood) in respect of a handout
composed for the respondent entitled “Tech-data/1”.

The defendant stated that the brochure was a simple puff and the plaintiff's claim ought to
be repealed accordingly. The court observed whether a reasonable man would take the claims
made in “Tech-data/1” genuinely and asserted, on the realities, that there was likelihood for
accountability.59

The preceding cases are worth returning to as the legal way to deal with the insignificant
puff or serious case dichotomy seems to have been greatly consistent and the convention might
well be connected to cases surrounded in trade mark infringement and in addition injurious
falsehood.60 The fundamental standard is set out by Lord Watson in White v. Mellin61 :

“In order to constitute disparagement which is, in the sense of law, injurious, it must be
shown that the defendant's representations were made of and concerning the plaintiff's
goods; that they were in disparagement of his goods and untrue; and that they have
occasioned special damage to the plaintiff. Unless each and all of these three things be
established, it must be held that the defendant has acted within his rights and that the
plaintiff has not suffered any legal injuria”.62

58
[1975] 1 W.L.R. 972.
59
The principle was later summarized by J. Jacob was that the more precise the claim, the more likely it would be
to be taken seriously; “the more general the claim the less so in the case of Vodafone Group plc v Orange Personal
Communications Services Ltd. [1997] F.S.R. 34 at p.39.
60
Paul Stephenson, “Comparative advertising and Intellectual Property Rights”, Pg; 8, European Intellectual
Property Review, (2006)
61
[1895] A.C. 154 at p.167
62
Note the importance of the need to prove special damage which, if not pleaded, will lead to the dismissal of the
case, as in Lyne v Nichols (1906) 23 TLR 86.

174
An equivalent description of the tort of injurious falsehood can be well-known in the decision of
Glidewell L.J. in Kaye v Robertson63 :

“that the defendant has published about the plaintiff words which are false, that they
were published maliciously, and that special damage has followed as the direct and
natural result of their publication. As to special damage, the effect of section 3(1) of the
Defamation Act 1952 is that it is sufficient if the words published in writing are
calculated to cause pecuniary damage to the plaintiff and that the defendant knew when
he published the words that they were false or was reckless as to whether they were false
or not”.

The facts of White v Mellin were that the litigant sold the offended party's food for babies
but had to fix the plaintiff's packaging, a label which expressed that the respondent's opponent
item was much more nutritious and healthy than any other. The plaintiff did not check that the
declaration was inaccurate or that any extraordinary damage had been done to the plaintiff. The
House of Lords, annulled the decision of Court of Appeal, held that no injunction would be
granted. For slander of goods (injurious falsehood) the plaintiff had to prove three conditions:

I. That the statement is disparaging of the plaintiff's goods.

II. The statement is false.
III. The statement has created extraordinary damages to the claimant.

On the facts of the case the House of Lords held that:

“… I cannot help saying that I entertain very grave doubts whether any action could be
maintained for an alleged disparagement of another's goods, merely on the allegation
that the goods sold by the other party who is alleged to have disparaged his competitor's
goods are better either generally or in this or that particular respect than his
competitor's are”.

The case build up the guideline that to laud the ideals of one's own goods does not in
essence criticize the products of a contender despite the fact that subtext is almost always that the
advertiser's goods are superior to those of any other person; the contenders may bear general
damage, however, not significant special damage as a consequence of the advertising.

63
[1991] F.S.R. 62 at p.67.

175
 An example of the fact that simply praise the good quality of one's own goods as
“genuine” does not ipso facto intimate the goods of another trader are not genuine is to be found
in Hubrick & Sons v. Wilkinson Heywood & Clark Ltd.64 Lord Lindley M.R. clarify that:

“The truth is that the defendant's circular when attentively read comes to no more than a
statement that the defendant's white zinc is equal to, and, indeed, somewhat better, than
the plaintiff's. Lord Lindley's view was that such a statement was not actionable even if
untrue and the cause of loss to the plaintiff. The rationale here is that the courts do not
want to be involved in examining the factual basis for mere puffery as otherwise “the
courts would be constantly engaged in trying the respective merits of the goods of rival
traders and the pernicious practice of bringing actions for mere purposes of advertising
would be greatly encouraged.”65

Other illustration of the courts' invasion to turn away specific misstatements from being in print
or rolling to be in print on the ground of injurious falsehood can be ascertained in Alcott v.
Millar's Karri and Jarrah Forests Ltd66 and in Western Counties Manure Co. v. Lawes Chemical
Manure Co.67 In the Alcott case, the respondents were considered responsible for injurious
falsehood in respect of a letter written to a third party to attain that the plaintiff's wooden road
blocks would last just for year and a half. In Western Counties Manure the plaintiffs were
granted a decree where their goods were disparaged as being second-rate to the defendant's
goods. The judgment in that case was condemned by Lord Herschell in White v Mellin on
account of the absence of peculiarity concerning exceptional damage following to the offended
party as an after effect of the defendant's action.68

The last case to be referred to under the heading of injurious falsehood is Lyne v.
Nichols69 where charge would have been started in respect of a statement with respect to the
appropriation of a specific daily paper. The advertisement stated that “twenty to one of any other
weekly paper in the district” and “where others count by the dozen, we count by the hundred”;

64
1898 1 Q.B. 86.
65
Ibid. at p.93. Lord Lindley added that a statement even if made maliciously but which was true was not actionable,
in effect applying the principle in Bradford Corporation v Pickles [1895] A.C.587 House of Lords (an otherwise
lawful act is not made unlawful if actuated by malice).
66
(1904) 91 L.T. 722.
67
(1874) L.R. 9 Ex. 218.
68
Supra Note. 64 (Hubrick case) at p.164.
69
(1906) 23 T.L.R. 86.

176
the assertions were held not to be simple puffs but rather to be taken genuinely and were, in fact,
taken critically. Walton J. found that all the previous cases as being steady and that Lyne v
Nichols was “fully in line” with prior pronouncements “when properly understood”.

Sanctions Applied for Unlawful Comparative Advertising in English Law

Comparative advertising that is legitimate may enhance reasonable rivalry amongst
endeavors and give significant data to consumers. However, in the event that comparative
advertising does not guarantee the lawful conditions and as it were, unlawful, it might misdirect
brokers and shoppers, harm the reputation of contenders and impact customer decision. In this
manner, it is necessary to set up sanctions to be appropriated to unlawful comparative
advertising.

The Enforcement Authorities in English law and Practice

The fundamental method for managing comparative advertising disputes in the United
Kingdom is through industry self-regulation.70 The different business codes shape a broad
administrative structure which supplements the law in vital regards. Under the CAP Code and
the Broadcast Committee of Advertising Practice (BCAP)71, Advertising Standard authority
(ASA) is the body that supervise and controls promotions in broadcast and non-broadcast media
(for instance print, posters, films, direct promotion and on the web, for example, flag and pop-
ups advertisements). ASA's central assignments are to embrace and uphold exclusive
expectations in showcasing interchanges, to examine dissensions, to perceive and resolve issues
through its own examination, to ensure that the framework works in public interest and to go
about as the channel for correspondences with the individuals who have an enthusiasm for
promoting communication standards.

70
Darren Fitzgerald, “Comparative Advertising in the United Kingdom”, p. 709, 19 E.I.P.R. (1997).
71
According to the Communication Act 2003, Ofcom (Office of Communication) has a duty to handle and resolve
complaints about advertising content on radio and television, so from 2004, Ofcom has contracted out the regulation
of broadcast advertising content to a self-regulatory system under the banner of the Advertising Standards Authority
(ASA). Ofcom has passed all complaints it receives about broadcast advertising directly to ASA(B). Also see
Memorandum of Understanding between Office of Communications and the Advertising Standards Authority
(Broadcast Limited) “ASA”B, May 2004. Also see the UK Code of Broadcasting Advertising available at
https://www.cap.org.uk/Advertising-
Codes/~/media/Files/CAP/Codes%20BCAP%20pdf/The%20BCAP%20Code.ashx (Last visited on Ap.12th 2013)

177
 Along these lines, a dealer or some other individual can send his grievance on publicizing
to ASA, ASA will consider whether the promoting is appropriate with the administrative codes.
In the event that the complaint is upheld, ASA manages a range of sanctions against the culpable
publicist. Notwithstanding the self–regulation framework controlled by ASA, the BPRs likewise
gives particular principles on comparative advertising. These directions are particularly gone for
securing a business that is a casualty of certain sorts of unfair commercial practices. As indicated
by BPRs, 72 the OFT73 and TSS74 have an obligation to proceed against advertisers who breach
these regulations. In implementing their commands, the enforcement authority might have
respect to all the interests concerned, specifically the public interest and the claim of
empowering the control, by self-regulatory bodies, of advertisements75. The enforcement
authority powers are utilized as a part of practice just when ASA has been unable to bargain
adequately with an objection under their self-administrative frameworks.

Moreover, the courts additionally have the power to give adjudications if OFT or TSS
make a decision to bring the case to the High Court. Also, before the taking up of BPRs,
comparative advertising was likewise managed under the Trademark Act and tort law. In this
way, where merchants utilize the trademarks or trade names or other marks of a rival in a
comparative advertisement which is contrary to honest practices in industrial or commercial
matters; and without due cause takes unfair advantage of, or is detrimental to, the distinctive
character or repute of the trade mark, the aggrieved party can make a claim in court. In addition
to claiming trademark infringement, the plaintiff can base his claim in passing off, injurious
falsehood or defamation. By and large, ASA is the enforcement authority under the self–
regulatory scheme while the court and the OFT or TSS will be the enforcers under statute law.

72
The Business Protection from Misleading Advertising Regulations 2008, SI 2008/1276, regulation 13(2).
73
OFT: Office of Fair Trading in the UK
74
TSS: Trading Standards Service
75
Id as above, Regulation 13(4).

178
Sanction applied to Unlawful Comparative Advertising
Disciplinary Sanctions76:
ASA will think whether an advertisement is adjusted with the regulatory code. In case the
grievance is upheld, ASA direct a range of sanctions against the culpable sponsor. As an initial
step, the promoter is requested that evacuate the commercial or to alter it. In the event that the
promoter declines to scrutinize, further sanctions can be appropriated. Firstly, ASA will declare
the name of culpable promoter on its site. Furthermore, the infringement is conveyed to the
consideration of the pertinent media affiliations, which, generally speaking, will decrease to
distribute the debated commercial. Thirdly, the violator will lose the trading rights accessible
through enrollment of publicizing bodies and, in rare cases, can be disqualified from them.
Fourthly, pre-publication screening by ASA of all commercials can be connected to a guilty
party. This implies the ASA may require constant guilty parties to have a few or the greater part
of their marketing communication by the CAP Copy Advice team until the ASA and CAP are
content that upcoming correspondences will satisfy with the Code. At last, ASA can pass on the
lawbreaker to the OFT who can then apply for an injunction.

Administrative Sanctions
Where an enforcement authority believes that there has been or is prone to be an
infringement of the criteria for a legitimate comparative advertisement, it can look for an
obligation that the advertising will be ceased from anybody responsible for dispatching,
preparing or distributing it. In case that is not agreed or is not regarded, the OFT can look for an
injunction from the Court to avert its further expression. The court, specifically, the High Court
might, on an application by the enforcement authority, grant an injunction on such terms as it
may think fit to secure adherence to the regulations. In any case, before allowing an injunction
the court might have respected to all the interests included and specifically the public interest.
The court may likewise require any individual against whom an injunction is conceded to
distribute in such frame and way and to such degree as the court thinks appropriate with the end
goal of taking out any proceeding with impacts of the publicizing (a) the terms of the injunction;
and (b) a corrective statement

76
Sanctions applied to offending acts violating the self-regulation system are temporarily called “disciplinary
sanctions”.

179
Civil Sanctions
The TMA 1994 forbid the utilization of a mark in advertising which is identical to a
registered mark.77 Section 10 (6) give an exception for comparative advertising where such use is
"for the purpose of identifying goods or services as those of the proprietor or a licensee".
However, accountability will still be obligatory if anything done is opposed to honest practices in
industrial or commercial matters; and without due cause takes unfair advantage of, or is
detrimental to, the distinctive character or repute of the trade mark. Trademark law additionally
gives some sanctions against the infringer.78 The most common remedy is injunctive relief.79
Injunctive relief is commonly given at the prudence of the court, which will evaluate all the
aspects that are relevant to the case prior to making an order. Pertinent consideration may
incorporate the behavior of the effective petitioner and the infringing defendant both previously,
then subsequent to the infringement and whether the litigant is as yet trading at the time the order
is made. At times an injunction will be combined with other relief, for example damages in
respect of infringing acts which have as of now been performed. In any case, wronged parties
need to demonstrate how he was harmed by, for instance, giving evidence about his profits and
the defendant’s profits. The actual damages which the aggrieved party has endured, for example,
the business it lost or the harm the infringing mark has brought on to its reputation and goodwill,
are generally difficult to establish for the reason that the aggrieved party must explain that it
would not have suffered these losses but rather for this infringing action. Along these lines, as
opposed to looking for actual damages, people frequently allege against the profits made by the
other party as an aftereffect of its utilization of the infringing mark. Lastly, the aggrieved party
can likewise ask for that the court arrange the other party to demolish its infringing materials or
convey them to him.

In cases asserting in respect of passing off, injurious falsehood or defamation, the remedies
available are as follows:
I. damages;

77
Section 10 (1), 10(4) (d), TMA 1994. This is the category of infringement which will most likely apply where
comparisons are being made. See W.R. Cornish, “Intellectual Property” p. 625 (1996).
78
Trademark Act 1994 s.14(2) The remedies available to a registered trade mark owner for trade mark infringement
are: (i) an injunction; (ii) the delivery up for destruction or the erasure of the mark from offending material; and (iii)
at the claimant’s option, damages or an account of profits.
79
Trademark Act s.14 (2).

180
 II. an injunction; and
III. a declaratory judgment.
In practice, the plaintiff in most cases associated with comparative advertising generally alleges
for trademark infringement or malicious falsehood.80

To conclude the law on comparative advertising in UK is regulated by Section 10 (6) of

Trademark Act, 1999 and comparative advertising Directives by European Union (CAD).
In the proceeding section the researcher has analyzed in detail law governing comparative
advertisement in US.

Law on Comparative Advertising in United States of America

Comparative advertising is actually widely utilized for more than thirty years in the
United States. Around 80% of all TV ads and 30% to 40% of all promotions, contained
comparative claims in the United States in the mid 1990s.81 Studies have additionally shown that
a comparative advertisement creates more noteworthy mindfulness and message review than a
non comparative advertisement.82

In the United States, expanding purchaser prosperity and advancing a free and aggressive
economy have been the managing aim and the cornerstone of administrative mentality towards
the business scene for over hundred years. As a result, the utilization of comparative advertising
has quickly turned into a key objective of legal and authoritative powers, and additionally
offices, in the region of advertising law. U.S. courts perceived the authenticity of honest
comparative advertising more than thirty years ago. Notwithstanding, until the late 1960's,
comparative advertising was frequently confined by industry self-administrative codes. There
was a general feeling in the publicizing business i.e.; naming one's rival would just give him free

80
Nguyen Mai Han, “A comparative study of comparative advertising in Vietnamese and English law”, available at
http://privat.bahnhof.se/wb250067/buongiorno/vietnam/documents/theses/Nguyen%20Mai%20Han.pdf (Last visited
on Ap.12th 2013)
81
Naveen Donthu, “A Cross-Country Investigation of Recall of and Attitude toward Comparative Advertising”,
27(2) J. Advertising. 111, (1998).
82
T. Paul. Hayden, “A Goodly Apple Rotten at the Heart: Commercial Disparagement in Comparative Advertising
as Common-Law Tortious Unfair Competition”, 76 Iowa L. Rev. 67, 70 (1990). A comparative advertisement will
produce greater attention because of the perceived relevance and meaningfulness of the information. It will generate
more message recall because more thought process is involved, and therefore it is easier to retrieve from memory.

181
advancement, and may even incite commiseration for him83. Rivals were consequently alluded to
as "brand X' or the "leading brand84. However these circumstances were changed with two
milestone statement in the late 1960's. To start with, in the main 1968 Chanel case,85 the Ninth
Circuit permitted a man who had imitated an unpatented item sold under a trademark to utilize
that trademark in publicizing with the end goal of recognizing the duplicated item, gave that the
ad was honest and did not create confusion as to source or contain misrepresentation. Second,
was the 1969 Federal Trade Commission (FTC) Policy Statement on Comparative Advertising,
which convinced the utilization of comparisons that name the contender or the competitive
product.86 The FTC's statement called attention to honest comparative advertising is a precious
source of information to consumers that could "help them in making reasonable purchase
decisions. It further clarified that this advertising tool promotes product upgrading and
originality, and can prompt lower prices in the marketplace.87.

Normally, with the far reaching utilization of comparative advertising came a large
number of the ordinary promoting mishandle. Basic sorts of misuse include: false claims, where
the publicist guarantees that his item accomplishes something that it doesn't do;88 product
disparagement, where the promoter outlandishly assaults a contender's item;89 and false
representation, where the advertisement is deceptive.90 The business sector reacted to the misuse
in various ways. The significant telecom companies created rules for comparative advertisements
which must be followed all together for the promotions to be publicized. These rules serve as a
planned endeavour to stay away from misuse. There was likewise the execution of self-direction

83
David I. C. Thomson, “Problems of Proof in False Comparative Product Advertising: How Gullible is the
Consumer?” 72 Trademark Rep. 385, 386 (1982).
84
See Suzanne B. Conlon,” Comparative Advertising: Whatever Happened to "Brand X"? 67 Trademark Rep., 407
(1977).
85
Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968).
86
Charlotte J. Romano, “Comparative Advertising in the United States and in France”, 25 Nw. J. Int'l L. & Bus. 371
(2004-2005).
87
As discussed in Smith case. Supra note 85
88
As in the case of Warner-Lambert v. FTC, 562 F.2d 749 (D.C. Cir. 1977) (Federal Trade Commission suit where
Warner-Lambert falsely claimed that Listerine mouthwash would cure colds or sore throats.
89
Lee, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71 Trademark Rep. 620-25
(1981).
90
False representations commonly occur due to misuse of consumer tests, such as taste or preference tests. As in the
case of Vidal Sassoon, Inc. v. Bristol-Myers Co., 661 F.2d 272 (2d Cir. 1981) (misrepresentation in consumer test of
shampoos)

182
in the promoting business through the foundation of the National Advertising Division (NAD)
and the National Advertising Review Board (NARB).91

Origin of Comparative Advertising

It is by and large acknowledged that the recognition of comparative advertising begun
with the Avis “WE TRY HARDER” campaign.92 In the present ad campaign, consumers were
educated out and out that Avis was number two in rental autos and requested that pick Avis over
"No. 1." Avis did not name Hertz in its advertisements, but rather for all intents and purposes
everybody knew who No. 1 was. Obviously, the Hertz-Avis fight is one and only of numerous
comparative advertising campaigns in which the contending item is named explicitly or by
surmising, however, it gives a great case of the present pattern of sponsors to advance deals not
only on the merits of their own goods or services, yet by contrasting them with a competitive
product.93 The 1970's have introduced a new age in promoting, the period of comparative
advertisements and advertisements which distinguish or contending items by name. The well-
worn system of alluding to focused items as "Brand X" or "a leading brand" has been almost
discarded. On the reason that the general population is best served by disclosure to all existing
product information, new benchmarks and practices in recognizing contenders and contending
items are developing. Secondly if clearly identified, truthful and non- deceptive then such
advertisements are good resource of information to the consumer and help them in making
rational purchasing decision.

Somewhere around 1972 and 1977, the FTC issued various casual proclamations
authorizing the utilization of comparative advertising. In a following statement, it warned private
organizations such as the AAAA, the American Advertising Federation, and the NARB against
requiring higher principles of corroboration for comparative advertising claims. At its advice, the
AAAA, the National Association of Broadcasters, and NBC outlined or modified rules pertaining
to comparative advertisements i.e. acknowledge comparative advertising which distinguishes

91
Because of the influence of self-regulation in this field, the National Advertising Division (NAD) and National
Advertising Review Board (NARB) has been discussed later.
92
See, Nancy Giges, “Comparative Ads: Battles That Wrote Do's and Don'ts”, Advertising Age 59 (September 29,
(1980). Also See Avis Rent-A-Car System, Inc. v. Hertz Corp. (1986), 782 F.2d 381 (2d Cir.).
93
Lee, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71 Trademark Rep. 620-25
(1981).

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contenders or contending items by name. The American Broadcasting Company (ABC) and the
Columbia Broadcasting System (CBS) were then asked for by the FTC to wilfully adopt alike
strategies allowing promoters to name contenders and competitive products when making
comparative product claims.94 The FTC's resentment toward the conventional custom of
requiring that goods comparison is made in terms of "Brand X" or "a leading brand” confirmed
in a letter dated October 19, 1971 from the Director of Consumer Protection to ABC and CBS.
He articulated the FTC's apprehension that limitations notwithstanding the naming of a
contender or a competitive product
“...may stop the consumer from getting information which is relevant and useful in
making an informed choice between competing products, and may in some cases result in
the consumer being misled or deceived.”95

At last, in 1979, the FTC formally supported comparative advertising and expressed that
promotions slandering contenders were not unlawful in as much as the statements were honest
and not misleading. Further, the Commission held that principles of corroboration for
comparative advertising would be the same as those utilized for other publicizing procedures.96
While the FTC has empowered the utilization of comparative advertising, it wasn't until 1979
that it officially defined this advertising technique. As per the FTC," comparative advertising is
defined as:
“which compares alternative brands on objectively measurable attributes or price, and
identifies the alternative brand by name, illustration, or other distinctive information”.

Regardless of the FTC's formal announcement, numerous promoting analysts either build
up their own particular meaning of comparative advertising or utilize definitions created by
others.97 The FTC has persuaded comparative advertising as though all comparative advertising

94
Id as above
95
Suzanne B. Conlon,” Comparative Advertising: Whatever Happened to "Brand X"? 67 Trademark Rep., 407
(1977).
96
Bill Abrams (1982)," Comparative Ads Are Getting More Popular, Harder Hitting ," pg 25. Wall Street Journal
(March 11).
97
Like McDougall’s in his paper (McDougall, G ordon H . G. (1977)," Comparative Advertising: Consumer Issues
and Attitudes," in Contemporary Marketing Thought, B. A. Greenberg and D. M. Belenger, eds. Chicago, Illinois:
American Marketing Association, 286-91) defined comparative advertising as: “Any advertisement that compares,
implicitly or explicitly, two or more products and states or implies that information has been obtained or a test has
been conducted on a comparative basis, or that states or implies a particular market standing in relation to other
similar products, whether the other products are named or not”. Similarly Wilson followed with still another
description of comparative advertising. He believed that comparative advertising is an advertising form which: 1.
explicitly names or identifies or implicitly identifies one or more brands of the same generic product/service class,

184
is similar. However, the acknowledgement of comparative advertising as lawful and useful (to
both the advertiser and purchasing public) is distant from general. A latest pragmatic study
interpreting the informativeness of comparative advertisements presumed that "comparative
advertisements are no extra or less informative than non comparative advertisements."98 It is
even probable that when comparative advertising is not taking into account genuinely imperative
and important contrasts between brands, it can reverse and generate confusion, resentment and
considerably more cynicism toward the function of promotion in general. When comparative
advertisements were limited to the "Brand X" sort, few trademark issues emerged. But,
competitive goods recognition by trademark has prompted numerous including trademark
infringement, unfair competition, disparagement, deceptive trade practices and false advertising.
Exposure to liability, it must be remembered that it is not created by utilizing comparative
advertising techniques as such, yet rather by manhandling these procedures by taking part in
disparagement of competitive products or false or deceiving advertising.

Regulation of Comparative Advertising

Preferably, comparative advertising ought to be straightforward, ought not to delude, and
ought not to misrepresent.99At the point when an organization crosses the
trustworthiness/misrepresentation line, it might end up in court offering an explanation to
different causes of action, even in the United States.100 This part will look at the different sorts of
actions that can be taken to cure comparative advertising abuses and will interpret the qualities
and shortcomings of these activities. Common law and statutory liability may emerge in a
circumstance where a named contender or competitive product is the subject of an unfavorable
correlation.
Regulation of comparative advertising in US is a blend of federal state law and self
regulatory code of conduct i.e.:

and 2. makes a comparison between the sponsoring brand and other identified brands in terms of specific attributes,
vague attributes, or overall product attributes Also See Wilson, R. Dale (1976), "An Empirical Evaluation of
Comparative Advertising Messages: Subjects' Responses On Perceptual Dimensions," Advances in Consumer
Research 3 , 53-57.
98
William M. Pride, Dr. Charles Lamb, Jr. and Barbara A. Pletcher, “The Informativeness of Comparative
Advertisements: An Empirical Investigation”, 8 J Advertising 29, 35 (Spring 1979).
99
Sid Bernstein, “All Advertising Is Negative”, Pg:21, Advertising Age, Oct. 5, (1992)
100
Jenna D. Beller, “The Law of Comparative Advertising in the United States and Around the World: A Practical
Guide for U.S. Lawyers and Their Clients”, Pg. 936,The International Lawyer, Vol. 29, No. 4 (Winter 1995)

185
 I. National Advertising Division (NAD) and National Advertising Review Board (NARB)
II. The Federal Trademark Commission (FTC)
III. Lanham Act, Section 43(a)
IV. Other Provisions under Common Law

Self Regulation by Advertising and Broadcasting Agencies

National Advertising Division (NAD) and National Advertising Review Board (NARB)
The National Advertising Division (NAD) of the Council of Better Business Bureaus
(CBBB) is the analytical arm of the National Advertising Review Council (NARC). The NARC
is an autonomous self-administrative body which was built up in 1971 as a gathering for self-
control in advertising. The NARC gives direction and benchmarks of truth and exactness for
national sponsors, and sets approach and techniques for the NAD.101

National Advertising Division aim is to revaluate national advertising for honesty and
exactness and foster open trust in the validity of publicizing.102 The National Advertising
Division of the Council of Better Business Bureaus has been working subsequent to 1971. Its
motivation is to give proficient, financially savvy determination to debate between business
sector contenders through voluntary enforcement machinery. This voluntary enforcement permits
the NAD to address and resolve disputes within 60 to 90 days through a procedure of alternative
dispute resolution.103

In spite of the fact that most cases are brought by contenders, shoppers may likewise
submit complaints regarding national publicizing effort to the NAD. Further, the NAD can start
challenges taking into account its own particular routine checking of advertising. Following in
print process, the contender and promoter in an NAD proceeding submit contentions and

101
Sheldon H. Klein and Halle B. Markus, “United States: Is The NAD The Right Forum For You? Arguing
Advertising Disputes Before The National Advertising Division Of The Council Of Better Business Bureaus”,
available at
http://www.mondaq.com/unitedstates/x/95780/advertising+marketing+branding/Is+The+NAD+The+Right+Forum+
For+You+Arguing+Advertising+Disputes+Before+The+National+Advertising+Division+Of+The+Council+Of+Bet
ter+Business+Bureaus (Last visited on Apr.13th 2013)
102
For details visit https://www.bbb.org/council/the-national-partner-program/national-advertising-review-
services/national-advertising-division/(Last visited on Apr.13th 2013)
103
For details visit http://www.law360.com/articles/403099/what-you-should-know-about-nad-false-advertising-
claims(Last visited on Apr.13th 2013)

186
confirmation supporting their separate positions and, within around 60 days, the NAD makes a
decision as to whether the particular claims are corroborated or ought to be changed or
discontinued. The NAD distributes its decisions, which are accessible by membership from the
Council of Better Business Bureaus and the NAD. The decisions of the NAD are not lawfully
obligatory on the parties, but rather are taken into account for suggestion. In any case, if the
NAD suggests that publicizing be changed or ended and the sponsor does not consent to the
NAD's proposal, the NAD can elude the matter to a proper legislative body for further action.
The National Advertising Review Board (NARB) reconsiders NAD decisions upon demand. It is
made out of industry and customer interest people, and is likewise regulated and subsidized by
the NARC. NARB decisions are additionally distributed and accessible by membership.
Likewise with the NAD, the NARB can elude matters to a fitting administrative body if the
publicist picks not to maintain the NAD/NARB ruling.104

Some of the important features of NAD include:

I. National advertisers that employ the NAD procedure observe it to be fundamentally less
costly than litigation. By using NAD, cost-cognizant organizations spare countless dollars
ordinarily spent looking for reparation through the courts.
II. NAD sticks to a stringent time schedule giving a written decision within 60 business
days. Organizations can anticipate that publicizing difficulties will be determined while
the promotion battle is as yet running. What's more, not at all like legal documents, NAD
keeps secret all information it gets in evaluating a case. The challenger's and promoter's
positions, NAD's decision and a statement by the sponsor are made open.
III. NAD utilizes an exceptional form of alternative dispute resolution, working intimately
with in-house counsel, showcasing officials, innovative work divisions and outside
experts to choose whether claims have been substantiated. Each party to the dispute has
plentiful chance to clarify its position and give supporting information.
IV. The advertising audit authorities at NAD are experienced lawyers with aptitude in cases
substantiation, promoting and trade regulation, litigation and arbitration.

104
Id as above

187
 V. NAD guarantee a level playing field Government rule is generally expensive and
troublesome. NAD has earned the appreciation of customers and controllers alike to
provide a viable, effective self-administrative component.105

Procedure Followed
Issues brought before the NAD are administered by a published set of guidelines and measures.
The present section examines the basic rules to advance a NAD proceeding.

Filing
Parties don't need to be CBBB members to file a grievance with the NAD. Dissensions
might be put together by contenders or shoppers, or by the NAD in light of its own observing of
promoting. Procedures may likewise be initiated in light of objections from local Better Business
Bureaus. A complaint beginning with the NAD may continue simply after the General Counsel
of the NARB has checked on the proposed dissension and established that there is adequate
premise to continue.

Complaints Undertaken
The NAD will check advertisements connecting goods performance claims,
predominance claims against aggressive items, comparative advertising claims, and scientific
and technical claims. The promotions must be national in extension or scattered on a wide local
premise. Case of advertisements subject to NAD audit incorporate promotions that are spread by
means of communicate or digital TV, radio, print media, standard mail, and the Internet. The
advertisements at issue can be tended to buyers, experts or business elements.

The NAD does not reconsider claims with respect to moral inquiries concerning an item
offered available to be purchased, or political or issue publicizing. The NAD will likewise
decrease survey of difficulties in regards to particular dialect in an advertisement, or on product
packaging or labels, when that dialect is ordered or explicitly affirmed by government law or
control. Claims that are the subject of pending case, a request by a court, or a government
organization assent announcement or request are additionally unseemly for audit by the NAD.

105
For details visit https://www.bbb.org/council/the-national-partner-program/national-advertising-review-
services/national-advertising-division/ (Last visited on Apr.13th 2013)

188
On the off chance that suit concerning the cases at issue follows while a NAD test is pending, the
NAD will generally suspend or drop the case. Fundamentally, the NAD won't audit
advertisements that have been pulled back from use before the date of the protest if the NAD
gets composed confirmation from the publicist that the publicizing claim(s) at issue won't be
utilized by the sponsor as a part of any future promoting for the product or service.

Parties to the NAD Proceeding

The parties in an NAD proceeding are: (i) the suo-motto action by NAD in public interest; (ii)
the advertiser; and (iii) the competitors.

The Objection Raised

The party conveying the publicizing to the NAD's consideration is known as the
"challenger." The challenger require just distinguish where the promoting ran, the cases it is
addressing, and the reason for the test. The challenger ought to give duplicates of the
advertisements at issue. NAD charges are $2,500 for CBBB individuals; $6,000 for non-
individuals with gross incomes under $400 million; $10,000 for non-individuals with gross
incomes between $400 million and $1 billion; and $20,000 for non-individuals with gross
incomes more noteworthy than $1 billion. The test is ordinarily started as a letter to the NAD
putting forward the reasons that the cases are or might be false or misdirecting. Non-buyer
grievances must be given in a duplicate hard copy and in electronic format.

On the off chance that an objection challenges publicizing for more than one product or
service, the NAD may ask for that different protests be submitted for each of the promoted
products/services. If a dissension is excessively expansive in extension, The NAD may either
request that as far as possible the issues or claims to be considered in the survey continuing or
prompt the challenger that the matter will require an expanded schedule for reassessment.

A challenger must consent to make accessible to the sponsor any materials it submits to
the NAD, including all information, or the NAD won't survey such materials. Concentrates on,
tests, surveys and different types of exploration presented by the gatherings ought to be
adequately finished to allow master assessment of such research. The NAD may decay to
acknowledge extra information gave by a gathering in the event that it verifies that the

189
gathering's inability to submit complete data in the principal case was without sensible support.
In the event that the NAD acknowledges a case, it will then send a letter to the advertiser
accountable for the commercial being referred to.

Reply Filed by the Advertiser

The promoter has 15 days to react to the NAD's letter and the dissension. The reaction
ought to incorporate substantiation for any publicizing cases or representations tested, every
single pertinent complaint to the procedures on jurisdictional grounds, and duplicates of all
promoting identified with the battle that incorporates the tested promoting. The reaction may
exclude a counter-challenge asking for survey of publicizing cases made by the challenger. Such
a "counter-claim," must be brought as a separate case before the NAD106.

A promoter may ask for that trade secrets or generally restrictive data submitted to the
NAD not be made accessible to the challenger. Keeping in mind the end goal to exploit this
methodology, the promoter must: (i) unmistakably recognize the parts of the accommodation that
it is asking for be kept private; (ii) redact any classified segments from the copy duplicate
submitted to the NAD for sending to the challenger; (iii) give a composed proclamation putting
forward the premise for the solicitation for classification; (iv) insist that the distinguished data is
not freely accessible and comprises of competitive advantages and/or restrictive data or
information; and (v) set up an outline of the secret data all together for the challenger to
comprehend the guideline contentions in backing of the sponsor's position.

The Contenders Reply

The opponent has 10 days to answer to the sponsor's reaction. The answer ought to
incorporate a short official rundown outlining the key focuses in the challenger's position and
referring to any supporting proof in the record. The contender has the choice to ask for an
accelerated check by surrendering its right to answer to the sponsor's first substantive composed
reaction. To do as such, the challenger must inform the NAD in composing that it chooses to

106
Actually, it is not extraordinary for a tested publicist to react to a NAD challenge by documenting a different case
with the NAD assaulting the testing gathering's own particular promoting claims. Like in the case of Abbott
Nutrition and Mead Johnson Nutritionals, companies that sell competing infant formulas, have engaged in back and
forth challenges before the NAD since 1997. Also see In re Mead Johnson & Company, Case No. 3381 (4/1/97);
Abbott Laboratories / Ross Products Division, Case No. 3418 (11/1/97).

190
forgo its entitlement to add to the record. In the event that the challenger chooses sped up survey,
extra data from either gathering might be submitted just upon solicitation from the NAD.

In practice, a challenger will once in a while defer the chance to record an answer to the
promoter's reaction. Actually, the best procedure is as a rule to have the underlying protestation
be similar to a "notification arguing," charging tricky or deceiving promoting hones without
giving much supporting confirmation. The weight then moves to the sponsor to substantiate the
tested cases in the reaction. As needs be, the challenger's answer is a basic open door for the
challenger to give a lawful and authentic premise for the test, maybe by means of contending
customer discernment or experimental studies, and by referring to NAD, Federal Trade
Commission, or court point of reference. In case no answer is presented by the challenger, the
NAD will then continue to choose the case after the lapse of the answer accommodation period.

The Counter claim by Advertiser

In the event that the challenger presents an answer, the publicist has 10 days to present a
last reaction to the NAD. The last reaction ought to incorporate a short official synopsis outlining
the key focuses in the promoter's position and referring to the supporting proof in the record.

Meetings with the NAD

The NAD will regularly consent to take an interest in a meeting, either in individual or
through video chat, with it is possible that one or both sides. This meeting, which is typically ex
parte, is a priceless promotion opportunity that ought not regularly be left behind. It can centre
the issues and uncover shortcomings in one's own case and/or one's rival's case. In the event that
the meeting is ex parte (as is typically the case), the NAD will advise the other party and give a
rundown of the substance of the meeting. In the event that doable, the NAD will plan its meeting
with the promoter after its meeting with the challenger. Gatherings should be held inside 15
business days of NAD's receipt of the Advertiser's Final Response. No new confirmation might
be submitted for incorporation in the record at the meeting.

191
The Verdict
The NAD defines and introduces to the parties its "last case choice" inside 15 days of the
recording of the last report from the gatherings. The sponsor then has 5 days to plan and present
a reaction, called the "Publicist's Statement." The Advertiser's Statement may not surpass one
twofold separated page long and incorporates an announcement in the matter of whether the
promoter consents to adjust/cease the tested publicizing or advances the choice. The
announcement may likewise incorporate a clarification of why the promoter can't help
contradicting NAD. For the most part, the promoter communicates appreciation to the NAD for
its survey and, to the degree a few changes are suggested by the NAD which the publicist will
attempt, focuses on considering the NAD's proposals in future publicizing. The NAD claims all
authority to alter the Advertiser's Statement for length or unseemly substance. Note that if the
sponsor does not present an Advertiser's Statement, the NAD may allude the matter to a fitting
government organization for audit and conceivable law authorization activity.

Endless supply of the Advertiser's Statement, the NAD will give duplicates of the last
case choice to both sides and settle on the choice accessible to general society through press
declarations and production of the choice in the following issue of NAD Case Reports. These
reports are accessible by membership, in print (distributed 10 times each year) and through a
searchable online database.

Non- Compliance
At times, a promoter disregards the NAD and does not present an auspicious reaction. All
the more occasionally, a few publicists, subsequent to accepting the last case choice, express
objection to the NAD's choice and demonstrate they won't agree. In either situation, the NAD
may allude the matter to the suitable government or state law requirement organization, regularly
the Federal Trade Commission.

Appeal to the NARB

A little extent of NAD cases are appealed to the NARB. Survey by the NARB is naturally
conceded to a promoter who demands it. Notwithstanding, when a challenger who started the
case is despondent with the NAD's choice, the NARB has attentiveness in the matter of whether

192
to hear an advance. A claim must be joined by a charge of $1,500 for CBBB individuals or
$2,500 for non-CBBB individuals.

In the event that a challenger looks for survey, it ought to present a letter clarifying the
reasons the NARB ought to adjust the NAD's choice. The letter ought to incorporate any
pertinent connections from the case record. The challenger's allure must be documented inside
10 business days of the receipt of the last case choice and be restricted to 20 twofold separated
pages. The publicist and the NAD then have 10 business days to present a reaction to the NARB
Chair. The reaction ought not surpass 20 twofold dispersed pages. No different entries might be
made from that point. Inside 10 business days after the due date for the last accommodation, the
Chair will choose a board to audit the case, unless he or she confirms that there is a significant
probability that the NARB Panel will achieve the same conclusion as the NAD.

When it is resolved that a bid is proper, a board is chosen comprising of one open interest
individual, one publicizing organization individual and three "sponsor" individuals, which means
people from any element that utilizations national promoting to advance merchandise or
administrations. The Chair readies a bundle of material for every board part and calendars a
hearing. The case record is viewed as shut upon the production of the last case report; from that
point, no extra confirmation might be brought into the NARB continuing (with the exception of
under constrained circumstances). In case if a board is designated, the engaging party will then
get the case record arranged by the NAD and, inside 10 business days of receipt, must present a
letter (not to surpass 30 twofold divided pages) to the NARB Chair clarifying its position. The
restricting party will then have 10 business days to present a reaction (not to surpass 30 twofold
divided pages) to the NARB.

Vitally, at this stage, the non-appealing party may advance some other part of the NAD
choice, despite the way that the first due date for such a bid has officially lapsed. For instance, it
might be that a challenger was not so much content with the broadness of the NAD's decision as
to a publicizing case that was observed to be misleading. By the by, the challenger may have
chosen to live with the choice as opposed to experience the time and cost of an advance. Be that
as it may, now that the publicist has requested, the challenger has the chance to reconsider its
choice and rather advance that part of the NAD choice with which it was initially unsatisfied.

193
Basically, the non-engaging gathering gets another chomp at the apple. So as to do as such, the
(previously) non-engaging gathering would pay the recording charge ($1,500 for CBBB
individuals or $2,500 for non-CBBB individuals) and present a letter to the NARB asking for the
bid and indicating the extra issues it wishes to claim. The due date for this letter is, for the
challenger, inside 5 business days after receipt of the last case choice with the promoter's
announcement showing it has chosen to claim and, for the publicist, inside 5 business days after
receipt of the NARB Chair's determination allowing the challenger's solicitation to bid.

Composed entries to the NARB may not contain any real confirmation, contentions or
issues that are not in the NAD case record sent to the NARB. On the off chance that the Chair
confirms that data outside the extent of the case record is incorporated into a bid accommodation,
the Chair may permit the submitting party 3 business days to remedy the accommodation, or
he/she may remand the case to the NAD for extra thought.

Once the board has achieved its choice, it informs the Chair and gives a composed
method of reasoning inside 15 business days. The Chair transfers the composed choice to the
gatherings, and the promoter then has 5 business days to react, showing its acknowledgment or
dismissal, alongside any remarks.

Closing a Case
Upon sign that a publicist will keep the suggestion of the NAD or the NARB, the case is
shut and no further really comparable grievances on the cases being referred to will commonly
be acknowledged by the NAD or the NARB, in spite of the fact that they hold the scope to return
to the promoting being referred to, especially where consistence might be an issue.
Publicizing a NAD or NARB choice for aggressive addition is not inside the soul of the
self-administrative process and is illegal. In the event that a gathering promotes or plugs to
outsiders not straightforwardly identified with the case the way that particular publicizing will
be, is being, or has been alluded to the NAD for determination, the NAD may decline to start or
keep on handling the challenges107

107
See National Advertising Division website, located at www.nadreview.org/Membership.aspx. (Last visited on
Sept. 5th 2016)

194
Self regulation by Other Broadcasting Agencies
The advertising and communications industries have taken the proposal in policing
comparative advertisements and commercial identifying contenders or contending items. In this
manner, the force for regulation has originated from the private sector most straightforwardly
required in settling on everyday choices influencing publicizing. The subsequent rules and policy
statements point out a traditional and watchful approach intended to endorse and make sure
standards of accuracy and reasonableness. Some of the important guidelines followed by major
broadcasting companies on comparative advertising are stated below:
The NBC guidelines of January 16, 1974 require:
I. The known goods should really contend;
II. Contender must be fairly and legitimately recognized;
III. Advertisers must not discredit, disparage or unfairly attack rivals, their goods or other
industries;
IV. Identification of the contender or his goods "must be for comparison purposes and not
simply to upgrade by association";
V. Related or similar properties or ingredients should be compared, "dimension to
dimension, feature to feature, or wherever possible by a side-by-side demonstration";
VI. The compared property must be "significant" in terms of product "value or usefulness" to
the consumer; and
VII. The difference must be "measurable and significant."108

The ABC Principles for Comparative Advertising, as restated on March 18, 1974, are:
I. germane product testing and survey evaluation must be "in accord with generally
accepted scientific technical procedures" and be determined by ABC to be adequate for
purposes of the comparison;
II. test findings must be proven significant pursuant to "standards of statistical validity";
III. the advertiser has the burden of establishing its diligence to determine "the best possible
test" to prove any claimed superiority;

108
The unpublished comparative advertising guidelines adopted by NBC are available on request by writing to the
National Broadcasting Company, 30 Rockefeller Plaza, New York, New York 10020. The guidelines are also
available at
https://nbcuadstandards.com/files/NBC_Advertising_Guidelines.pdf;jsessionid=E715A8FC08AAE9F4823EE2DFA
B89256B, (Last visited on Sept 5th 2016)

195
 IV. conclusions from test results must be about properties that are "meaningful in terms of
value and usefulness" to consumers;
V. test nature and limitations must be disclosed clearly;
VI. demonstrations, graphic techniques and reproductions of tests must not cause consumers
to reach a conclusion about the respective merits of the compared products;
VII. claims must "fairly reflect" the empirical data on which they are predicated;
VIII. notwithstanding technical compliance with the foregoing, an ad will be unacceptable
if its "net impression “I is adjudged to be "misleading, deceptive, vague, equivocal or
disparaging"; and
IX. objections must be substantive and based on data "responsive to these principles," and a
challenged advertiser must respond adequately with the time set or the ad may be suspended.
ABC notes that even non-comparative advertising will be reviewed by the same standards
"where appropriate."109
Norman E. Gottlieb, General Counsel of the Council of Better Business Bureaus, Inc.
reports that the principles appropriated by the National Advertising Review Board and the
National Advertising Division of the Council of Better Business Bureaus are as follows:
“When an advertiser elects to compare his product with a competitive product, he
triggers a responsibility not only to set forth truthful and accurate representations about
his own product, but also about the compared product. He may not choose
characteristics at which he excels and ignore those at which his competition excels to
reach a conclusion of overall product superiority.”110

Broad rules for comparative advertising have been embraced by the Board of Directors of
the American Association of Advertising Agencies (4-A). In embracing these rules, the Board
noticed that acute vigilance ought to be practiced in the utilization of comparative advertising as
a result of its potential for deception and distortion of facts.
The guiding principles implemented by 4-A are given below:
I. The intent and connotation of the ad should be to inform and never to discredit or
unfairly attack competitors, competing products or services.

109
Lee, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71 Trademark Rep. 620-25
(1981).
110
“Developments in the Law: Deceptive Advertising”. “Developments in the Law: Deceptive
Advertising”.Pg.1123, Harvard Law Review 80.5 (1967).

196
 II. When a competitive product is named, it should be one that exists in the market
place as significant competition.
III. The competition should be fairly and properly identified never in a manner or
tone of voice that degrades the competitive product or service.
IV. The advertising should compare related or similar properties ingredients of the
product, dimension to dimension, to feature.
V. The identification should be for honest comparison purposes and not simply to
upgrade by association.
VI. If a competitive test is conducted, it should be done by an objective testing source,
preferably an independent one, so that there will be no doubt as to the veracity of
the test.
VI. In all cases the test should be supportive of all claims made in the advertising.
VIII. The advertising should never use partial results or stress insignificant
differences to cause the consumer to draw an improper conclusion.
IX. The property being compared should be significant in terms of value or usefulness
of the product to the consumer.
X. Comparatives that are delivered through the use of testimonials should not imply
that the testimonial is more than one individual's thought unless that individual
represents a sample of the majority viewpoint.111

While the effect of these somewhat unrealistic rules has not been completely tried in the
commercial place, they do give feasible principles to the publicizing industry. Conceivably the
most comprehensive guiding principles are those issued by the Code Authority of the National
Association of Broadcasters, came in force April 1, 1975, which is given as follows:
I. With respect to competitor identification,
a. it must be accurate and clear;
b. it must be for comparison only, not to upgrade by association;
c. it must not disparage; and

111
The unpublished comparative advertising guidelines adopted by the 4-A Board of Directors are available on
request by writing to the American Association of Advertising Agencies, 200 Park Avenue, New York, New York
10017.

197
 d. the compared aspects "must be significant and meaningful to the overall
performance of the product."

II. With respect to claims,

a. comparisons and demonstrations must be based on specified product differences
related to product use, "comparing similar properties or ingredients, dimension to
dimension, feature to feature";
b. comparative claims based solely on consumer or professional preference, or on
sales data, must be substantiated adequately, and must not imply "universally
superior effectiveness or performance";
c. claims, demonstrations "and other representations shall include all information
necessary for their proper understanding by the average consumer," and
"inadequately qualified language," "dangling comparatives" and the like are
prohibited; and
d. the overall impression must be accurate.

III. With respect to support of claims,

a. testing and survey evaluation must conform to "generally accepted scientific and
technical procedures";
b. the advertiser has the burden of establishing that "he exercised diligence to
determine the fairness and accuracy of any test" supporting any claimed
superiority;
c. applicable government, industry or other established standards determine the
appropriateness of substantiation material;
d. tests or surveys should be conducted by an objective, preferably independent,
source;
e. substantiation of claims based on performance differences must demonstrate that
the differences provide material benefit to the consumer;
f. substantiation material must "take into account" (1) the product's intended
purpose, (2) its normal manner of use by consumers, and (3) individual label
instructions; and

198
 g. test findings must be based on any applicable "statistical tests of significance in
accordance with recognized standards of statistical validity."112

From the numerous rules scrutinized here, it is understandable that the norms for
comparative advertising are in a state of expansion. All rules endeavour to limit neglectful,
reckless, erroneous and unreasonable comparative advertising. Observance is intentional, apart
from the scope the advertising and broadcasting media claims that advertisers scrutinize these
principles, by declining to acknowledge non-complying material. The rules, while not lawfully
enforceable, do give a sound premise to making business judgments relating to the substance and
nature of anticipated comparative advertising. The achievement of these endeavors by the
publicizing and television businesses is still an open question. In case the guidelines for example,
those talked about here are generally acknowledged and reliably authorized as an issue of
business judgment in the preparation and acknowledgement of comparative advertising, the
probability of direct administrative control, and in addition suit started by aggrieved contenders,
will be incredibly diminished.113

Action taken under Common Law114

In common law, a business legitimate plan of action against a publicizing was greatly
constrained. Courts have been hesitant to permit organizations to sue for remedy against an
opponent's publicizing deceptions, notwithstanding when such distortions removed business
from the harmed firm.115 For comparative advertising, common law considered cases that one
good was superior to another to be an insignificant puffing, generally alluded to as "unfavourable
comparison”. However, if the correlation went past statements of opinion to statements of fact, it
may then get to be actionable as disparagement116. On the off chance that the opponent

112
FTC Policy Statement, August 13, 1979, reported in 48 USLW 2136. Also see Lee, “Comparative Advertising,
Commercial Disparagement and False Advertising”, 71 Trademark Rep. 620-25 (1981)
113
See Suzanne B. Conlon,” Comparative Advertising: Whatever Happened to "Brand X"? 67 Trademark Rep., 407
(1977).
114
Stewart E. Sterk, “The Law of Comparative Advertising: How Much Worse Is "Better" than "Great", Pg.89,
Columbia Law Review, Vol. 76, No. 1 (Jan., 1976).
115
"Developments in the Law: Competitive Torts" Pg.926, Harvard Law Review, note, 77.(1964)
116
"Actionable Nature of Advertising Disparaging or Criticizing Merchandise or Products" 837-849, American Law
Reports, 2d ed. annotation, 57, (1958).

199
distortions concerned the offended party's items, the harmed firm could sue under
disparagement.
Two other common law torts-defamation (trade libel) and passing off may have
considerably more restricted applicability to comparative advertising. In the event that distortion
were made concerning the offended party's character or trustworthiness, other than the way that
it sold a second rate item, the harmed firm could sue for slander. Since not very few modem
advertisement assault a contender in person, this tort has an exceptionally restricted application
comparative advertising. Passing off happens when one firm makes a false representation that
mislead the people in general into trusting the item is that of another firm. The false
representation might be the utilization of a trade name or mark, labeling or trade dress, or even a
non-functional product trait that has acquired “secondary meaning" to consumers. Functional
product features not protected by intellectual property law can be copied117. Passing off has less
appropriateness to comparative advertising than defamation. The honest utilization of an
adversary's trade name or mark in comparative advertising has for some time been secured. In
Saxlehner v. Wagner,118 Justice Holmes wrote:
"The defendants have a right ... to get whatever share they can in the popularity of the
plaintiff's product by advertising they are trying to make the same article, and think they
succeed."

However, in the event that the comparative claims make a probability that customers are
confused about the source of goods, then the claims might be enjoined as passing off.

Defamation and Disparagement

At the point when a publicist took in comparative advertising by putting forth false
expressions about his rival or his rival's items, he may cross paths with the common law
governing defamation and disparagement.119

117
Ross D Petty, “The Evolution of Comparative Advertising Law: Has the Lanham Act Gone Too Far”, Pg.611,
Journal of Public Policy & Marketing, Vol. 10, No. 2, Environmental Problems and Marketing (Fall, 1991)
118
(1910), 216 US 375.
119
The term "trade libel" is frequently used to denominate certain actions involving defamation or disparagement.
However, that term is used so loosely that it inevitably causes confusion. For example, it is sometimes used as a
synonym for disparagement, see W. Prosser& J. Wade, “Cases and Materials on Torts” 993 (5th ed. 1971)

200
Defamation is a “communication which tends to damage the plaintiff's reputation, more or less
in the popular sense-that is, to diminish the respect, good will, confidence or esteem in which he
is held, or to excite adverse or unpleasant feelings about him.”120
Disparagement, on the other hand, is a deliberate, demonstrably false, attack upon plaintiff's
product.121

Practically speaking, the definitional refinements amongst disparagement and defamation

might be misty, and since substantive tort law every now and again contrasts from state to state,
it is difficult to devise commonly appropriate rules in this area.

Disparagement exists if the nature of offended party's goods or services is condemned,

while an assault on offended party's genuineness or trustworthiness expressed as an affront to the
products brings a cause of action for defamation.122 In view of this difference, defamation law is
seldom appropriate in a comparative advertising situation. To be dealt with as defamatory, a
comparative advertisement would need to be so emphatic that it undermined harm to the
offended party's item, as well as to the offended party's reputation. It ought to be noticed that by
building up an action in defamation, as opposed to disparagement, plaintiff ease his burden of
proof. In defamation claims, proof of malice in the feeling of real hostility is a bit much. For a
disparagement action, on the other hand, the plaintiff must demonstrate either 'scienter' that the
statement published is false, or intention to do damage to the offended party, or to influence his
interests unfavorably in an unprivileged way.123 Disparagement actions are of more prominent
worth in restraining oppressive comparative advertising. To be actionable statements should (a)
either allude to the offended party by name or be made in such a way, to the point that general
society realizes that the announcements allude to the offended party, and (b) disparage the
plaintiff or its product.124 The classic case125 on this subject explains and interprets as follows the
three classes of statements which are the subject of commercial disparagement actions:

120
Id as above
121
The Law of Commercial Disparagement: Business Defamation's Impotent Ally, 63 Yale L.J. 65 (1953)
122
Gaughan,” Advertisements Which Identify 'Brand X": A Trialogue on the Law and Policy”, 35 Fordham l. Rev.
445, 446 (1967).
123
Id as Above.
124
National Refining Co. v. Benzo Gas Motor Fuel Co., 20 F2d 763, 766-67 (CA 8 1927)
125
Id as above

201
 I. False statements alluding to a contender's merchandise and attributing to the contender
deceitfulness or inexcusable business techniques regarding the products. In this class of
cases, similar with defamation as such in personal disparagement cases, it is not essential
to claim special damages as some damage can be assumed.
II. False statements relating to the feature or presentation of the contender's products. Here,
special damages ought to be appeared keeping in mind the end goal to demonstrate that
the statements are actually damaging.
III. False statements of opinion that one's own products are better than those of a contender.
Explanations in this class are viewed as "mere puffing" and are not actionable regardless
of the fact that false and special damages are contended.
Disparaging statements with regard to comparative advertising will fall inside the second class,
gave that the false proclamations are real in nature and not affirmations of opinion.

Several of the extensive dialect in the sentiment shows that disparagement law won't give
relief from a deceptive, but stringently comparative, advertising campaign.126 Statements in the
nature of puffing are not actionable under common law where one puts forth honest or overstated
statements which positively contrast his own item with offended parties, in this way inferring
offended party's second rate.127 An unfavorable correlation without material duplicity is no
premise for harms for common law disparagement.128 Assuming, be that as it may, there is more
than an unduly unfavorable contrast and there are particular false statements, such statements
might be actionable.129

A few courts have acknowledged this perspective and have recognized "puffery"
correlations and those whose exactness can be found out. For example, in Testing Systems, Inc.
v. Magnaflux Corp.130 the court held that publication of a false report that offended party's item
was just 40% as viable as that of respondent offered ascend to a reason for cause of action for
disparagement. The court stressed the contrast between a mere claim of superiority and a
declaration of fact that entail a capacity with respect to the respondent to substantiate the

126
See Smith-Victor Corp. v. Sylvania Electric Products, Inc., 242 F. Supp. 302
127
Universal Athletic Sales Co. v. American Gym, Recreational & Athletic Equipment Corp., 397 F Supp 1063
128
Aerosonic Corp. v. Trodyne Corp., 402 F2d 223, 160 USPQ 166 (CA 5 1968).
129
Smith Victor Corp. v. Sylvania Electric Products, Inc., 242 F Supp 302
130
251 F. Supp. 286, 289 (E.D. Pa. 1966).

202
statement. Notwithstanding the issue of puffery, offended party may experience issues keeping
up a disparagement action due to the necessity that he has the capacity to demonstrate
exceptional damages. In order for plaintiff to recuperate, he not only has endured injuries,
however, he must also be able to identify them. In a comparative advertising situation, unless the
contender is obviously recognized, it might be hard to figure out if the offensive language will be
interpreted as an assault on offended party's item, or, rather, on a vague undefined group of
contenders. On the off chance that the sting of the commercial is spread among mass of
contenders, the courts have contemplated that it doesn't bode well to permit any one individual to
recuperate unless he can indicate substantial evidence of injury. Likewise, no action for
disparagement will lie where the respondent, while precisely depicting offended party's item,
overstates the benefits of his own products.

At last, regardless of the fact that the offended party can keep up an action in
disparagement, he may just have the capacity to get monetary damages and not injunctive relief.
Practically speaking, this curative constraint is not important given the facts which give rise to a
disparagement action is normally likewise significant as unfair competition, and unfair
competition is habitually enjoined. Indeed, a significant number of the crevices in common law
disparagement have been filled by suggestion to other areas of the law.131

The Uniform Deceptive Trade Practices Act, 1964

The unfriendliness of common law to adequately tackle deceptive advertising prompted
the enactment of various publicizing statutes. As early as 1911, most states embraced some type
of Printer's Ink Statute; however, the attempt was mainly futile as a result of absence of an
enforcement mechanism.132

In 1965, Illinois embraced the Uniform Deceptive Trade Practices Act. 'This act shows
more guarantee as a valuable method for getting alleviation from injurious comparative
advertising. The Act is exceptionally liberal in its substantive procurements; it concedes a reason

131
Stewart E. Sterk, “The Law of Comparative Advertising: How Much Worse Is "Better" than "Great",Pg.92,
Columbia Law Review, Vol. 76, No. 1 (Jan., 1976).
132
See Ross D. Petty, "The Evolution of Comparative Advertising Law: Has the Lanham Act Gone Too Far?"
Pg.168,10(2) J. of Public Policy and Marketing (1991).

203
for activity both in instances of slander and in situations where a promoter distorts the nature of
his own merchandise. Also, the Act gives standing to sue on anybody liable to be harmed by a
deceptive trade practice of another. No proof of monetary damages, loss of profits or intent to
deceive is required. The Uniform Act then might be of considerable value to sufferers of abusive
comparative advertising. The Act does not tackle all the issues, but to start with, the Act just
gives injunctive relief and does not give for the recovery of damages. The statute makes it
obvious, in any case, that "the relief given in this segment is in addition to remedies otherwise
accessible against the same behaviour under the common law or other statutes of this state."
Thus, if offended party could have recuperated damages at common law, the Act does not
prevent such recovery, but rather the Act does not permit recovery of damages in any new zone.
All the more essentially, one state has held that its translation of the Uniform Act is only a
codification of the regular law of common law of unfair competition. This decision runs as
opposed to the aim of the drafters, and on the off chance that it is taken after; the Act will be
stripped of some of its potential value. At last, a large part of the appeal of the Uniform Act rests
on the likelihood of institutionalizing the law here all through the nation. In case the Act were to
be acknowledged on the same premise as the Uniform Commercial Code or other broadly
authorized uniform statutes, it would be an important commitment, regardless of the possibility
that its procurements were translated barely. In any case, the prospects for across the board
acknowledgment of the Uniform Deceptive Trade Practices Act seem faint; just a little minority
of states have instituted the statute, and a few states have as of now revoked the Uniform Act for
other, non-uniform enactment.

Some considered that actionable unfair competition ought to incorporate "giving

customers or potential customers truthful information about a competitor’s goods, business or
business strategies, unless essential interests of the informant or of the people in general, can't
be ensured by different means." Common law actions got to be deficient, and when times
changed, so did the laws and approach towards comparative advertising.133

133
See Ross D. Petty, The Evolution of Comparative Advertising Law: Has the Lanham Act Gone Too Far? Pg.161,
J. Pub. Poly & Marketing, Fall (1991).

204
Federal Trade Commission (FTC)
The expansion of the FTC's advertising jurisdiction was a noteworthy transformative stride
for comparative advertising law and symbolized a radical transformation from common law. The
FTC was set up in 1914 as an autonomous administrative office enabled to make and implement
rising antitrust arrangement and to denounce “unfair methods of competition." From the starting
it followed false advertising.134 It controls advertising by:
I. Recommending regulations under the FTC Act.
II. Scrutinizing alleged infringement of the FTC Act.
III. Bringing claims against corporation performing unlawful actions.

One noteworthy point of preference of the FTC Act over common law is the
comparatively little burden of proof necessary. The FTC does not need to demonstrate that the
promoter proposed to delude purchasers or knew its commercials were misleading. The FTC
additionally does not have to demonstrate genuine misrepresentation of a specific articulation or
that shoppers are really misled. Or maybe it simply should demonstrate that specific cases are
material and that reasonable consumers are prone to be deceived by them regardless of the
possibility that the cases are actually valid. 135

As the federal agency, the FTC supports comparative advertising, including utilization of
a contender's mark and just limits comparative advertising that comprises “unlawful or deceptive
acts or practices in or affecting commerce.”136 In 1979, the FTC issued its “Statement of Policy
Regarding Comparative Advertising,” note of that,
although some industry codes and trade association standards may be interpreted as
discouraging comparative advertising, it is the “Commission’s position that industry self-
regulation should not restrain the use by advertisers of truthful comparative
advertising.”137

134
Id as above
135
Ross D Petty, "FTC Advertising Regulation: Survivor or Casualty of the Reagan Revolution," American Business
Law Journal, 29 (4)
136
Joy J. Wildes and Brooke Erdos Singer, “Ours Works Better”: Use of a Competitor’s Trademark in Advertising”,
Pg.6. available at http://www.metrocorpcounsel.com/pdf/2004/October/06.pdf. (Last visited on Apr.12th 2013)
137
See FTC, Statement of Policy Regarding Comparative Advertising § (a) (Aug.13, 1979), available at
http://www.ftc.gov/bcp/policystmt/ad-compare.htm [hereinafter “FTC Comparative Advertising Statement”]; 16
C.F.R. § 14.15. (Last visited on Apr.12th 2013)

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 The FTC's strategy on comparative advertising states that it benefits consumers.138 The
FTC promote the naming of, or reference to contenders, yet requires clarity, and, if essential,
revelation to evade fraudulence of the consumer.139 The FTC expressed that comparative
advertising where the correlations are obviously recognized, honest, and non-deceptive, can be a
basis of useful and vital information to consumers and can help them in making sound buying
decisions.140 Already, advertising that contrast diverse brands and recognized them by name
(rather than “Brand X advertising”) had been opposed by both broadcaster and self-regulation
entities.141 Consequently, with a specific end goal to be effective on a misleading advertising
claim, the FTC just needs to demonstrate that a reasonable consumer is liable to be deluded and
that the commercial assumed a material part in the buyer's buying decision.142 The FTC
additionally requires the publicists to substantiate the honesty of their inferred or express
advertising claims.

Notwithstanding giving a green light to comparative advertising, the FTC has further
expressed that defaming ads, that is, advertisements assaulting, disgracing, or else condemning
another goods, are allowable insofar as they are honest and non-deceptive.143

The FTC additionally has expressed that it assesses comparative advertising in the same way
as it assesses all other publicizing and does not require a higher standard of substantiation by
sponsors for comparative claims.144 All together for the FTC to bring an enforcement action for
dishonesty, it must establish that:
I. a representation, omission or custom exists that is liable to deceive consumers;

138
Ross D. Petty, “The U.S. International Trade Commission: Import Advertising Arbiter or Artifice”, 68-69, 17
N.C. J. Int'l L. & Com. Reg. 45, (1992).
139
FTC Commercial Practices, 16 C.F.R. § 14. 15(b) (1994). In fact, an advertiser can disparage its competitor(s) all
it wants as long as the statements are truthful and not misleading. Id. § 14. 15(c)(l).
140
See FTC Comparative Advertising Statement § (b).
141
John E. Villafranco, “The Law of Comparative Advertising in the United States”, IP Litigator , Pg.1-2.,Vol.16,
Aspen Publishers, (Jan-Feb 2010)
142
P. Spink and R. Petty, “Comparative advertising in the European Union”. Pg.161, International and
Comparative” Law Quarterly 47, (1998).
143
See John E. Villafranco and Andrew B. Lustigman, “Regulation of Dietary Supplement Advertising: Current
Claims of Interest to the Federal Trade Commission,” Food and Drug Administration and National Advertising
Division 62 Food & Drug L.J. 709, 710 (2007)
144
See FTC Comparative Advertising Statement(c) (2).

206
 II. the representation is deceiving from the viewpoint of the consumer acting reasonably
under the situation; and
III. the representation, lapse or practice is “material”, that is, prone to influence the
consumer’s behaviour or buying choice as to a product or service.
Once the FTC has discovered that it has adequate premise for continuing with an enforcement
action, it might act in one of two ways:
a. Consent decrees/restraining orders – an advertiser accused of misleading advertising can
consent to a settlement with the FTC by marking a consent order, which is an agreement
to discontinue the practice or publicizing being referred to and (at times) pay a fine to the
FTC. This understanding is for settlement purposes and does not comprise an admission
of guilt by the advertiser. A signed consent order is the general result of a FTC action.
b. Hearings – A hearing can be asked for by the publicist before a Bench. The verdict may
be appealed in federal court. As the appeal process might be extensive, the FTC has
power to issue a restraining order authorizing the advertiser draw all commercial
containing the subject pending resolution. 145.

In the case of Jay Norris Inc.146, a commercial was declared as deception when it asserts that
an antenna was an ‘electronic miracle’. The FTC declared it as an overstated statement that could
cause the consumer to suppose that antenna is usually superior. But FTC did not gave any relief
to the contender whose reputation has been harmed because of such comparative advertisement.
In the case of ITC Ltd. v. Punchgini, Inc.147, plaintiff ITC manages a “Bukhara”
restaurant in India as well as in the United States, and sells “Dal Bukhara” packaged foods in the
United States. Defendants manage their own “Bukhara Grill” restaurant in the United States.
Plaintiffs asserted that Defendants has used the same name in order to declare their association
with the plaintiff’s products and this comprise false advertising. The lower court dismissed the
Plaintiff’s assertion for lack of standing, and the Circuit affirmed. Firstly, the court assured that
Plaintiff’s were merely planning to open “Bukhara” restaurants in the United States therefore did
not create a secure interest adequate to augment a standing. Secondly, the court alleged that in
view of the fact that defendants are not contrasting their restaurant to Plaintiff’s packaged

145
FTC Policy Statement, August 13, 1979, reported in 48 USLW 2136
146
Jay Norris Inc. v. FTC, 598 F.2d 1244 (2d Cir.)
147
482 F.3d 138 (2d Cir. 2007).

207
products and Plaintiff’s utilization of the name “Dal Bukhara” on such products did not give
them any footing to confront Defendants advertising.

Section 43(A) of the Lanham Trademark Act, 1946

In light of the intricacies of getting the FTC to arbitrate and the subsequent requirement
for another government solution for an assortment of unfair competition problems, Congress
passed the Lanham Trademark Act, 1946.148 The Lanham Act is currently the major ruling for
false advertising in the United States.149 Under the present Act, organizations can bring private
suits straightforwardly without relying on an administration entity to do as such for them. The
Act makes an organization "civilly liable to another who is or is prone to be harmed by the false
depiction or representation of products or services" in a comparative advertisement.150 The
aggrieved party must prove that the contender's publicizing is entirely false or deluding by
demonstrating an absence of substantiation to go down the contender's case.

For a long time, the FTC was seen as the government's champion against all types of
publicizing misuse. In any case, lately, the FTC has lessened its part in the direction of
promoting. It is seen that broad control of comparative advertising by the commission would in
opposition to its approach of encouraging such practices. At last, if a contender is fit for showing
opposing information because of a deceptive promotion, for example, in self-preservation
advertisement, the FTC won't intervene.'151 This reluctance with respect to FTC prompted
ascends in comparative advertising abuses. The only remedial alternative available with the court
for comparative advertising abuses is in the form of Section 43(a) of Lanham Act.

148
Section 43(a) of the Lanham Act, 1946 provides: “Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or misleading description of fact, or false or
misleading representation of fact, which- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising
or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that
he or she is or is likely to be damaged by such act”.
149
See Ross D. Petty, “The Evolution of Comparative Advertising Law: Has the Lanham Act Gone Too Far?”,
Pg.161, J. Pub. Poly & Marketing, (Fall 199).
150
Paul E. Pompeo, “To Tell the Truth: Comparative Advertising and Lanham Act Section 43(a)”, 36 Cath. U. L.
Rev. 565, 565 (1987).
151
Id as above.

208
 Section 43 (a) of Lanham Act had come into being in the year 1946.152 It proposes to
defend both consumer and person occupied in business against misleading and deceptive
utilization of trademarks additionally different types of unfair competition, for the initial two
decades of its continuation, the Lanham Act was utilized rather scarcely to ensure against
advertising abuses.153

Section 43(a) initially got a far reaching perusing for promoting claims in L’Aiglon
Apparel, Inc. v. Lana Lobell, Inc.154 In the current case court particularly dismissed provisional
interpretation of Section 43(a), taking note of that all over, the section shaped a new legal tort.
Ever since the L'Aiglon judgment, there has been a lot of suit over the extent of section 43(a). A
wide range of cases, incorporate claims for false promotion, unfair competition, and right of
publicity, have been attempted under this section, with fluctuating degrees of accomplishment.
In the case of Skil Corp. v. Rockwell International Corp,155 the US court for the Northern District
of Illinois expanded and characterized the utilization of Section 43 (a). In the current case, court
put forward five elements important to establish prima facie case of false advertising. The
requirements are as follows:
I. In its comparison advertisements, defendant made false statements of fact about its
own particular good;
II. Those advertisements in fact deceived or have the tendency to deceive a substantial
section of their audience;
III. Such deception is material, in that it is likely to impact the purchasing decision;
IV. Defendant brought about its dishonestly publicized products to enter interstate trade;
and

152
Section 43(a) of the Lanham Act, 15 U.S.C. S.1125(a) (1970), provides that: “Any person who shall affix, apply,
or annex, or use in connection with any goods or services, ... a false designation of origin, or any false description
or representation, including words or other symbols tending falsely to describe or represent the same, and shall
cause such goods or services to enter into commerce, . . . shall be liable to a civil action by any person doing
business in the locality falsely indicated as that of origin or in the region in which such locality is situated, or by any
person who believes that he is or is likely to be damaged by the use of any such false description or representation”.
153
It has been reported that from the enactment of section 43(a) in 1946 to 1964, a total of fewer than thirty reported
cases had arisen under the section. Not all of these cases, of course, dealt with advertising situations.
154
214 F.2d 649 (3d Cir. 1954).
155
375 F. Supp. 777, 782 (N.D. Ill. 1974).

209
 V. Plaintiff has been or is liable to be injured as the result of the foregoing either by
direct diversion of sales from itself to defendant, or by reducing of the goodwill
which its products enjoy with the buying public.
These prerequisites have been taken after and qualified in numerous cases later.
Additionally defining a prima facie case, the district court encouraged comparative advertising
suits by setting the benchmark for remedies under Section 43(a). "In order to recover damages
under section 43(a), plaintiff must establish that the buying public was actually deceived; in
156
order to obtain equitable relief, only a likelihood of deception need be shown." In the course
of this one case the federal courts turned out to be a feasible possibility for remedies for
comparative advertising abuses. It was apparent to prospective complainants that comparative
advertising claims had a place in the federal courts.

Another important case on comparative advertisement is Bernard Food Industries Inc. v.

Dietene Co.157 in 1964; Bernard started to manufacture eggless instant custard. After a year,
Dietene launched a custard mix containing egg solids, and Bernard took action accordingly
within a couple of months. In January, 1966, a Dietene chemist without awareness of the
presence of the new Bernard egg custard, made a comparison of the Dietene product with
Bernard's eggless mix. On the premise of this examination, Dietene arranged a comparison sheet
which highlighted the poor standards in the flavour, texture, nutrition and expence of the Bernard
eggless mix, which was referred to as "Bernard custard." Also, the sheet expressed that "Delmark
Quick Egg Custard (the Dietene brand name) is better to Bernard Custard in all significant
regards." The correlation sheet was conveyed to a few of Dietene's workers and to some of its
sales people; however there was no confirmation of any appropriation to clients or potential
clients. All things considered, Bernard brought suit under the Lanham Act and won in the trial
court. The court of appeals turned around, holding that where respondent just makes false
representations as to offended party's item in its examination, no cause of action arose. It was
observed that the plaintiff's case in Bernard was not ascertained to incite sensitivity, the
deception was coincidental, the dispersion of the false matter was restricted, the respondent

156
Id as above.
157
415 F.2d 1279 (7th Cir. 1969)

210
immediately consented to quit utilizing the comparison and it is not astonishing that the court felt
agreeable in refusing the plaintiff relief. 158

In numerous regards, proving an infringement under the Lanham Act and the FTC Act
are related. Both permit condemnation of express and implied claims, regardless of the fact that
the suggested cases are truly valid. Neither requires proof of intent to mislead or definite
deception. While the FTC must establish that the advertisements are prone to mislead the rational
consumer in the Lanham Act, plaintiff must establish that the false statements either have
deceived or have the ability to delude a considerable section of the viewers.159 Hence, the burden
of proof is elevated in a Lanham Act claims than in an FTC or ITC cases. Conversely, Lanham
Act cases have established dishonesty more regularly than FTC cases, due, to some degree, to a
legal acknowledgment of a strong public interest in consumer protection.

Remedies Available
Injunction: The most favoured option of complainants
The most widely recognized remedy looked for and accomplished in Section 43(a)
proceedings is the injunction. There are various grounds for the prominence of this remedy. In
particular, an injunction accomplishes the essential objective of wiping out the offensive
advertisement from the commercial centre. The order prevents the message from proceeding and,
in this manner, from bringing about more damage to the contender and confusion to the
consumer. The second most imperative variable for picking an injunction is the speediness by
which it accomplishes the essential objective. Preliminary injunctions can be attained in months
and even weeks of the documentation of a grievance. The reason that such action might be more
effectively gotten in federal court than at the FTC makes Section 43(a) significantly more
alluring. While an injunction is similar in result to the discontinued order of the NAD, it conveys
with it the quality of the law. This lawful commitment, instead of only an ethical one, decreases
the probability of disobedience with the verdict. A last component for the recognition of the

158
The court refused to hold that the statement that "Delmark Quick Egg Custard is superior to Bernard Custard in
all major respects" constituted a false representation of Dietene's product. Rather, the court maintained that this
statement was to be viewed in the context of the comparisons which showed deficiencies in the Bernard product, and
that the misrepresentations did not, therefore, relate to defendant's product.
159
Ivan Preston, “"False or Deceptive Advertising under the Lanham Act: An Analysis of Factual Findings and
Types of Evidence", 508-553, Trademark Reporter, 79(4) (1989).

211
injunction is the trouble in getting further help. As a result of the overwhelming burden of proof,
damages are frequently found no significance to the attempt.160

Because of the expansion of Section 43(a) cases and the attractiveness of the injunction, guiding
principles for relief have been reasonably well established. The United States Court of Appeals
for the Second Circuit in Coca-Cola Co. v. Tropicana Products, Inc.161 put forward the
prerequisites for an injunction. Tropicana used Olympic athlete Bruce Jenner as a representative
in a TV advertisement

While squeezing an orange, Mr. Jenner said of Tropicana's "Premium Pack" orange juice,
"Its pure, pasteurized juice as it comes from the orange." The advertisement likewise asserted
Tropicana to be the main driving brand which was not produced using concentrate and water.
The Coca-Cola Company, which possesses Minute Maid orange juice, asserted that the
Tropicana commercial was false and deceptive. The court introduced its basis for switching the
refusal of a preliminary injunction asked by Coca-Cola, by conveying its unease toward the
considerable effect that TV has on a viewer.162 It then settled a two -part test in deciding the
suitability of injunctive relief. The plaintiff should first show that he will endure irretrievable
harm if an injunction is not issued and the offensive message is permitted to continue. There is
no need to illustrate tangible lost sales, but rather there must be more than simple slanted belief
of injury.

Damages: An Expansion of Relief

No damages had yet been granted in Section 43(a) case until the mid 1980's. Indeed, it
was viewed as difficult to demonstrate that a specific commercial or promotion was the
immediate reason for a misfortune in deals or potential deals by the contender. However, certain
cases have started to pass the order stage and open a new door for damage awards.163 Such

160
Keller, “How Do You Spell Relief? Private Regulation of Advertising under Section 43(a) of the Lanham Act”,
75 Trademark Rep. 227, 228 (1985).
161
690 F.2d 312 (2d Cir. 1982).
162
Judge Cardamone believed that if there is great truth to the adage "seeing is believing" then both the audio and
visual aspects of television would more readily persuade the audience to believe. These strong persuasive abilities of
television serve as policy considerations for regulating comparative ads.
163
In U-Haul Int'l, Inc. v. Jartran, Inc., 793 F.2d 1034 (9th Cir. 1986) (the court affirmed a $40 million award of
damages);

212
damages might come as remedial publicizing and also monetary awards. In effort to accomplish
either sort of damages, the Skil164 prerequisite of definite consumer dishonesty must be
established. This prerequisite has been extended to incorporate a demonstrating that clients
depended on the false claims. Likely the most vital advancement in deciding damages was the
application of Section 35 of the Lanham Act to Section 43(a) of the Act by the United States
Court of Appeals for the Eighth Circuit.165 Under section 35, the applicant may recover
defendant's profits, actual damages, and the costs of the action

There are numerous sorts of damages that could be ordered by court:

I. Corrective Damages:
This is an award of money particularly computed in order to be spent on publicizing that will
redress any confusion created by the oppressive promotion."' Often, the respondent is accused of
the task of moving the corrective advertisements. The corrective advertisement must be intended
to empower certainty in consumers' psyches while eradicating the prior misleading message
which brought on the consumer confusion and influenced buying choices. Besides, corrective
advertising bolsters future honest promotions which might be inadequate to check the impacts of
the false promoting effort.166 Such corrective advertising was thriving in the case of Durbin
Brass Works, Inc. v. Schuler.167 Here the litigant's and offended party's lights were exceptionally
analogous, but, the one of the defendant, were made in Taiwan. This prompted confusion
regarding the origin of the plaintiff's lamps. The plaintiff sought damages for loss of goodwill
and additionally for corrective advertising to amend the confusion. Taking into account the
evidence of actual consumer confusion, the court granted $10,000 and divided the sum between
the expense to run promotions in trade publications for three months and the expense for
advertisements to be utilized as a part of an immediate mailing to customers. By application of
Section 35 to the case, the court granted these damages alongside costs, yet did not discover the

164
Skil Corp. v. Rockwell Int'l Corp., 375 F. Supp. 777 (N.D. Ill. 1974).
165
In determining that the remedies of § 35 should apply to § 43(a), the Eighth Circuit held that Congress did not
intend "to provide one set of remedies for infringement of registered marks and a different, potentially more
comprehensive, set of remedies for violations under § 43(a) that do not involve registered marks." Metrics &
Multistandard Components Corp. v. Metric's, Inc., 635 F.2d 710, 715 (8th Cir. 1980). The Ninth Circuit upheld the
application of § 35 in a comparative advertising case in U-Haul, 793 F.2d at 1041-42. The court reasoned that
damages in § 35 were meant for the type of conduct arising in a § 43(a) case.
166
Keller, “How Do You Spell Relief? Private Regulation of Advertising under Section 43(a) of the Lanham Act”,
75 Trademark Rep. 227, 228 (1985).
167
532 F. Supp. 41 (E.D. Mo. 1982).

213
case to be exceptional, that is, malicious, fraudulent or willful, so as to incorporate attorneys'
fees.

II. Monetary Awards:

The landmark pronouncement of $40 million award in the case of U-Haul International Inc.
v. Jartran Inc.,168 has transformed the approach in which comparative advertising proceedings
are seen. The advertisement at issue included three Jartran commercial. One was a price
comparison to U-Haul; another asserted that Jartran's trucks were superior to those available in
the market; and a third maintained that "nobody can rent a truck like Jartran can." In making
these advertisements, Jartran utilized misleading systems. Jartran formulate a U-Haul price to use
in the comparison ads by taking U-Haul's fundamental rental expense and including an
infrequently utilized distributive charge to it. The swelled U-Haul cost was then contrasted with
Jartran's own particular special cost without uncovering the way of the two costs. This
examination was misdirecting in that it spoke to the different costs to be ordinary practice. With
a specific end goal to acquire damages, U-Haul was required to effectively ascertain the tangible
deception/consumer reliance criteria set by the Skil sort of cases. U-Haul met these standards by
introducing three purchaser discernment overviews which demonstrated huge levels of genuine
buyer deception. The most troublesome variable, proof of a causative connection to lost sales,
was established through U-Haul's history. U-Haul had at no other time encountered a decrease in
income when another contender entered the business sector. This was key in wiping out worry
that other business sector variables brought on the decay. At the time of Jartran's promotions,
conversely, U-Haul's revenue for 1981 had plunged $49 million from its projections for that
year. The United States District Court for the District of Arizona formulated a strange
arrangement, by which, to ascertain damages. A proficient economist arrived at damages of $20
million by deciding minimum lost revenue and subtracting twenty-five percent for incremental
costs.
A litigant of comparative advertising abuses has numerous streets to pick in getting a
remedy. There are various public and private organizations that offer relief. The FTC, which in
fact promotes comparative advertising, can bring an action against the advertiser. The injured
company can file a grievance with the ITC, which may scrutinize the claim. Otherwise the

168
U-Haul Int'l, Inc. v. Jartran, Inc. 601 F. Supp. 1140

214
corporation can bring a personal suit unswervingly against the rival under Section 43(a) of the
Lanham Act.169 In spite of the fact that the section's initial history saw little improvement, courts
have significantly extended its range lately. This expanding started with the Lanham Act's first
application to promoting cases, with later improvements prompting the later developments in
remedies. Further development is normal as complainants of comparative advertising abuses
resort to the federal courts for broad ranges of redress. The fate of comparative advertising in the
United States is prone to be as it is presently.170

169
Paul E Pompeo, “To tell the truth: Comparative Advertising and Lanham Act Section 43(a)”, 36 Cath. U. L. Rev.
565 (1986-1987).
170
Jenna D. Beller, “The Law of Comparative Advertising in the United States and Around the World: A Practical
Guide for U.S. Lawyers and Their Clients”, Pg.923, The International Lawyer, Vol. 29, No. 4 (Winter 1995).

215
 CHAPTER-6

COMPARATIVE ANALYSIS OF
LAW ON COMPARATIVE
ADVERTISEMENT IN
INDIA, UK AND USA
 CHAPTER -6
COMPARATIVE ANALYSIS OF LAW ON COMPARATIVE ADVERTISEMENT IN
UK USA AND INDIA

The last half of the century has seen a noteworthy alteration in the promotion policy
received by the organizations and worth the general public appends with the advertisements.
Advertising world is no more limited to marking enormous big names to draw out the feelings
individuals append with it. Today, the business sector is fixated on building one brand's better
claim over the other. Organizations have begun embracing an extremely slice edge way to leave
their rivals far in the race to demonstrate their items as the best amongst the bunch. They put into
practice various types of publicizing methods, for example, undercover ad or big name
promotion to convey their items to get the consideration of its customers. Some of them likewise
make utilization of their opponent's trademarks/logos/trade dress and contrasting their products.
These ads are not just focused on the benefits of the goods when contrasted with others
additionally highlight the contrasts between the items. They might express that the advertised
item is "superior to" or "tantamount to" the competitor's1.

As an immediate result of the liberalization and globalization of the Indian economy, the
Indian consumer is currently confronted with an invasion of products and services. Foreign
brands are pouring in and their Indian equivalent; both new and old are willing to add a grip in
the marketplace leaving the consumer suffocating in an ocean of decision. Be that as it may,
while forcefully and vivaciously their products and services; firms have regularly dismissed
honesty and reasonableness of representation. Trade rivalries and comparative advertising have
been an old trend in the advertising scene and the customers have seen endless product wars on
their TV sets. The idea of comparative advertising developed in the nineties. The nineties period
saw the Pepsi-Coke war which was trailed by Complan-Horlicks tow of war and the most recent
in the wicker bin is the Rin-Tide war and the Colgate- Pepsodent tussle. Each of these
promotions trashed the contender's item to showcase the prevalence of their item in the business

1
Apoorva Shanrma, “Comparative Advertisement and Infringement of Trademarks: A perspective from
Consumers”, available at http://ssrn.com/abstract=1896367 (Last visited on Apr.12th 2013)

216
sector.2 The key to comparative advertising lies in delineation of the opponent goods in a careful
yet decisive design. India does not have set up devoted statue overseeing the zone of
Comparative Advertising.3 As of late, comparative advertising has turned into a multibillion
dollar business and has tested courts with new, complex legitimate issues identified with the
privileges of buyers, advertisers and their rivals.4

Until as of late a few mainland European nations totally had banned any type of
comparative advertising though, in the US, the utilization of comparative advertising has really
been supported by the Federal Trade Commission ever since the 1970’s. While in the past the
European and American approach towards this sort of publicizing was particularly diverse, today
rivalry powers concur in considering comparative advertising as a vital device in advancing
rivalry, such that organizations and retailers are encouraged to utilize comparative
advertisements. Moreover, within the European Union the UK has today a quite tranquil
approach to comparative advertising. The basis is that comparative advertising, if reasonable and
not deceiving, is guaranteed to build consumers’ information about alternative brands, products
and services and to absolutely influence rivalry among (domestic and cross-border) firms. An
analogous supposition is assumed in India where more stress is given to consumer wellbeing.5 In
spite of these common roots, a correlation between Indian, US and UK Law dissimilarity is
found in their association between trademark law and comparative advertising law.6

In this chapter, the author will manage the correlation in the methodology between the
United States (herein after US), United Kingdom (herein after UK) and the Indian jurisdiction
with regards to the centre issue of comparative advertising, particularly with respect to the extent
of obligation and the laws governing these issues thereto in the three jurisdictions. In addition

2
Sharad Vadehra, “Comparative Advertising: Increasing Incidents in India”, Kan and Krishme Attorneys at Law.
available at http://www.lawgratis.com/2016/03/03/comparative-advertising-comparative-study-on-u-s-and-india/
(Last visited on Apr.12th 2013)
3
Ankur Mishra, “Comparative Advertising: Comparative Study on US and India”, available at
http://www.lawyersclubindia.com/articles/Comparative-Advertising-Comparative-Study-on-U-S-and-India--
4186.asp#.VtQDG_l97IU (Last visited on Apr.12th 2013)
4
Stephen Nye, “In Defence of Truthful Comparative Advertising” 67 Trademark Rep. 353 (1977).
5
Swaraj Paul Barooah & Shivaji Bhattacharya, “Comparative Advertisement; Balancing Consumer interest vis-a-
vis IPR Infringement available at http://www.nalsar.ac.in/IJIPL (Last visited on Apr.12th 2013)
6
Cynthia W, Sharp, “The Intersection of Comparative Advertising and Trademark Laws in the United States and the
European Union”, Nordic Journal of Commercial Law, Issue 2012 (1).

217
this section will also investigate the comparability and the dissimilarity of the methodologies
with respect to the same issue of comparative advertising by various courts and the choices or the
standards set around the benches.

The authors will complete the aforementioned examination by contemplating the applied
structure of comparative advertising and a point by point contextual analysis of the different
milestone cases from every ward of the US, UK and India. This will be trailed by a brief study
on the methodology of the courts and the law set concerning the extent of obligation in both, the
earlier mentioned jurisdictions independently.

Meaning of Comparative Advertising

Comparative advertising in the US is characterized as ‘advertising that contrasts another
brands on impartially quantifiable characteristics or cost, and recognizes the option brand by
name, representation or other distinctive information.7Foundationally, US comparative
advertising law originates from Title 15 of the United States Code, essential government
enactment which covers Commerce and Trade. Title 15 gives the Federal Trade Commission
(FTC) supervision over trade custom.

Title 15 particularly denies 'unjustifiable techniques for rivalry in or influencing trade,

and unfair or deceptive acts or practices in or influencing business....’8 it likewise disallows false
advertising.9 The Lanham Act, which sets out government assurance and enlistment principles
for trademarks and is Title 15, precludes ‘false designations of origin, false descriptions, and
dilution.’ Prior to the FTC’s codification of US comparative advertising law, inquirers frequently
depended upon the Lanham Act for relief.

The present condition of US comparative advertising law has been moulded and
characterized by the FTC's Statement of Policy Regarding Comparative Advertising. This
strategy proclamation, in actuality since 1979, stresses that the FTC endures, as well as
effectively supports, honest, non-deceptive comparative advertising. The FTC’s expressed

7
Statement of Policy Regarding Comparative Advertising, 16 C.F.R. § 14.15(b) (2012).
8
15 U.S.C. § 45
9
15 U.S.C. §§ 52-54

218
perspective on the other hand, was that such promotion offers critical data to consumers and
encourages product enhancement and improvement. 10
According to FTC, comparative advertising is defined as
“an advertising that compare alternative brands on objectively measurable
attributes or price, and identifies the alternative brand by name, illustration, or
other distinctive information”.11

Comparative advertising in the European Union (EU) is defined as ‘any advertising

which explicitly or by implication identifies a competitor or goods or services offered by a
competitor.’12 Directive 2006/114/EC of the European Parliament and of the Council of 12
December 2006 Concerning Misleading and Comparative Advertising builds up this definition
and sets down uniform general standards to blend the states for utilization of comparative
advertising in the European Union member states. It is an order, and not a regulation;
accordingly it permits EU member states to pick the structure and proper strategy by which to
accomplish those targets in their own national laws.13 The UK is one of the Member States of the
EU, which viewed comparative advertising as lawful before the EU Directives regulating
misleading and comparative advertising were implemented.14

Consequently, the meaning of comparative advertising in English law can be interpreted

by case law and the European Court of Justice. According to various precedents, comparative
advertising is to be comprehended in a wide sense. All promoting which can expressly or by
suggestion distinguish a contender or item offered by a contender will constitute comparative
advertising. Advertisements which just think about the advertiser’s own product among
themselves or which don't recognize a contender or the products of a contender are outside its
scope. From the statutory perspective the expression ‘comparative advertising’ has not been
characterized any place in both the UK’s Trade Marks Act 1938 and Trade Marks Act 1994. Be

10
John E. Villafranco, ‘The Law of Comparative Advertising in the United States’, IP Litigator, Jan.-Feb. Pg.
1(2010).
11
As provided in Statement of Policy Regarding Comparative Advertising available at https://www.ftc.gov/public-
statements/1979/08/statement-policy-regarding-comparative-advertising(Last visited on Apr.12th 2013)
12
Directive 2006/114/EC, OJ L 376 at 22, art. 2(c).
13
Directive 2006/114/EC, OJ L 376 at 22, Para. 20.
14
Brunhildesteckler Steckler and Frank Bachmann, “Comparative Advertising in Germany with Regard to European
Community Law”, 10 E.I.P.R (1997), pp.578-586, at p.578.

219
that as it may, the same has been characterized statutorily in Section 2(1) of the UK's Business
Protection from Misleading Marketing Regulations 2008 as
‘advertising which in any way, either explicitly or by implication, identifies a competitor
or a product offered by a competitor’.15

The idea of comparative advertising is fairly novel to India, and less settled. It has not
been a piece of social customs for a considerable length of time as it has been for US neither it
has any committed enactment or heading like in UK. In spite of the fact that India has no specific
regulation regarding to comparative advertisement like USA, UK, yet to some degree,
Monopolies of Restrictive Trade Practices Act, 1984(Now stand repealed) and the Trade Marks
Act, 1999 discuss issues relating to lawful comparative advertisement. A competitor has a right
to promote its product making praise about its quality 16 yet he can't put down the product of his
rival. Additionally it has even been set around the different legal proclamations that a tradesman
is qualified to pronounce his products to be the best or superior to anything his rivals', however,
while proclaiming so he can't say that the goods of his rivals are awful to puff and advance his
goods.17None of the statutory provision or judicial pronouncement clearly defined comparative
advertising

Analysis
As showed above, in all India, U.S. and U.K, comparative advertising is legitimate when
it is honest and non-deceptive. There is no clear–cut definition of comparative advertising in
India. It is important to give a meaning to Comparative advertising in our lawful system as this
will assist traders to sketch a line between lawful comparative advertising and deceptive or
misleading comparative advertising. What's more, this would permit merchants to be more
adaptable in their promotional activities and would make a reasonable focused environment
between undertakings. The meaning of comparative advertising in English law could be utilized
as a beginning stage for the Indian law.

15
Ahmed Rawi, “Importing A Reference and comparative advertisement”, available at
http://documents.mx/documents/sample-assignment-comparative-trademark-law-uk.html
16
Gangwar, Pinkeshwar, “Comparative Advertisement and Infringement of Trademark”. available at SSRN:
http://ssrn.com/abstract=2281768 or http://dx.doi.org/10.2139/ssrn.2281768 (Last visited on June 19th 2013)
17
See of Reckitt & Colman of India Ltd. v. MP Ramachandran & Anr, 1999 PTC (19) 741, See of Reckitt & Colman
of India Ltd. v. MP Ramachandran & Anr, 1999 PTC (19) 741

220
Analysis of Law Regulating Comparative Advertising in USA, UK and India 18
This section will recapitulate the legal provisions with reference to the extent of
trademark protection in comparative advertising or when the trademark is used by a third party
without the approval of the trademark proprietor.

Legislative Background in the United States of America

In USA self regulatory code of conduct, federal and state law together deals with law
relating to comparative advertising. These are:
I. National Advertising Division
II. The Federal Trade Commission 1914
III. Section 43(a) of the Lanham Act 1946

One of the important forums to regulate advertising and to uphold consumer faith in
advertising is the National Advertising Division of the Better Business Bureau (the “NAD”). It
was basically a self-regulating body that gives a chance to the opponent and the consumer to
oppose the truthfulness and honesty of a commercial and resolve the related issues effectively.
The NAD would take up only those advertisements that are in the interest of public and is not
subject to any pendency in court. As the competitor file a case in NAD the opponent has to
withdraw the said commercial with immediate effect or give in writing that similar ads would not
be run. Only in such cases NAD will not proceed to take further action. In case the modification
is not done within the stipulated time NAD would re-examine the material submitted by the
parties and give the necessary judgment. If the parties are not satisfied they can file an appeal to
NARB.

One of the important supporters of comparative advertising in US is FTC. It’s a federal

agency that sees comparative advertising as a valuable resource of giving the product
information to the public as a result that reasonable buying decisions can be made. The FTC
considers that comparative advertising perpetually encourage competition, product development,
improvement, and can consequently help in lowering prices in the market place. Only such

18
The detailed approach of law is discussed in the earlier chapter.

221
commercials are impeded that comprise of unlawful or disparaging acts or practices that affect
the business. A complaint could be filed either by the advertiser, consumer, suo motto or by other
governmental agencies. Thereafter FTC has the sole authority to establish whether to investigate
or take any action or not.

Lastly the only statutory authority to deal with comparative advertising is Section 43(a),
Lanham Act, 1946. The main purpose of the Act is to protect the trademark owner from the
unlawful use of their trademark that is expected to cause consumer confusion or deception.19The
Act permits any person probable to be harmed by other person’s wrongful or deceptive
representations in an advertisement or inappropriate use of a trademark to take legal action in
federal court, seeking injunctive relief, damages and, in rare cases, attorneys’ fees. In the case of
Smith v. Chanel20, the court laid down important principle on comparative advertisement. The
Court of Appeals for the Ninth Circuit stated that comparative advertising should not be barred
under the Lanham Act provided that it is not deceptive and does not create a probability of
confusion among consumers.

Legislative Background in the United Kingdom

In UK law on comparative advertising is based on the European Union Directions. The key
forums to regulate comparative advertising are:
I. Trademark Act, 1994 (Section 10(6))
II. Comparative Advertising Directives
The use of trademarks in comparative advertisements is managed by two European
Directives in the United Kingdom. The primary Directive is Council Directive 84/450/EEC, as
modified by Directive 97/55/EC, relating to deceptive and comparative advertising
(‘Comparative Advertising Directive’). This was put into practice in UK by way of the Control
of Misleading Advertisements Regulations. The subsequent Directive is Council Directive
89/104/EEC which provides the laws to the member nations of the European Union in relation to
trademark law and the same is executed in UK as Trade Marks Act 1994.

19
15 U.S.C. § 1052(d) (1996)
20
Smith v. Chanel 402 F.2d 562, 159 U.S.P.Q. (BNA) 388 (9th Cir. 1968)

222
 Safeguard against comparative advertising is given only if the registered trademark is used
with reference to the authentic goods or services of the owner and such utilization is equivalent
with honest practice, to be precise is just and reasonable. In case this is not the situation, than all
such comparative commercial would be considered as infringement of registered trademark if it
is use which takes advantage of or is detrimental to the distinctive nature or reputation of the
registered trade mark.21

Therefore only such cases of comparative advertisement are considered as infringement of

trademark that does not adhere to the principle set in Comparative Advertising Directives. The
Misleading and Comparative Advertising Directive are put into effect by permitting the
interested parties to either take lawful action against the commercial or else to take the
promotion before an executive authority who can settle on a grievance or start trial procedure. In
the UK, the said Directives are implemented22 by local enforcement establishment, i.e., Trading
Standards and the Office of Fair Trading. The trademark holder might also put the case before
Advertising Standards Authority under the voluntary codes of conduct.

Legislative Background in India

In India, the legislation applicable to comparative advertising is:
I. the Trademarks Act 1999;
II. the applicable ASCI Guidelines.

The idea of comparative advertising takes form after the pleasant union of the MRTP Act
1984 and the Trademarks Act of 1999. The Trade Marks Act 1999 was a stimulating
modification in the area of comparative advertising whose provisions are inspired by the UK
Trade Marks Act, 1994.

Section 29 of the Trademark Act 1999 talks about the infringement of registered Trademark
wherein, section 29(8) particularly states that a registered Trademark is infringed by any
advertising of that Trademark if the promoter takes undue gain and is against the fair practice, if

21
See Section 10 (6) of the Trademark Act,1996
22
In UK the provisions on comparative advertising under Misleading and Comparative Advertising Directive are
being put into practise by the Business Protection from Misleading Marketing Regulations 2008.

223
this advertising will be dangerous to the distinctive nature of the Trademark or is against the
reputation of the Trademark.

Section 30(1) additionally supplements that nothing under section 29 will avert any
advertiser or corporation from using another’s Trademark provided it is utilized as a part of
legitimate and reasonable practice in commercial and business matters and ought not to influence
the distinctive character and repute of the Trademark.23 The Trade Marks Act, 1999 is an effort
to stabilize the contradictory interests of the rights of registered trade mark owners and a
convincing consumer interest in informative advertising.24

Obviously the Trademark Act, 1999 responded to the matters which the MRTP Act, 1969
was unable to answer with respect to the use of registered trademark. The Trade Marks Act (after
its amendment in 1999) was more dynamic by nature and obviously managed the issue of the
extent of obligation in comparative adverting during an era when the Indian economy has seen a
boom with the business sectors opening up as a part of liberalization of trade and business and
worldwide business interaction in the international economic situation with more brand
proprietor inflowing the Indian market. The MRTP Act was somewhat more rigorous in
methodology as it principally managed the issue of puffing or disparagement merely so long as
the goods puffed or disparaged were identifiable as setting a connection with the key product to
the public or the consumers at large.25

In addition to that, Section 30(2) (a) of the Trademarks Act, 1999 too permitted the
utilization of registered trademark in connection to the goods or services which are suggestive of
the class, quality, amount, expected reason, esteem, geological origin and so forth. The above
stated provisions are similar to Section 10(6) and Section 11(2) of the UK Trademarks Act,
1994.

23
Semila Fernandes, “Comparative Advertisement And It’s Relation To Trademark Violation – An Analysis Of The
Indian Statute”, Journal of Business Management & Social Sciences Research (JBM&SSR) Volume 2, No.6, June
2013.
24
Rashi Saraf, “Comparative Advertising Laws”, available at http://www.legalserviceindia.com/article/l182-
Comparative-Advertising-laws.html (Last visited on June 19th 2013).
25
Souvik Roy and Navajyoti Samanta, “Comparative analysis of Advertising Rules and Regulations in India and the
EU”, Vol 1 LSEU addnl. (2013).

224
 Aside from the aforementioned statutes with reference to the law relating to comparative
advertisement in India, the guidelines of "Advertising Standards Council of India (ASCI)"
determines that comparative advertisement is acceptable if the facet of the products evaluated are
clear, accurate and considerable, such correlation does not present false reward on advertiser,
there is no unjustifiable denigration of the contending item and is unrealistic to delude the
buyer.26

Analysis
It is seen that the law relating to comparative disparaging advertisements is quite a recent
expansion in India.27 At present, there is no fundamental legal agency or uniform enactment
regulating the advertising business.28A scrutiny into the law governing comparative advertising
in India uncovers that without a committed administrative component directing the same, a
generally crude approach has been pursued, with varied facet of the same being resolved with
reference to conflicting measures. Such a methodology is inadequate on a reasonable premise, as
the particular utilization of assorted laws deserts a trail of lacunae in any endeavour to decide the
question in an inclusive way.29 Conversely UK have particular route in the form of the European
Community (EC) Directive on Misleading Advertising relating to comparative advertising.
While in US the two noteworthy regulations that deal with comparative advertising are Federal
Trade Commission Act and the Trademark (Lanham) Act (the federal trademark statute
prohibiting false designations of origin and false or misleading descriptions of facts).

Indeed, even the ASCI has possessed the capacity to guarantee a sensible level of
adherence to its standards from members, a trouble emerges when grievance are documented
with respect to the exercises of non-members. Besides, the lack of an efficient enforcement
machinery to execute the said standards has resulted in them being restricted to a solely

26
Apoorva Shanrma, “Comparative Advertisement and Infringement of Trademarks: A perspective from
Consumers”, available at http://ssrn.com/abstract=1896367. (Last visited on Apr. 14th 2013)
27
Avinash, “Law of Comparative Advertisement: An Analysis”, Amity e-Journal for Law and humanities, Vol.1
Issue 1 (2014) available at http://amityjlh.blogspot.in/2014/03/law-of-comparative-advertisements.html. (Last
visited on Sept.12th 2016)
28
Sonal Goel, ”Comparative advertisement and the Law: The changing face of market”, International Journal of
Research And Analysis, Vol. 2, Issue.3 (2014)
29
Parth Gokhale and Shriyani Datta, “Comparative Advertising in India: Evolving a regulatory framework”, 4 NUJS
L. Rev. 131 (2011).

225
recommendatory role.30 A contrast may be drawn between this non-implementable model of self-
regulation and similar instrument that have been initiated in other jurisdiction.

The start of the self-administrative methodology in Britain was made in compatibility of

a searing prosecution of the advertising business by the Monoley Committee on Consumer
Protection, 1962, which suggested the controller for the business. Under the risk of external
regulation, the industry considered the foundation of a self-administrative instrument much
similar to the Press Council, which may fulfill the worries of policymakers and purchasers alike.
The Advertising Standards Authority (ASA) was recognized, with the purpose of ensuring that
advertisements were ‘lawful, civilized, truthful and honest. An essential contrast between the
ASA and the ASCI is in the previous' capacity in guaranteeing the enforceability of its orders.
The premise of the same is an understanding that the ASA has gone into with newspapers and
journals to not convey any ad that it esteems to have ruptured the Advertising Code set out by it.
Further, it might elude tireless instances of infringement to the Director General of Fair Trading,
who has a statutory obligation to acquire injunctive action against false advertising. With respect
to comparative advertising, the Code says that ‘Advertisers should not unfairly attack or
discredit other businesses or their products.’ An instrumental part in building up the above
system has been that of a European Union directive allowing comparative advertising in light of
a legitimate concern for rivalry and public awareness. The main condition forced in that will be
that the promotion ought not be deceptive and have to authentically contrast like with like.31

In this way, the need of hour is a more exhaustive plan of regulation to permit the
publicizing business to propose an expansive structure of comparative advertising wherein the
interest of contender and customer can be protected. This might be finished by method for
embracing the model as has advanced in Britain, with the standards as endorsed by the
advertising body being lawfully enforceable

Secondly in UK once the case is not determined in the courts within the country or in the
case of any uncertainty with respect to specific parts of the case, it is eluded to the court of EU as

30
Tata Press v. Mahanagar Telephone Nigam Ltd., (1995) 5 SCC 139.
31
Apoorva Shanrma, “Comparative Advertisement and Infringement of Trademarks: A perspective from
Consumers”, available at http://ssrn.com/abstract=1896367. (Last visited on Apr. 12th 2013)

226
the higher authoritative forum. This is a consequence of the endeavours inside the European
Union to synchronize the various facets of laws. As a consequence of that, in spite of the way
that the UK was having its own particular Trademark Act, 1994, the Directive 2006/114/EC and
the First Council Directive 89/104/EEC dealing with the European Union laws keep on assuming
a noteworthy part. Spilling out of that is the contention between the defenses set under the
Directive 2006/114/EC and the Council Directive 89/104/EEC. Be that as it may, there is no
such clash of laws in the Indian or the US jurisdiction as it is just represented by its own
particular national laws and statutes thereto.

Comparative Analysis of Judicial Approach to Comparative Advertising in USA, UK and

India32
There are different factors that are kept in mind by different courts in the US, UK and
India while choosing whether a specific case falls inside the scope of the irregularity of
comparative advertising or not.

It could be effectively said that the courts in US were more in support of comparative
advertising as opposite to the UK (Before implementation of European Union Guidelines) and
keep up a stronger standard in this respect. Indeed, even now in UK, comparative advertising is
more firmly guarded than in the United States, regardless of the United Kingdom's reputation for
being tolerant in this matter. However the courts in India, particularly now have demonstrated a
more strict mentality towards the twin segment of comparative advertising i.e.; puffery and
denigration.
.
To what extent comparative advertising is permitted
A standout amongst the most astonishing difference amid the approach to comparative
advertising in the United States, UK and India is the assertion that the contender is allowed to
say for all intents and purposes anything in regards to the brand which is the subject of
examination gave that it is honest and does not give rise to confusion as to origin under their
respective statutory legislation

32
Roy S. and Samanta N., “A Comparative Analysis of Advertising Rules and Regulations in India and the EU”,
Vol 1 LSEU addnl. (2013).

227
 In USA, comparative advertising is allowed if it is honest, truthful and non-deceptive.
Secondly the advertisement should not give rise to confusion as to origin of the trader or his
goods.

In UK, there is a sturdy opinion to guard the goodwill connected both with a reputable
trademark and the goods per se such that such commercial that tried to exploit the positive traits
of a brand primarily to benefit from the reputation of the trademark of a opponent (i.e., to "obtain
a free ride") are not permitted33. Hence as indicated by the UK enactment comparative
advertising permitted just on the off chance that it is not deceiving, contrasts like and like, does
not create confusion, disgrace or take unfair advantage of an opponent trademark or present
goods as impersonations of those bearing an ensured protected trade name.34

In India, position in connection to above has not been distinctly expressed. Indian
lawyers and courts should be called upon to decide rules on publicizing and comparative
advertising which is catching in India. The above guiding principles have to be intensely swotted
for managing section 29(8), Trademark Act, 1999 furthermore for use of common law to
advertising.

In Reckitt & Colman of India Ltd. v. M.P. Ramachandran and in Reckitt & Colman v. Kiwi
TTK35 the court after analyzing various cases on the topic abridged the law as follows:
I. A tradesman is entitled to declare his goods to be the best in the world, even though the
declaration is untrue.
II. He can also say that his goods are better than his competitor’s, even though such
statement is untrue.
III. For the purpose of saying that his goods are best in the world or his goods are better than
his competitors he can even compare the advantage of his goods over the goods of others.

33
Belinda Mills, “Comparative Advertising: Should it be allowed in UK”, 86 Trademark Rep. 174 (1996).
34
Francesca Barigozzi and Martin Peitz, “Comparative Advertising and Competition Policy” (August 2004).
International University in Germany Working Paper No. 19/2004. available at SSRN:
http://ssrn.com/abstract=699583 or http://dx.doi.org/10.2139/ssrn.699583. (Last visited on Apr.12th 2013)
35
63 (1996) DLT 29

228
 IV. He, however, cannot while saying that his goods are better than competitors, say that his
competitors’ goods are bad. If he says so, he really slanders the goods of his competitors.
In other words, he defames his competitors and their goods which are not permissible.
V. 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 the recovery of
damages , then the court is also competent to grant an order of injunction restraining
repetition of such defamation.

However said guidelines were again re-examined in the Dabur case. It was observed by the
court that’ a tradesman is entitled to declare his goods to be the best or better than his
competitors’ is no longer considered as ‘good law’. While boosting about his goods he cannot
say the goods of his competitors are bad so as to puff and promote his goods. Hyped up
advertisement is permitted but they should not cross the grey area of permissible assertion and if
they do so then there should be a rational basis for such declaration. It is not allowed to make
superlative claims without any preparation.36

Comparative advertisement which does not discredit or denigrate the trademark of the
contender does not sum to disparaging the latter’s goods. Despite the fact that the utilization of a
registered trademark in comparative advertising amount to infringement and the offended party
is qualified for interim injunction against the defendant, in any case, where the censured
commercial neither uses the trademark of offended party in the course of trade nor in any way
recommend the association of offended party's trade mark with respondent's merchandise,
offended party would not be qualified for injunction.37 The case of Grand Chemical Works v.
Nirmala Dyechem38 presents an analogous situation in which injunction was declined as the
defendant’s commercial did not hold any disparaging comments with regard to plaintiff’s
product. Also In Paras v. Ranbaxy,39 Paras assumed trade mark infringement. Quoting Advanta
and British Airways, Ranbaxy adduced a puffing argument and pleads commercial integrity.
Nevertheless, the Gujarat High Court held that the commercial was ‘disparaging and

36
Dabur India Limited v. Emami Limited (2004) 29 PTC 1 (Del)
37
Pepsi Co. Inc v. Hindustan Coca Cola Ltd. (2003) 27 PTC 305
38
2003(27)PTC 27 (Del)
39
(2008) AIR Gujarat 94.

229
denigrating’, MOOV, hence infringing Paras’ trade mark. In Procter & Gamble v. Unilever,40
the Calcutta High Court passed an interim injunction order restricting Unilever from asserting
that its Rin detergent has given more ‘whiteness’ than Tide Naturals. Unilever was in fact
signifying that commercial truthfulness could nullify accusation of denigration. Nevertheless, the
Court made the observation that opponent products could not be ‘proclaimed bad or rubbished’.

These two precedents have interwoven denigration and disparagement and set a standard of
high edge for business genuineness, viably conveying the Indian Trademark Act closer to the
Trademark Act (in its post-CAD avatar). Along these lines, in both Britain and India, the extent
of comparative advertisements has been incredibly decreased.41

At what point the utilization of comparative advertising would lead to Trademark

infringement.
Under U.S. law, utilization of a contender's trademark in precise and non-deceptive in such
case comparative advertising is lawful and does not amount to trademark infringement. Actually,
honest comparative advertisements, even those that show a contender's trademark, are thought to
be instructive for buyers and valuable to rivalry, gave that the contender's mark is precisely
illustrated.

While in UK as per Section 10(6) of the New Trade Mark Act of 1994, the utilization of
trademarks in comparative advertisements is permitted as long as it is in accordance with the
standards of "legit practices in modern or business matters." The courts' test for honesty is an
objective one. They ask: would a reasonable reader, accustomed to advertisings’ use of
hyperbole and even “knocking copy”, discover the commercial so one-sided or deluding to be
unscrupulous? The comparison must be between products expected to meet the same needs or
proposed for the same reason. The comparison must be material, significant, representative, and
provable.” Moreover, comparative advertising must not create confusion, or create the notion of
a connection between various trademarks. In the instances of alleged trademark infringement, the

40
C.S. No. 12 of 2010, Calcutta High Court, as available at https://indiankanoon.org/doc/114867153/(Last visited
on Apr.14th 2013)
41
Arpan Banerjee, “Comparative advertising and the tort of generic disparagement”, Journal of Intellectual
Property Law & Practice, Vol. 5, No. 11 (2010).

230
offended party, who is the trademark proprietor, needs to demonstrate that the utilization of the
trademark is not truthful.42

The general guideline on permitting comparative advertisement was clarified by J. Jacob in

Cable & Wireless PLC v. British Telecommunications PLC43 i.e.; “The chief goal of s.10(6) of
the 1994 Act is to permit comparative advertising:
I. As long as the use of a competitor's mark is honest, there is nothing wrong in telling the
public of the relative merits of competing goods or services and using registered
trademarks to identify them.
II. The onus is on the registered proprietor to show that the factors indicated in the proviso
to s10 (6) exist.
III. There will be no trade mark infringement unless the use of the registered mark is not in
accordance with honest practices.
IV. The test is objective: would a reasonable reader be likely to say, upon being given the full
facts, that the advertisement is not honest?
V. Statutory or industry agreed codes of conduct are not a helpful guide as to an
advertisement is honest for the purposes of s. 10(6). Honesty has to be gauged against
what is reasonably to be expected by the relevant public of advertisements for the goods
or services in issue.
VI. It should be borne in mind that the general public are used to the ways of advertisers and
expects hyperbole.
VII. The 1994 Act does not impose on the courts an obligation to try and enforce through the
back door of trade mark legislation a more puritanical standard than general public
would expect from advertising copy.
VIII. An advertisement which is significantly misleading is not honest for the purposes of
Section 10(6).
IX. The advertisement must be considered as a whole.
X. As a purpose of the 1994 Act is positively to permit comparative advertising, the court
should not hold words used in the advertisement to be seriously misleading for
interlocutory purposes unless on a fair reading of them in their context and against the
background of the advertisement as a whole they can really be said to justify that
description.
XI. A minute textual examination is not something upon which the reasonable reader of an
advertisement would embark.
I. The court should therefore not encourage a microscopic approach to the construction of
a comparative advertisement on a motion for interlocutory relief.”44

42
Apoorva Shanrma, “Comparative Advertisement and Infringement of Trademarks: A perspective from
Consumers”, available at http://ssrn.com/abstract=1896367.(Last visited on 14th Apr.2013)
43
[1998] FSR 383
44
See Cable & Wireless plc v. British Telecommunications PLC; CHD 1998 available at
http://swarb.co.uk/cable-wireless-plc-v-british-telecommunications-plc-chd-1998/(Last visited on Apr.13th 2013)

231
 Likewise O2 Holdings Ltd. and Others v. Hutchison 3G Ltd45 is one of the landmark cases,
which has given new direction to the concept of comparative advertisement. This case efficiently
commences a fresh defence to trade mark infringement under the Comparative Advertising
Directive.46 Here court set down stipulation for acceptable comparative advertising as under:
I. must not be misleading;
II. must compare goods or services meeting the same needs or intended for the same
purpose;
III. must objectively compare one or more material, relevant, verifiable and representative
features;
IV. must not create confusion, discredit or denigrate the competitor or its trademarks;
V. must not take unfair advantage of the reputation of the competitor's trade mark; and
VI. must not present goods or services as imitations or replicas of goods or services of the
competitor trade mark owner.47

The Judge held that a commercial should conform to the Directive keeping in mind the end
goal to evade trademark infringement. In this case the commercial of the Respondent had
completely fulfilled the abovementioned conditions.48

This perspective has been reaffirmed in British Airways v. Ryanair Limited case.49 The main
purpose of section 10(6) is to allow comparative advertising, as expressed unmistakably by
Laddie J in Barclays Bank v. RBS Advanta. Since the Trademark Act, 1994 came into force;
there have been various verdicts under section 10(6). These comprise Barclays v. RBS Advanta,
Vodafone v. Orange, British Telecommunications v. AT&T. It is fascinating to note that in these

45
[2006] EWHC 534 (Ch).
46
Navpreet Panjrath and Kanwardeep Singh, “Comparative Advertising: A Brief Overview”, available at
http://www.manupatrafast.in/pers/Personalized.aspx.(Last visited on Apr. 14th 2013)
47
“O2 Under Water: Comparative Advertising Defence to Trade Mark Infringement” available at
http://www.jenkins.eu/news-and-publications/mark-your-mark-autumn-2006/o2-under-water-comparative-
advertising-defence-to-/#nogo (Last visited on Apr. 14th 2013)
48
Id at 6
49
[2001] FSR 32 [25]. As discussed in Apoorva Shanrma, “Comparative Advertisement and Infringement of
Trademarks: A perspective from Consumers”, available at http://ssrn.com/abstract=1896367. (Last visited on Apr.
14th 2013)

232
cases the offended party was unsuccessful, with judgments being steadily in favour of
comparative advertising in general.50

In India, it can be supposed that the Trademark Act does not thwart comparative advertising,
in the event that it is as per the honest practices in industrial or commercial matters. On the other
hand, the Act does not permit a comparative advertising which takes unfair advantage of and is
contrary to honest practices in industrial or commercial matters. Section 30 of the Trademark Act
1999, on the other hand, manages certain sorts of utilization of the trade mark which in the
circumstances said in that don't constitute infringement. In this way, it can be said that section 30
is an exception to Section 29.

A trader is allowed to “puff” his goods, however in the event that he denigrates the products
of an opponent, there comes a point where this gets to be actionable. An action for slander or title
or injurious falsehood can be taken just if the offended party demonstrates that- the statements or
representations complained of were false or untrue; they were made malignantly, that is, without
admirable motivation or pardon, and the offended party has endured exceptional damages along
these lines.

Keeping in mind the end goal to get accomplishment in an action for trade libel the plaintiff
ought to demonstrate either real damage or likelihood of actual damage. An action won't lie for a
false proclamation disparaging a trader’s products where no special damage is proved.51 In Pepsi
Co Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr.52 it was held by the Hon’ble Delhi High
Court that- comparative advertising is allowed subject to the proviso that it does not denigrate
the product of the appellant. If a trader compares his goods with the goods of rival without in any
way advertising that the trade mark is used in relation to his goods, there is prima facie no
infringement.

50
Id as above
51
Pradip Kumar Das, “ Comparative Advertising And Trademark Infringement–The Indian Scenario”, available at
http://www.legalserviceindia.com/article/l180-Advertising-And-Trademark-Infringement.html (Last visited on Apr.
14th 2013)
52
(2003) 27 PTC 305

233
 Later in Karamchand Appliances Pvt. Ltd. v. Adhikary Brothers & Ors.53 , Hon’ble Delhi
High Court held that a producer or a tradesman is qualified to praise that his goods are the best in
the world, regardless of the possibility that such a case is genuinely incorrect, and while a claim
that the goods of a manufacturer or the tradesman are the best may not give a cause of action to
some other trader or manufacturer of similar goods , the minute the opponent producer or trader
disparages or defames the goods of another manufacturer or trader, the aggrieved trader would
be permitted to seek relief including redress by way of a prohibitory injunction.

The litigant is in reality qualified to boast that its product is the most recent in the market
and even the best, yet it can't depict either the innovation or the idea utilized by some other
producer or dealer in the manufacture or sale of his products as old or useless. Comparative
advertisement is admissible, inasmuch as such comparison does not disparage or denigrate the
trademark or the products of the opponent. Examination of various components of two items
demonstrating the favourable circumstances, which one item appreciate over the other is likewise
allowable gave such correlation holds back before discrediting or denigrating the other product.

Thus it is seen from different legal claims in India that there is no damage in contrasting
your goods and those of a contender, however, the correlation ought to be reasonable and ought
not bring disrepute to the competitor’s products or trademark, i.e. comparative advertising is
acceptable, yet comparative advertising prompting product disparagement is not reasonable. The
position is pretty much the same in roughly all the nations, which permit utilization of another's
trademark in comparative advertising.
.
While there is most likely that the law in India concerning comparative advertising is
very much settled, the inquiry that still stays unanswered is whether it has been settled in the
right way? By generously permitting puffing up in advertising techniques, insofar as a contender
is not antagonistically influenced, the courts have turned a blind eye towards the likewise
significant consumer and his interests. The way in which aggressive promoting is working out in
the Indian circle, the concentrate just appears to be coordinated towards the grabbing of eyeballs,
without giving any gainful data to the buyer to use. The target behind comparative advertising

53
Reported in 2005, Volume XXXI- Patents and Trademark Cases, Page 1

234
was not just being enlightening and an essential device to advance rivalry but for contrast to
provide a yardstick to help consumers centre on the product’s key qualities.54 In India, the courts
have been ignorant to these facets. Indeed, even on the stand of genuine comparative advertising,
the Indian position stays uncertain and temperamental55 as examined in the following
consideration.

Analysis of several important terms related to the concept of Comparative advertising

There is global consent on the fact that any type of comparative advertising, whether
disparaging or not, is allowed inasmuch as it depends on truths and is provable, it is imprecise
whether the position is the same in India. The reality of the matter is that most cases that have
preceded, the courts portray examples of disparagement in an explicit way, however, verdicts
like the one given in Dabur India Ltd. v. Emami Limited56 spread germ of qualm as to the Indian
position.57

The UK law on comparative advertisement seems to strike a harmony between the

interest of the buyers in being educated about the goods on one hand and the interest of the
proprietors of trademarks in ensuring their brands. Reference can likewise be made to Section
11(2) of the UK Trademark Act which permits reasonable and clear comparisons of item with
reference to their quality, amount, and expected motivation behind use, kind worth,
topographical inception, the time of production and other features in the course of honest
practices of industrial and commercial matters. The provision with respect to comparative
advertising is in fact a blend of Article 4 and 5 of the directive 97/55/EC which the UK has put
into practice for the control of misleading advertisement. The landmark case on honest practices
is Barclays v. Advanta, where J. Laddie observed that if a trade mark’s use ‘is considered honest
by members of a reasonable audience’, there is no infringement. The public is accustomed to
hyperbole and the Trademark Act does not impose ‘a more puritanical standard’. Henceforth,

54
Keshav S. Dhadak and Vaishali Mittal,” India: How to Gain From Comparative Advertising” available at
http://www.managingip.com/Article.aspx?ArticleID=1321496. (Last visited on Apr. 14th 2013)
55
Swaraj Paul Barooah & Shivaji Bhattacharya, “Comparative Advertisement; Balancing Consumer interest vis-a-
vis IPR Infringement” available at http://www.nalsar.ac.in/IJIPL .Pg 127. (Last visited on Apr. 14th 2013)
56
2004 (29) P.T.C. 1.
57
Id as above

235
advertising which ‘pokes fun’ at competitors or merely puffs is acceptable.58 J. Laddie declined
to restrain Advanta from using ‘BARCLAYCARD’ in advertisements. Barclays had contended
that Advanta’s claim of offering ‘a better credit card all round’ was not honest, as they had not
mentioned benefits offered by Barclays. J. Laddie, nonetheless, believed that the commercials
would be viewed as genuine by a reasonable reader.59

Likewise in the two significant landmark cases of O260 and Loreal61 , discussed in details
earlier, the Court of Justice of European Union based their decision on the premise of ‘likelihood
of confusion’ and unfair advantage’ respectively. Back in India, more stress is given on the
confusion formed in the psyche of people in general instead of on the idea of unfair advantage
relatively. Indian courts are stringent towards slandering of the ones goods by the other. In this
way, the slander brought on to an item is managed extremely in the Indian framework and courts
key point is to discover whether such advertisement has stigmatized a specific item or not. In
case it is not denigrated, then the Indian courts don't think that it’s noteworthy. However of late,
there is a shift in paradigm in the method of the Indian courts as it has been now going ahead to
view the idea of comparative advertising from a consumer training perspective and needs the
utilization of such advertising ought to be done for public gain only just keeping in mind the end
goal to empower them make the correct decision and the said advertisements should be without
false representations.

In the O2 case, to keep the utilization of a trademark by a trademark proprietor under the
Council Directive 89/104/EEC, the court figured a four stage test of trademark use, which is as
follows:
I. the use should be in the course of trade;
II. without its consent;
III. in respect of identical or similar goods or services; and
IV. leading to a likelihood of confusion among the public.

58
(1996) RPC 307, 316.
59
Souvik Roy and Navajyoti Samanta, “Comparative analysis of Advertising Rules and Regulations in India and the
EU”, Vol 1 LSEU addnl. (2013)
60
O2 Holdings Ltd /O2 (UK) Ltd V. Hutchison 3G UK Ltd ([2006] EWCA Civ 1656)
61
Lóreal v Bellure NV C-487/07, June 18, 2009

236
 At the same time the Indian courts laid down a three step test, to be precise that the
trademark proprietor has to illustrate that the use:
I. takes unfair advantage and is contrary to the honest practices of industrial and
commercial matters62;
II. causes detriment to the distinctive character of the mark63;
III. the advertisement is against the trademark’s reputation64.

Although, while deciding the cases of unfair advantage despite the fact that it shapes a
necessary part of the statute, the courts don't underline on the issue expressly all that much in
India which is a discrete difference to cases chosen by the Court of Justice of European Union
like the Intel case65 and the Loreal Case66.

One may say that the standpoint or the mentality of the Indian courts is to really discover the
region of slander or defamation to the goodwill of the goods instead of alternate facet. Truly, the
controlling standards set by the Indian courts before can be found in a way whereby, such
standards had been detailed with an end goal to bring into being the moderate method of
accepting comparative advertising by conquering the rigorous approach of the extremely
scientific and occasionally intricate trade mark protection regulations existing in India.67 While,
the Court of Justice of European Union has a more extensive viewpoint namely ‘unfair
advantage’ and ‘likelihood of confusion’. The later, however, assumes a vital part in the Indian
situation also while the previous too has indispensable impact yet on a more understood level.
Taking queue from the UK Trademarks Act’1994, Directive 2006/114/EC (relating to

62
Section 30 (1) (a) of The Trademark Act, 1999.
63
Section 30 (1) (b) The Trademark Act, 1999
64
Section 30 (1) (c) The Trademark Act, 1999
65
Intel Corp Inc v. CPM United Kingdom Ltd (C-252/07), here the court observed that “Any Member State may
furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid
where, and to the extent that… the trade mark is identical with, or similar to, an earlier national trade mark within
the meaning of paragraph 2 and is to, or has been, registered for goods or services which are not similar to those
for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State
concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.”
66
Lóreal v Bellure NV C-487/07, June 18, 2009
67
Manisha Singh Nair’, ‘Comparative Advertising in the Indian legal realm’ available at
http://login.westlaw.co.uk/maf/wluk/app/document?&src=rl&srguid=ia744dc21000001231809615d263a71d0&docg
uid=I9956A930E38211DDBDD8B3C5386D94A4&hitguid=I9956A930E38211DDBDD8B3C5386D94A4&spos=2
&epos=2&td=5&crumb-action=append&context=13. (Last visited on Apr. 14th 2013)

237
Comparative Advertising), First Council Directive 89/104/EEC (relating to Trade Marks),
Monopolist and Restrictive Trade Practices Act’1989, Indian Trademark Act’1999, Consumer
Protection Act’1986 and so forth, the accompanying standards can be built up in view of which
one can really reflect upon the working of the courts in their consequent jurisdictions. These
considerations are as follows:
I. Deceptive Commercials;
II. Comparison of products anticipated for the similar purpose;
III. Objective Correlation of Goods and Services;
IV. Disparagement of plaintiff’s mark and hurting a product’s goodwill by slander;
V. Unfair Advantage;
VI. Conception of confusion among Traders;
VII. Consumer Awareness and Understanding;
VIII. Wrongful Intention Causing Detriment to the Distinctive Character of the Mark;
IX. Issue of Imperativeness.
In this manner while settling on instances of comparative advertising, the courts in UK and India
contemplate one parameter or the other or various factors together. We will now examine each of
these issues in brief.

Deceptive Commercials
Both in India and the UK, deceptive advertisement has been managed appropriately. As we have
as of now examined in the different cases discussed previously, there is no hesitation about the
fact that ambiguous advertisement is certainly equivalent to disparagement without a bit of
reservation. In India particularly, such promotions are managed under the Consumer Protection
Act, 1986 to the degree that such an advertisement go ahead to delude the layman or the general
buyers who does not have the little information about the products. In the UK the thought of
deceiving is all that much comparative too. The laws detailed before have been corrected to
incorporate deluding commercials here. In India, this sort of ad fall inside to the extent of unfair
trade practices which has been later included in the statutes simply like it had happened in the
UK.

238
Comparison of products anticipated for the similar purpose
Here once more, both the United Kingdom and the Indian jurisdiction, lay accentuation on the
truth whether, the products can be distinguished as expected for the same reason. From the
different case laws and regulations we have concentrated before in this research it is more than
apparent that distinctive accentuation particularly in the UK is laid upon the way that
comparative advertisement can be allowed if the goods and services contrasted, fulfil the
indistinguishable sort of requirements or it has been proposed for the same purposes. At the end
of the day, comparative advertising in the UK won't be allowed if the aforementioned standard
among numerous is not satisfied as visualized under Art. 4(b) of the Directive 2006/114/EC. The
Indian law in such manner is not too express as the way it is in the European Union which can be
created on a somewhat more point by point note.

While talking about this issue, another matter that comes into psyche is classification of the
goods and services of the advertisement with respect to which such goods are contrasted with.
While shaping a sentiment regarding whether an item has been analyzed or not in respect of
value, amount, standard or whatever else, it is felt by the author that the court might pay attention
to the way that whether or not, the connection or identification of the similar goods or products
has been recognized. As soon as that occurs, it can be supposed that the product has been
contrasted with others. Along these lines for this situation, both English and Indian courts in their
different judgments in the later past have mulled over this matter while rendering a judgment,
this unquestionably a major positive change in the methodologies of the courts in both the
purviews.

Objective Correlation of Goods and Services

This is a critical point to manage. The practice of objective comparison too has been supported
by the laws of both the locales and is particularly remarkable in the European Union68. When we
discuss of objective correlation, we in fact converse of factual comparison. So provided that the
comparisons manage just with facts and does not take the help of any unfair or deceptive
statements, one must say that such comparisons are in fact a gain to the humanity and people or

68
Cornish & Llewelyn, “Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights” p.669,Sixth
Edition Sweet & Maxwell, London (2007).

239
consumers comprising such society would be certainly benefited by it. Since we will consider
with the consumer education part later, here we will adhere to the necessity of authentic
correlation only.

This procedure has been maintained and put into pragmatic application, both by statutory
codes and judges in both the jurisdictions. In India, cases identifying with the correlation of price
list have been less; rather contrast on the premise of unnecessary comments and proclamations
have been more. Cases in the European Union like the O2 case, L'Oreal case, British Airlines
case for instance bargains particularly with the component of pricing contrasts between the two
items or services. At the point when such sorts of correlations are objective, then the genuine
ones, the comparative advertisers could be given a scope for the great and advantage of the
consumers. However, it has been observed that malafide, unlawful and unnecessary explanation
of cases for the sake of comparative advertising has been seriously managed particularly in the
last couple of years in the Indian jurisdiction and as well to some degree in the English courts
too.

Disparagement of plaintiff’s mark and hurting a product’s goodwill by slander

Here again, the way that the Indian laws and the choices in the past are exceedingly impacted by
the laws and judgments in the English courts, can be seen afresh. Comparative advertisement is
allowed just to the degree that such correlation does not at all criticize, defame or malign the
goods of the other party. This is a well settled law in India that demeaning the product of a
competitor in the eyes of the consumers to acquire prevalence in deals is held to be illicit in both
the jurisdictions. Criticizing somebody's item through the medium of advertising renders the
commercial void according to law. So the methodology of the courts has dependably been to
avoid bringing about of such slander or denigration of other's item on the wide range of
commercials. Goodwill in its exceptionally quintessence implies great reputation. In accounting
terms is known as an ‘intangible asset’ of a company so when the reputation of a brand is
damaged by a comparative advertiser in the eyes of the public, such a commercial might be
viewed rather than the legitimate domain of law. The English or rather the European law is
certain in such manner. It unquestionably abandons by saying that both the jurisdictions in the
past while choosing whether a specific ad has demonstrated a brand in an awful light to the

240
shoppers, some way or the other or someplace down the line expecting regardless of the
possibility that it is not planned likewise, have deep look into the goodwill of the product and
whether its repute has endured or not. Hence it is the same case as that of the disparagement of
the product of the trademark owner. This is along with these lines once again a typical
methodology predominant in the both jurisdictions.

Unfair Advantage
Unfair advantage is a concern which is considered before, has been sternly dealt with by the
Court of Justice of European Union in the L’Oreal case that certainly as a matter of fact brought
a sigh of relief to the trademark owners. Regardless of the way that the issue has been managed
in a powerful and level headed way by the Court of Equity of European Union, even in India the
statutory law vis-à-vis Trademarks Act, 1999 manages the subject of unfair advantage as a
restraint to the extent of rightful comparative advertising under Section 30(1) (b) and Section
29(8) (a) on a corollary note.

In this manner, even in the Indian cases, it was perceived how one brand derived unfair
advantage at the expense of some slandering statement made to the other brand with the help of
comparisons. Consequently, in an economy there ought not to be left any degree by law in
permitting such unfair advantage to be taken by one product to the detriment of the other. In
India, one feels that instances of comparative advertisements, should be managed with a great
deal and in a more professed way than expected such as the one in the Loreal case. There is most
likely about the way this issue has dependably been touched upon by the Indian courts whether
verifiably or expressly. Yet one feels that the need and the significance of tending to such issue
on an all the more express note is required in India and take a leaf out from the landmark court of
justice of European Union judgment.

In the Loreal case we have discovered that how Bellure NV utilized the imitation of the
Loreal aromas keeping in mind the end goal to give its item a support in the business sector by
the “wink of an eye” similarity attribute. This issue has been codified which is present in the
Comparative Advertising Directive. Almost akin provision was laid down in the Indian laws
within the scope of the MRTP Act, 1969 and the Trade Marks Act, 1999. We have seen for

241
instance the Reckitt and Coleman India Ltd V. Kiwi T.T.K69, where the design of the bottle used
by Kiwi T.T.K in the commercial was the one which the other party claimed was registered
under the law. Such issues require more elucidation to draw a reasonable line of division
between the parts of replication of design whether enlisted or not and the scope of comparative
advertisement.

Conception of confusion among Traders

This is the subject which also had been at the same time and legitimately drawn closer by the
judiciaries of the both jurisdictions. Obviously that the making of perplexity in the psyches of the
general population with regards to the utilization of consumer goods and services, has
indispensable influence in the matter of whether such commercial can be called comparative or
not on a wrongful note. The courts have always looked into this issue with a ton of significance
and legitimately so feel the creators. In the event that a specific ad makes perplexity in the brains
of the general population or customers fundamentally, then such an ad affects a movement in the
purchaser taste and inclination. In India and in addition the UK, the judges while choosing cases
on comparative advertisement have dealt and managed this perspective with more prominent
noteworthiness and accentuation as it assumes a vital part. Therefore, the methodologies of the
courts in the two purviews have been fundamentally the same in this setting for the benefit of
customers, merchants and the laws identifying with it thereto.

Consumer Awareness and Understanding

This perspective has been given particular strain in the Indian courts in one of the decisions of
the Madras High Court in the case of Colgate Palmolive v. Anchor70 as already briefed about
before in this research. Consumer education has been put into front position by the bench to the
degree of eliminating the occurrence of comparative advertising or relatively to be reasonable,
tightening the scope of such advertisement in the Indian situation to almost a miniscule level. As
the Consumer Protection Act, 1986 accommodates the safeguard of the consumers; it has
encouraged courts in India to take such a severe measure on the record of profiting the
purchasers from such comparative advertisements. This is one subject, which the English courts

69
1996 PTC 193 T 399
70
(2008) 7 MLJ 1119 (Mad)

242
are falling behind. Courts in the UK have been more tolerant to comparative advertisers and
indicated huge measure of confidence and certainty on the method of reasoning of the
purchasers, the UK, being a developed country; such certainty could be worth appearing too. In
any case, once more, much the same as two sides of the same coin, the author feels that it’s fling
between consumer benefit and the occurrence of the fact of comparative advertisement. On the
off chance that specific measure of opportunity is not given to the advertisers then the enjoyment
of ad wars will reduce completely. Then again, consumer education makes the advertisement
more honest, fair goal and authentic. This is a situation which has been managed contrastingly all
the more as of late in a way by the two jurisdictions in their own particular mode and style.

Wrongful Intention Causing Detriment to the Distinctive Character Of The Mark

Since every issue examined above are in a way linked to each other, malafide intent on the part
of the comparative advertiser is a problem that is codified in the law of both the jurisdictions.
This issue of wrongful intent runs analogous with that of misleading advertisement in a way.
Where the goal of the comparative advertiser is exclusively to put forth a false expression
causing detriment to the distinctive character of the mark, it tends to go ahead to the wrong side
of the law without a pinch of uncertainty. Such acts have been given protection under the
statutory laws of both the nations.

Issue of Imperativeness
At last, the issue of indispensability taken up by the English Courts concerning the O2 case
which the researcher feel is a fascinating issue to bargain, as for such comparative advertisement.
One ought to consider the way whether examination of a contender's products requires the
utilization of the mark of the trademark owner entirely for that reason or the same ad could have
been done without the use of such a mark. The recommendation that ascents here is whether such
a promotion without the utilization of offended party's mark would have been all that compelling
or not. This is an issue which has never been managed by the Indian courts while choosing such
instances of comparative advertisement. This setting is something which the researcher feels that
even the Indian Courts can investigate while choosing cases and enquires into the need, gravity
and imperativeness of the use of such marks of the product or trademark owner to advance one's
own particular brand.

243
Analysis of Concept of Disparagement in USA, UK and India
Overview
Section 2 of the Lanham Act (15 U.S.C. 1052) gives that, no trademark ought to be
denied qua registration, except it comprises of or involves unethical, misleading or shameful
matter; or matter which defames or erroneously proposes an association with persons,
organizations, convictions, or national images, or conveys them to scorn or offensiveness. A
huge amount of cases in U.S. on disparagement concern ‘scandalous matter’ vis-à-vis Section
2(a) of the Lanham Act. The U.S. Federal Trade Commission Act by virtue of Section 52
precludes the dispersal of false promotions.

In U.K. for long the standard has been that of ‘honest practices’ in industrial and
commercial matters; the alike is even talked about in Section 10(6) of the U.K. Trademarks Act,
1994. In India, criterion has been that of ‘unfair trade practice’, which has been mentioned in
Section 36A of the Monopolies & Restrictive Trade Practices Act, 1969 and Section 2(1) (r) of
the Consumer Protection Act, 1986.71

For almost a century, there was not really any disparaging suit in the courts of India;
nonetheless, because of liberalization and vicious rivalry, today, there are more than 15 reported
judgements of a few high courts in this angle. However, everything began in India in the late
1990's with a series of disparaging advertisements being broadcasted by Pepsi and Coca Cola
against each other took after by the Horlicks - Complan spree of deriding each other. Another
epic in such disparaging ads was between Jet Airways and Kingfisher Airlines where the
previous asserted in its storing 'We changed for good' while the last guaranteed in its
accumulating right alongside the formers saying ‘we made them change’. With this, began a
progression of suits by several parties affected, which have been allowed by various High Courts
and the Supreme Court set out the standards relating to commercial and comparative
advertising.72

71
Shivam Goel, “Trademark Disparagement & Advertising Ethos-Pathos: India”, available at:
http://ssrn.com/abstract=2589209 (Last visited on Apr.14th 2013)
72
Souvik Roy and Navajyoti Samanta, “Comparative analysis of Advertising Rules and Regulations in India and the
EU”, Vol 1 LSEU addnl.( 2013) .

244
 Indeed, in instances of ‘trademark disparagement’, with the end goal of mediation of
debate, the Courts in India have investigated the accompanying criteria: (a) Intent of the
Commercial; (b) Meaning of the Commercial; (c) Storyline of the Commercial; and (d)
‘Ordinary Meaning’ the Advertisement renders to a ‘Man of Average Intelligence’73. In British
India, the ratios of Ratcliffe, White, and Hubbuck were trailed by the Calcutta High Court in the
case of, Imperial Tobacco Company v. Albert Bonnan74, here the Division Bench held as
follows:
“To succeed in an action of slander of goods, the plaintiff has to allege and prove that the
statement complained of was made concerning his goods and that it must be with the
direct object of injuring his business”.

Motivation for long has been taken by the Indian Courts from the Courts of U.K. the case
of, Mc Donald’s Hamburgers Ltd. v. Burger king (U.K.) Ltd75., followed in GlaxoSmithKline
Consumer Healthcare Ltd. v. Heinz India76, it was held that,
“advertisements are not to be read as if they are testamentary provisions of a ‘Will’ or a
clause in some agreement with every word being carefully considered and words as
whole being compared; it was further held that, courts are to take into account, the fact
that public expects a certain amount of hyperbole in advertising and the test to be applied
is whether a reasonable man would take the claim being made as one made seriously and
will have to take it with a large pinch of salt.77

Law with respect to comparative advertising and trademark disparagement in India is

mending on an optimistic landscape. Prior methodology embraced accentuated upon the
defamation aspect. The present methodology accentuates upon the part of purchaser training.
Much consolation for the same could be taken from the leading case of Dabur v Emami78. In the
judgement the court decided that regardless of the fact that there is no immediate reference to the
result of a contender and just a reference is made to the whole class in a generic sense, an

73
129 (2006) DLT 265
74
94 Ind Cas 444. as given under Souvik Roy and Navajyoti Samanta, “Comparative analysis of Advertising Rules
and Regulations in India and the EU”, Vol 1 LSEU addnl.( 2013).
75
1986) FSR 45.
76
I.A. Nos.15233/08 in CS(OS) 2577/08, 15647/08 in CS (OS) 2646/2008, ___(un-numbered) (O-39, R-1&2 CPC)
in CS(OS) 547/2010 available at http://lobis.nic.in/ddir/dhc/SRB/judgement/22-11-
2010/SRB12112010S25772008.pdf (last visited on Aug 21st 2013)
77
Id as above
78
(2004) 29 PTC 1 (Del)

245
instance of disparagement in such situation is still probable. This case got on table another class
of disparagement that is in fact a judge- made i.e.; ‘Generic Disparagement’. Indian judges who
have added this tort have declined to pursue English precedents, following Bhagwati CJ’s
approach in the Oleum Gas Leak case.79

There are few English precedents on the subject of generic disparagement, White v
Mellin likely being the best known. In White case, the respondent put a label on the offended
party's opponent item. The label expressed that the litigant's baby food was ‘far more nutritious
and healthful than any other preparation yet offered’. The plaintiff argued that the label was
‘manifestly disparaging’ and ‘calculated to injure the plaintiff’s trade. However, the House of
Lords unanimously ruled in favour of the defendants. Herschell LJ felt that, first; the label was
an ‘anonymous puff’ of a ‘very common description’ which could not be said to have disparaged
the plaintiff’s goods. Secondly, even if it was assumed that there was disparagement, there was
‘an entire absence of any evidence that the statement complained of either had injured or was
calculated to injure the plaintiff ’. Thus, Herschell LJ did not say that a generic disparagement
case could never succeed, yet indicated the improbability of demonstrating the key element of
malice in such cases. Hence considering the colossal hesitance of English courts to deduce
malice in specific disparagement cases, a generic disparagement case would seem to have
insignificant possibility of achievement in England

In India the origin of tort of generic disparagement can be followed back to

Ramachandran case. Ghosh J, therefore, reasoned that if a dealer depicts the greater part of his or
her rivals as ‘bad’, then ‘anyone fitting the description of everyone is affected’.80 A few years
after the fact Ghosh J's perceptions were depended upon by Delhi high Court.81 This
pronouncement unlocks the floodgates for generic disparagement claims. A couple of months
after the decision, Dabur sued an opponent for boasting that its toothpowder was 16 times less
abrasive than others. The Delhi High Court granted an interim injunction in Dabur’s favour. The

79
MC Mehta v Union of India (1987) 1 SCR 819. Absolute negligence is a more stringent form of the English tort of
strict liability negligence, allowing no exceptions to liability.
80
Souvik Roy and Navajyoti Samanta, “Comparative analysis of Advertising Rules and Regulations in India and the
EU”, Vol 1 LSEU addnl.( 2013).
81
Dabur India Limited v. Emami Limited (2004) 29 PTC 1 (Del)

246
Court confirmed that generic disparagement was indeed actionable.82 The Court ruled that while
puffing was acceptable, ‘running down’ a rival product, even in generic terms, was not. The
respondents referred to English precedents and contended that generic disparagement is not an
offence. Nevertheless, the Court commented.
‘The practice of undue obeisance to English jurisprudence . . . should . . . be
discouraged. . . . When there is a judgment [in India] . . . directly on the point of generic
disparagement, I see no reason why one should travel westwards . . . ’83

In Karamchand v. Adhikari,84 the Delhi High Court once again held that generic
disparagement was actionable. The Court observed:
“A disparagement even if generic would remain a disparagement and can be restrained
at the instance of a party, who manufactures or trades in that class of goods. . . . The
defendant is indeed entitled to boast that its product is . . . the best but it cannot describe
either the technology or the concept used by any other manufacturer or trader . . . as
obsolete or worthless.”

In these cases the courts decided that even only a passing reference seemed well and
good might prompt belittling, regardless of the possibility that there had been no immediate
reference to any result of the contender. All courts are conceded to this rule, which is built up
law in India.85

Interestingly with the methodology followed in the above judgments, some Indian judges
have demonstrated a hesitance to entertain generic disparagement claims. In Dabur v. Wipro,
Lokur J of the Delhi High Court asked Dabur, which alleged disparagement, ‘not to be hyper-
sensitive’. In Dabur v. Colortek,86 Lokur J correspondingly declined to boycott a business where
a mosquito-repulsing cream had been contrasted and a spurious item. The judge observed that
market forces and consumer choice ought to be final adjudicators in such matters, and once again
asked Dabur not to be ‘hypersensitive’. In both these cases, Lokur J did not really deny that
generic disparagement was not actionable. In any case, that proposal was apparently made in

82
Dabur v Colgate-Palmolive (2005) AIR Delhi 102
83
Id as above.
84
Karamchand v Adhikari (2005) 31 PTC.
85
Anuradha Salhotra, “Beware India's comparative advertising rules”, No. 194 Managing Intell. Prop. 26 November
2009.
86
Dabur India Ltd vs Colortek Meghlaya Ltd, 2010 (42) PTC 88 (Del.).

247
Hindustan Lever v. Reckitt Benckiser. In light of the various cases that have maintained generic
disparagement claims, Sikri J’s perception gives off an impression of being an outlier.87

Subsequently core has just been on the prohibition of disparagement. The disposition of
the courts has been such that the advancement of hot air is permitted just inasmuch as a
contender is not slandered. While concentrating on unfair trade practices and the protection of
intellectual property rights, the courts appear to have overlooked the consumer’s interest. This
can be found in a recent Madras High Court case, wherein Justice Banumathi opined that
comparative advertisement at currently includes a balancing of interests of advertisers in
promoting their products on one hand and the interest of those who may be harmed by
contender's assaults on their items on the other.88 Maybe the position of the courts has been
casual with the decision in the case of Dabur India Ltd. v. Wipro Ltd., Bangalore. In this case,
the court supplemented a new aspect to the current test for disparagement by setting out that the
degree of disparagement must be tantamount to, or almost tantamount to defamation. The
judgment further went on to say that a manufacturer of a product ought not to be hyper-sensitive
in such matters. It is necessary to remember that market forces are far stronger than the best
advertisements. If a product is good and can stand up to be counted, adverse advertising may
temporarily damage its market acceptability, but certainly not in the long run. In the case of,
Bubbuck v. Wilkinson89, it was observed that, mere statement that the defendant’s goods are
better than that of the plaintiff’s would not be actionable. Further, in the case of, Allen v. Flood90,
it was held that, mere puffing would not be actionable because it would ‘open a very wide door
to litigation and might certainly expose every man who said his goods were better than those of
others to the risk of action’. In White v. Mellin91, it was held that, ‘puffing’ is allowed, if not
then without a doubt the Courts of Law would be transformed into apparatus for advertising rival
productions by obtaining judicial determination which of the two was the better. Advertiser are
not allowed to go excessive, to such an extent, that the result of the contender is put to
irreparable loss or damage; and ‘balance of convenience’ lies more in favour of the party that
87
Souvik Roy and Navajyoti Samanta, “Comparative analysis of Advertising Rules and Regulations in India and the
EU”, Vol 1 LSEU addnl. (2013)
88
Swaraj Paul Barooah & Shivaji Bhattacharya, “Comparative Advertisement; Balancing Consumer interest vis-a-
vis IPR Infringement available at http://www.nalsar.ac.in/IJIPL (Last visited on Aug. 21st 2014)
89
1899 (1) OB 86
90
1898 AC 1
91
1895 AC 154

248
will be put to great hardship, if temporary injunction is not granted. In the case of, Dabur India
Ltd. v. Colortek Meghalaya Pvt. Ltd.92, it was held that, in view of the law laid down by the
Supreme Court of India in the case of Tata Press Ltd. v. MTNL93, it can be held that false,
misleading, unfair or deceptive advertising is not protected commercial speech and the earlier
judgments holding that a tradesman is entitled to declare his goods to be the best in the world,
even though the declaration is untrue and to say that his goods are better than his competitors’,
even though such statement is untrue are no longer good law. It was further held that ‘hyped-up’
advertising may be permissible, but it cannot transgress the grey areas of permissible assertion,
and if does as such, the promoter must have some sensible factual premise for the declaration
made; it is unrealistic for anyone to make a 'without any preparation' or "unverified" case that his
products are the best on the planet or that his merchandise are superior to that of an adversary. In
the case of, Hindustan Unilever Limited v. Cavincare Private Limited94, it was held that every
disparagement is not actionable and for disparagement to be actionable it should be brought
within the tort of malicious falsehood and the offended party ought to do all things considered be
appeared to have endured extraordinary damages. Much support has been accumulated from the
accompanying case-laws of the UK. - Cable & Wireless Plc v. British Telecommunications,
Barclays Bank Plc v. RBS Advanta, Vodafone Group Plc v. Orange Personal Communications
Services Limited, British Airways Plc v. Ryanair Ltd.95

Puffery Rule
The beginning basic law position on the fact of the matter was dictated by a decision of
the Chancery Division in De Beers Abrasive v. International General Electric Co.96 In this, a
manufacturer of natural diamond abrasive prosecute a manufacturer of a competing abrasive
made from synthetic diamonds, on the argument that latter had circulated a leaflet conveying a
research centre test report looking at the execution and characteristics of the two items. The
product of the offended party had supposedly been shown in an unfavourable light in the same.
The culpable proclamations contained in the report passed on the feeling that the respondent's
products were superior to those of the offended party. The Court observed the same to be a more

92
(2010) 44 PTC 254 Del
93
(1995) 5 SCC 139
94
2010 (44) PTC 270 (Del)
95
Id as above
96
1975 (2) All ER 599

249
dramatic representation of the defendant’s claim with respect to the prevalence of its
merchandise. Articulations of this nature were held to be instances of simple puffery, with an
endeavour being made on part of the producer to misrepresent the advantages or utility of its
items, either in outright terms, or by method of comparison with adversary items.97

Such instances of puffery were seen as comprising of the expert freedoms that may be
permitted to advertisers working in a free business environment. There was little accentuation set
on the intention of the sponsor, with the Court opining that it was insignificant in respect to
whether the advertisement proposed to harm the plaintiff’s interests, and that it was completely
lawful for a business sector contender to need to draw away the offended party's clients. The
main substantive constraint forced on such utilization of puffery was that the advertiser was
disallowed from keenly denigrating the goods of a competitor, with any representations seen as
disparaging or rubbishing the competitor product being actionable.98 In the case of, Bubbuck v.
Wilkinson99, it was observed that, mere statement that the defendant’s goods are better than that
of the plaintiff’s would not be actionable. Even, in the case of, Allen v. Flood100, it was held that,
mere puffing would not be actionable for the reason that it would ‘open a very wide door to
litigation and might certainly expose every man who said his goods were better than those of
others to the risk of action’. In the White case, it was held that, ‘puffing’ is permissible, if not
then certainly the Courts of Law would be transformed into machinery for advertising rival
productions by obtaining legal determination which of the two was the better.101

In India the guideline of puffery was laid in the case of Reckitt v. Kiwi102 which was later
embraced in the Pepsi case. This regulation does not forbid obscure and general comparative
advertisement; a competitor is qualified to declare his product as the best in the world as long as
he is not disparaging the product of the competitor. The courts in India have created puffery rule
by getting encouraged from US without respect to the diverse consumer standards in the two

97
See also White v. Mellin, 1895 AC 154.
98
Apoorva Shanrma, “Comparative Advertisement and Infringement of Trademarks: A perspective from
Consumers”, available at http://ssrn.com/abstract=1896367.(Last visited on Aug. 21st 2014)
99
1899 (1) OB 86
100
1898 AC 1
101
1895 AC 154
102
Reckitt & Colman v. Kiwi TTK, 63 (1996) DLT 29

250
nations.103 The purchaser in US are more level headed, sensible, and sufficiently advanced to not
to trust that obscure and general articulation are actually genuine, while the shopper in India are
unsophisticated, uninformed on this front. Indeed, even the court in MP Ramchandran case has
depended on common law position as held above in De Beers case to specify the five major
guideline on comparative advertisement. A noteworthy part of the way in which puffery has been
analysed for this situation is the extensively liberal mentality received towards untrue and
uncertain explanations. The law as had developed in England and discovered reverberation in
Ramchandran, thought of it as reasonable to permit the advertiser to improve the apparent utility
of his item, even to the detriment of authentic exactness. The accentuation of the Court in such
manner was to keep any misfortune or harm to the interests of the competing manufacturer or
seller, with any active disparagement of a competing product being impermissible. The said
methodology, while securing the rights of the competing parties, was sadly deficient in tending
to the worries of the other noteworthy business sector, the consumers.

The Ramchandran position on puffery was re-examined to a restricted degree in the

matter of Glaxo Smith Kline Consumer Health Care Limited v. Heinz India case The Court thus
stick to the standards as had been expressed in Ramchandran, holding that a promoter was at
freedom to participate in puffery insofar as the product of a competitor was not criticized in any
way. Then again, it likewise looked to direct such representations of view by initiating a wide
prerequisite to substantiate their reasonability. Be that as it may, with no system or standard of
regulation being recommended, the position on the point stayed misty.

However, the tables have been changed by the historic point judgment given in Colgate
case104 by the Madras High court. A noteworthy development of the law on false and uncertain
puffery was found in this case. The Madras decision however appears to have gotten rid of this
justification for differentiating between subjective and objective claims by claiming
that all puffing is an actionable wrong.105 Here the Court expressed that the logic of the English
cases as set out in the five standards, and particularly the rule identified with untrue puffery

103
Rajat Mittal &Ashiwarya Singh, "Comparative advertising: An eye for an eye making the consumer blind”,
Journal of Intellectual property rights, Vol.13, pp19-27(January 2008).
104
Colgate Palmolive (India) Ltd. v. Anchor Health & Beauty Care Private Ltd, (2008) 7 MLJ 1119)
105
Mihir Naniwadekar, “Commercial disparagement: A new approach to puffing”, Spicy IP available at
http://spicyip.com/2008/12/commercal-disparagement-new-approach-to.html (Last visited on Aug. 21st 2014)

251
(special explanations and cases that express subjective as opposed to objective views) should not
to be connected in a nation such as India "with restricted assets and low proficiency level". The
Court has taken a strong objection to any untrue proclamation in a commercial, saying that
"to permit two rival traders to indulge in puffery, without denigrating each other's
product, would benefit both of them, but would leave the consumer helpless. If, on the
other hand, the falsity of the claim of a trader about the quality and utility value of his
product is exposed by his rival, the consumer stands to benefit by the knowledge derived
out of such exposure. After all in a free market economy the products will find their place
just as water would find its level provided the consumers are well informed."

Referring to widely from the expansion occurring in the US, UK and India the Court
observed that there was lately an outlook change from contender interest to consumer interest
and that "puffery is no longer tolerated" for "puffing is only a twin sister of bluffing". In the
circumstances, the Court said that the test of deceptive similarity of two trademarks - the test that
the marks ought to be seen from the perspective of an average consumer - should be equally
relevant to advertisement texts.106 Even in the case of Dabur India Ltd. v. M/S Colortek
Meghalaya Pvt. Ltd.107, the court observed that while puffed-up advertising may be allowed but
it cannot contravene the grey areas of acceptable statement.

The law on this issue in the United States has looked to realize a reasonable division
between cases of puffery and those of dynamic denigration, with statements of opinion, rather
than irrefutable explanations of certainty, being termed as basic puffery. For the most part,
puffery has four qualities: it is general and ambiguous; it makes a case that is immense,
unquantifiable or unverifiable; it is introduced as a subjective articulation; and it is the sort of
case whereupon buyers are unrealistic to depend. In this way it is dependent upon the supposition
that all buyers are sensibly administered by sound judgment. In the Rin v. Tide case108, the
respondent compared its product in a general way with that of the petitioner, as opposed to
limiting itself to an examination of the level of whiteness as could be given. It might be said that
as the level of whiteness is a particular quantifiable case, attesting prevalence on such premise is
not a denigration of the contending item. Likewise, while drawing a line between basic puffery

106
Dabur v Colgate-Palmolive (2005) AIR Delhi 102
107
2010 (42) PTC 88 (Del.).
108
Procter & Gamble Home Products v. Hindustan Unilever Limited, High Court of Calcutta, G.A. No. 614 of
2010, C.S. No. 43 of 2010 available at https://indiankanoon.org/doc/114867153/. (Last visited on Aug.21st 2014)

252
and denigration, the court may consider that there are additionally more vague differences
between reasonable and foul behaviour. The Federal Trade Commission in the United States has
watched that the key malevolence in comparative advertising is deception, not articulate
misrepresentation, and perceives that “regardless of the fact that an announcement is truly
genuine, it might even still be deceptive109 if it is deceptive in its general impact, or on the off
chance that it is liable to more than one analysis, one of which is not correct, or if the statement
is true it is only in restricted situation.

Thus it can be concluded from the above analysis is that the law on comparative
advertising in US is based on the assertion that competitor is permitted to say almost anything
about the brand that is subject of comparison provided that it is truthful and do not confuse as to
the origin of the goods. While in UK there is a strong sentiment to protect the goodwill
associated both with the manufacturer and his goods that need to be protected. Advertising that
take advantage of the positive attributes of a brand primarily to capitalize on the reputation in
trademark of a competitor, obtained free ride are not allowed under Article 3(a)(1)(c) of
comparative advertising Directives and in India, the law with respect of comparative advertising
and trademark disparagement is moving on a positive tread but still much more need to be done
toward codification of law on the said principle.

109
Apoorva Shanrma, “Comparative Advertisement and Infringement of Trademarks: A perspective from
Consumers”, available at http://ssrn.com/abstract=1896367. (Last visited on Aug.21st 2014)

253
 CHAPTER-7

CONCLUSION
 CHAPTER-7
CONCLUSION

We have arrived at the end of this study and all through right from chapter one
issue that have been highlighted is that the Indian law, albeit deciphered to allow
comparative advertisement, does not address the issue in a prompt manner in any
enactment. Comparative advertisement and disparagement cases are still pronounced on
the premise of general law standards. There is no particular statutory procurement to cater
the interest of all the stakeholders under the rule of comparative advertising i.e.;
manufacturers, advertisers, competing parties and consumers. It can likewise be said that there is
passing reference to comparative advertising in the Trade Marks Act, 1999 which takes
into consideration the utilization of trade mark by another as long as such use is in
accordance with honest practices and not to take unfair advantage of or to be detrimental
to the distinctive character of the trade mark. The Trademark Law furnishes restricted
insurance with no clarity of idea that makes it harder to implement the said law by courts
The Code of Advertising Standards Council of India, 1985 additionally recommends
circumstances under which comparative advertisement can be allowed. There is need to
implement the best practice from UK and USA that addressed the issue of comparative
advertisement and propose suitable solution to enhance and improve the Indian legal
system.

In view of the above assumption made under the hypothesis stand correct
partially, the research demonstrates that while there has been an advancement in
legitimate structure, there is a ton more still to be done. An examination of the law
speaking about comparative advertising in India reveals that without a submitted
legitimate instrument managing the comparative advertising, to a great degree alternative
methodology has been taken after, with varied parts of the same being determined with
reference to clashing standard.

254
Findings
The motivation behind this research was to discover a structure for comprehension
and assessing comparative advertisement under the Trademark regime in India. To
elucidate the above hypothesis certain important finding has been drawn:

1. In India, comparative advertising is allowed as it gives a chance to the consumers

to contrast the goods the producers are advertising while on the other side
disparagement is not acknowledged.
2. Secondly, even though comparative advertising is considered as lawful, the
opponent is authorized to take legal action if it has been targeted in an
advertisement and anything said regarding the competitor’s product is false or
deceptive.

3. It is likewise seen that the law identifying with comparative advertisement is

insufficient as prior MRTP Act, 1969 was managing the rights of aggrieved in this
setting yet now Competition Act, 2002, substitution of MRTP Act 1969, does not
deal with it. The remedy given under Consumer Protection Act, 1986 is
contingent and material just to the consumers. Therefore only Trademarks Act,
1999 discuss about comparative advertisements, however, the particulars given
under the same are of general character, for example, the ad ought to be made
steady with the fair practices of the business. This is open for wide understanding
regarding what is honest practice of an industry.

4. The issue with the law on comparative advertising has been diversity of
understanding and methodologies adopted by different court in absence of a
particular enactment.

5. The judicial precedents have likewise shaped intricacy with regard to level of
puffery. There are opposing decisions of Calcutta High Court and Bombay High
Court where puffery was not taking into account false or untrue articulations.
Indeed, even the Madras High Court is not prepared to endure puffery any more.

255
 The decision in the Colgate case was an appreciated change in matters of
comparative advertising, guaranteeing protection of the reputation and goodwill
attained by producers in their trademarks. The established position is such that
advertisers are benefitting from the loopholes created by the contradictory
precedents.

6. Also it is seen that legitimate scene are far from being settled, they depend on
individual cases. The cases decided by different high courts are hypothetically just
tying on simultaneous courts or the lower courts inside their purview. The
decisions are additionally anticipated that would be persuasive among High
Courts of other jurisdiction. The judges who differ with the result may have a
choice to present a new outlook or transfer the issue to the higher courts. In view
of that it is seen that the law in this area will observe some discrepancy until the
Supreme Court gave an authoritative verdict.
7. It is additionally found that in India there is no commission or directions to
regulate advertising. We do not have comparative advertisement directives like
that in Europe furthermore we don't have a body like the FTC in U.S to give
outline and guidance on pursuing such advertisement.

8. The Advertising Standard Council of India (ASCI) has been set up in India in
1985 with a perspective to guaranteeing the honesty and genuineness of
representations, watching decency in rivalry and protecting against the aimless
utilization of publicizing for advancement of one's item. In any case, the said self-
administrative body has not been considered important by the advertisers because
of its recommendatory nature.

9. The law in India with regard to disparagement is well settled, which is reflective
from the judicial dictums of various courts.1 The recent judgments likewise

1
As held in the case of Hindustan Unilever Ltd. v. Reckitt Benckiser (India) Ltd. it is the degree of
defamation which mattered in deciding if a claim of one person was disparaging the product of
another.”Further the court observed that defence of truth or justification in the law of defamation, is not

256
 convey an expression of alert for the contender that judiciary making a move
against deceptive advertisements. Subsequently a promoter ought to think before
initiation a commercial as an unreasonable attack on the contender's items might
have catastrophic consequences.2

It has been seen India has come a long way but still a lot could be done. There is a
reasonable jurisprudential guideline i.e., If in some way a commercial is turned out to be
unjustifiable or surpasses moral measures by concealing reality or precluding some
fundamental part of the comparison, it is likely that an order of injunction will be granted
and that the offended party will have the capacity to get a final decision announcing the
advertisement illicit.

Suggestions
Despite the nature of our laws, the genuine test of the laws lies in its
enforceability. The rights conceded to the contender would remain an insignificant
piece of paper unless they are truly made enforceable and available to them.
Unexpectedly, even the current law has been exchanged with the cancellation of MRTP
Act. However, the legal proclamations are assuming an essential part in deciding the
question emerging out of comparative advertising, yet they appear to set an insufficient
precedence. The question is not whether a consumer has sufficient cures and assurance
against such unfair trade practices of enterprises, however, whether the warring
company has satisfactory law against unfair trade practices and justice delivery
framework ought to have some guideline for contending amongst them.

In this connection the accompanying proposals are worth emulative in order to

reinforce the laws identifying with comparative advertising:

available in actions alleging disparagement of goods and services and arising out of a comparative
commercial advertisements.
2
Semila Fernandes, “Comparative Advertisement And It’s Relation To Trademark Violation – An Analysis
Of The Indian Statute”, Journal of Business Management & Social Sciences Research (JBM&SSR) Volume
2, No.6, June 2013 available at http://www.borjournals.com/a/index.php/jbmssr/article/view/242/pdf. (Last
visited on Aug. 12th 2013).

257
 I. Comprehensive Scheme of Regulation as Directions or Guidelines on
Comparative Advertising:

There is an absence of a committed lawful instrument on comparative

advertisement. Because of which there is irregularity in managing such cases. The need
of the hour is a more exhaustive plan of regulation whose wide structure is
recommended by the promoting business. This will guarantee that the privileges of
both the contender and purchaser are shielded. This might be finished by method for
embracing the model as has developed in Britain i.e. CAD with the standards as
endorsed by the promoting body being legitimately enforceable. Such standards might
be utilized to decide certain uniform standards with respect to both straightforward
puffery and denigration, remembering the demands of consumer justice and fair
competition.

II. Guidelines for Use of Comparative Advertising by advertiser /prompters and

competitors:

Comparative advertising provides consumers with information and can improve

decision making. It can likewise prompt confusion and deceived choices. Basically, it
can take into account a trader to get a free ride on the reputation of another dealer and
now and again might even take into consideration poaching of that reputation.
Comparative advertising will keep on being a significant and powerful type of
advertising. Traders ought to be made mindful of the pitfalls and dangers connected
with it for arranging of their own advertising campaigns and the intrusion of a
contender's whether they cross the faltering line of legitimateness. There are sure
directing rule that promoter ought to remember before initiation a commercial i.e.

1) Be arranged and get your work done before initiation comparative claim.
2) Make sure that the contentions you are crafting, both directly and by
implication, are honest.
3) Make beyond any doubt the comparative data is honest; don't misdirect the
consumer either by act or exclusion;
4) Use the contender's trademark in a precise way. Try not to modify or ruin it in
any way;

258
 5) Advertisers ought to guarantee that the cases they are making are substantiated,
both before making them and for the duration of the time that they are run.
Exploration ought to be led as per Advertising Standard Council research and
survey data guidelines. Test results should be reproducible and surveys based
on representative samples.
6) Advertisers ought to guarantee that they are looking at important components
and that they are not abstaining from tending to their own product defects.
7) Consult with legal practitioner before running any promotion. These
discussions can help to reduce the peril of liability by making sure that the
campaign is on the correct side of the law.
8) Before including a contender's name, image or item (either specifically or in a
implied way) in any advertising, cautious thought must be given to the
conceivable trade-mark, copyright and tort implications.
9) Prior to executing a comparative advertising campaign, ensure you have set up
a reasonable course of action for protecting against potential difficulties. This
arrangement ought to incorporate careful record administration and the
foundation of a crisis management team. This strategy ought to additionally
incorporate putting aside a bit of the campaign's budget to defend against
contenders who challenge the campaign.

III. Approach of Judiciary: Injunction to Damages

With the across the board utilization of comparative advertising came a large
portion of the average advertising abuses, which were pleasantly exceptionally unclear.
The most widely recognized sorts of misuse include: false claims, where the publicist
assert that his item accomplishes something that others item neglect to do; product
disparagement, where the promoter outlandishly assaults a contender's item; and false
representation, where the ad is misdirecting. It is important that judiciary should pay a
major role by providing stringent punishments for the same in the form of damages.

Injunction is the main cure given by the court in the matter of product
disparagement. The most powerful contention for the fame of this remedy is that it gets
rid of the offensive advertisement from the market place. However, Injunction as a
259
remedy, the reason for which is to execute a court's judgment that a wrong has been
and will be conferred, and to restore the recipient to its legitimate position yet for the
situation where disparaging comments are being tended to a specific item, will the
directives have the capacity to fix all the loss of reputation that the product has
endured? It will at the most dispose of the offensive commercial from the market place,
however, it would not have the capacity to restore the recipient to its legitimate
position and fix the loss of reputation.3 It is consequently correct to say that Injunction
is not a cure customized to address a wrong or to defend a right in case product
disparagement and claim on conclusiveness in the face of a fruitless remedy is bare
formalism. The most appalling fact of the Indian law on comparative advertising is that
no damages have ever been recompensed in the matters of Comparative Advertising. In
fact, it is measured as impractical to establish that a specific advertisement or campaign
was the immediate reason for loss in a sales or potential sales by the competitor. In
such manner, it is necessary for the judges to ensure that cases do pass the injunction
stage and open a new entry for damages. Such damages might come as curative
advertising as well as monetary awards.

1) Curative Advertising: One sort of aid that might be conceded is remedial

promoting. This is an award of money particularly ascertained in order to be
spent on advertising that will redress any confusion caused by the abusive
advertisement brought about by the harsh commercial. This type of cure is
regularly depended on in US where all the time the respondent is accused of the
undertaking of curative advertisement. The statement in the remedial ad would
be chosen to check the deceptive or bogus message of the oppressive
advertisement. The restorative commercial must be intended to fortify truth in
the purchaser's psyches while eradicating the prior deceptive message, which
created disarray and along these lines influenced purchase decisions. Besides,
restorative promoting bolsters future honest advertisements.
2) Monetary Awards: Deceptive comparative advertising is an outrageous
endeavour to dishonour the contender's item. Since it causes special damage to

3
Paul E. Pompeo, To Tell the Truth: Comparative Advertising and Lanham Act Section 43(a), 36 Cath. U.
L. Rev. 565, (1987).

260
 the product, that is pecuniary harm, damages must be granted to the oppressed
party. Different states, for example, Delaware offer Uniform Deceptive Trade
Practices Act, which gives a few cures if there should arise an occurrence of
disparagement of goods. Under the provisions of the amended Lanham Act of
USA, infringement under Section 43(a) will entitle the offended party, in
specific situations, to respondent’s profits, damages sustained by the plaintiff,
costs of the action, and up to three times the sum found as actual damages in the
discretion of the Court and as indicated by equitable principles. Lawyer's
expenses are accessible in special circumstances. In USA four different basis
exist on which award of compensatory damages are given: (1) Profits lost by
plaintiff because of infringement; (2)Actual business losses caused by the
infringement other than lost profits; (3) Defendant’s profits as an estimate of
plaintiff's lost profits; or (4) Defendant’s profits on an unjust enrichment theory.
India must soak up and gain from these procurements to administer certain
enactments which take into account the requirement for damages. In any case,
while making these provisions, must be careful of overcompensation or under
compensation. In the previous, it prompts to improved, danger so lesser
production of goods ending up in lesser option accessible to consumers while in
the last mentioned, the wrongful advertiser shall get away unhurt.

IV. Strengthen the Role of Self-Regulation mechanism i.e. ASCI:

The ASCI has devised its self- administrative code which is brilliantly alluring on
paper. Be that as it may, what does it do about deceiving commercials? Just nothing.
Deliberately ignores. No endeavour is made to alert people in general about the
distortion. No official statement is issued to make people in general mindful that they
ought not to trust these deceptions. ASCI should be fortified and its obligations and
role need to be publicized. It is a superior technique to have provincial units
considering the volume of publicizing in a topographically immeasurable nation as our
own. The inference of reinforcing ASCI involves not simply human and other asset, it
additionally incorporates the way that as concern toward the customer the
perceivability of ASCI is improved and it gets to be as known as an organization such

261
as the Censorship Board for the film business. The procedure of reinforcing ASCI
ought to have the capacity to not simply request that promoters alter an advertisement
or prevent it from being broadcast; it should be self-administrative as well as be
compulsory. There is no provision for remedial advertisement to invalidate the harm
effectively done by a false and misdirecting advertisement. There is earnest
requirement for an approach for remedial promotions. ASCI must have general
instrument for connection with consumer associations to value consumer worries.
Amend ASCI Code to inflict curative advertisement, which can likewise act as an
obstacle to advertisers. The accompanying are some particular recommendations.

1) Compulsory Enrolment of ASCI. Membership of ASCI has been made obligatory

for all business players with spotlight to advertising industry in India – the media
vehicles, the sponsors and advertising agencies.
2) Enlarge the scope of ASCI Code to digital and social media: A solid
computerized outreach system is required to screen advanced and home shopping
systems including outdoor advertising and versatile publicizing. Vast
computerized organizations like Google, YouTube, and Twitter must join as
individuals and necessarily sign on to ASCI code.
3) Amalgamate ASCI Code into statutory provisions: ASCI do not have powers to
impose any sanctions. Cable Television Act has made it mandatory that the code
of ASCI should be followed by TV advertisements. In the instance of violation of
ASCI’s code by an advertisement on TV the Ministry of Information and
Broadcasting takes further action4. However, ASCI’s code for advertisements
appearing in the press or outdoor is not yet made mandatory by the Government.
ASCI have been seeking support from the Government on these lines. Similarly it
is required that there should be incorporation of ASCI code of conduct in other
statutory provisions.
4) Initiation of National Advertisement Monitoring Service: A standout amongst the
best measures taken is the setting up of the National Advertisement Monitoring

4
Sub rule (9) of rule 7 having Advertising Code of the Cable Television Network Rules, 1994 denies TV
stations from conveying any commercial that is infringing upon the ASCI Code. Related provisions might
be presented in different statutes such as Press Council of India's Advertising Code to guarantee that
promotions while in congruity with the statutory also stick to the ASCI Code.

262
 Service (NAMES) in 2012. When contrasted with other developed countries, for
example, UK and the US, India gets less number of complaints and a considerable
measure of deceptive ads get away from the examination of Advertising Standard
Council of India (ASCI). The essential explanation behind the same is the low
level of mindfulness among the population in India. Keeping in mind the end goal
to address this issue, ASCI started NAMES whose goal is to screen all the TV
channels and one daily papers for such deceptive commercials and report all such
false advertisements to the CCC of the ASCI. The researcher is of the view that
such an proposal by ASCI has given suo motu powers to the ASCI to lodge a
complaint itself against the culpable promoters.
5) ASCI ought to have a system to gather the data about ongoing habitual offenders
and share that data about sponsors/promotion organizations with the nodal service
for strict action
6) Procedure expressed under ASCI ought to be made all the more quicker as the
time taken for its decision and possible pulling down of the complained
advertisement, surpass the shelf life of the advertisement.

V. Amendments required under Trademark law:

The significant advancement of the idea of comparative advertisement occurred in the
post-liberalization stage, it is eminent that the idea is still youthful and in the early stage,
more so, due to the fact that the present Trademark Act gave just constrained and
insufficient assurance in such cases. Certain essential changes ought to be incorporated in
the present Trademark Law to make it more user- friendly i.e.:
1) The Trademark law in India is just portraying the circumstances under which
comparative advertisement is allowed. It ought to likewise fuse the meaning
of comparative advertising and when comparative advertisement leads to
product disparagement.
2) As per law trademark infringement happen when two keys are satisfied i.e.; if
the respondent has utilized considerably similar mark and that too to pass off
his own merchandise as that of the plaintiff's. In comparative advertising one
or both might be missing some of the time. As it might be conceivable that

263
 just a reference is made to the mark and not the substantially similar mark is
used. Furthermore, the mark is not used to pass off the goods but to compare
both the goods. So it is vital to expand the idea and incorporate such
circumstance likewise where trademark has not been utilized but still the
goodwill and reputation of the competitor is injured.
3) It is likewise imperative to include specific remedy with stringent fine if there
should arise an occurrence of infringement by means of comparative
advertisement.
4) According to Section 29 (8) a critical parameter to be checked is that
utilization of trademark ought to be in accordance to honest practices in
industrial or commercial matter. Whether a specific commercial is honest or
not is decided from the standpoint of reasonable consumer. According to the
researcher, in order to decide the question of honesty, the objectivity test must
be applied as observed in the Advanta case. In the present case, the court
opined that ‘honesty must be gauged objectively against what is reasonably to
be expected by the relevant public of the advertisement for the kind of goods
or services in issue.’ It implies that the objective test is based on the approach
of receiver of the advertisement and custom or practice in the relevant
business sector

These changes would surely be an appreciated expansion for the Trademark Law with
respect to comparative advertisement.

From the above research, it can be inferred that the Indian law, albeit construe to
permit comparative advertisement, does not tackle the subject in an immediate or far
reaching way in any enactment.

It is presented that a casual comparative advertising policy will both enhance the
economy of India and help residential makers and service-providers in competing with
the world business sector pioneers that as of now appreciate a prevailing position in a
hefty portion of our business sectors. The proposed EC Directive and the statute from the

264
US ought to be the premise whereupon India ought to build up its comparative
advertising scheme. Specifically, India ought to establish enactment that particularly
allows comparative advertising gave it doesn't result in confusion as to source and is not
false, deceptive or disparaging. Also a legitimate system for such advertising ought to be
raised on the premise of balancing the benefits between trader and consumers to
guarantee a reasonable aggressive environment and market transparency.

The author is likewise of the sentiment that comparative advertisement should

stay. India doesn’t have condition like in USA or UK yet it ought to be allowed on the
grounds that it is in the support of the consumer and public at large. It has numerous
benefits if convoy with accurate facts. It helps the business sector to be focused and helps
the shoppers to choose two items or services. Comparative advertising has turned out to
be more successful and accommodating to the purchasers in the period of globalization.
Presently we are living in the worldwide town. Nature of business sector, exchange and
trade has totally been changed in this time of globalization. Customers seriously need
more information around a specific item or services to settle on their decision and choice
exact and right. Here is the significance and effectiveness of comparative advertisement.
Other than that comparative advertisement has numerous shortcomings and ought not to
be permitted in the event that it went with false data about the items and administrations
and plans to ruin, denigrate or disparage the products or services of opponent contender.
Comparative advertisement will be injurious to the consumer specifically and society at
large on the off chance that it comprises of false, wrong and fictitious information. It will
become detrimental to the rival contenders if it got together with disparagement.

In the event that appropriate rules are trailed by the product marketers, it permits
the nurturing of superior business surroundings to spend in. It is most extreme
significance for both organizations and the bench to work in coupled to bring back the
equivalence in comparative advertising whereby fair trade practices; intellectual property
protection and consumer interest can go hand in hand.

265
LIST OF CASES
 LIST OF CASES

1. Ace Marketing Private Ltd. (1987) Tax LR 1792 (30)(MRTPC)................................ 50

2. Aerosonic Corp. v. Trodyne Corp., 160 USPQ 166 (CA 5 1968)……………………..229
3. Aktiebolget Volvo v Heritage (Leicester) Ltd., F.S. R (2000)253............................. 112
4. Alcott v Millar's Karri and Jarrah Forests Ltd (1904) 91 L.T. 722……………….….198
5. Allen v. Flood 1898 AC 1…................................................................................285,287
6. American Washboard Co. v. Saginaw Mfg. Co., 103 Fed 281 (CA 6 1900)………...230
7. Aristoc v. Rysta (1945)62 RPC65............................................................................. 111
8. B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d 1254 (5th Cir. 1971)…….232
9. Barclays Bank Plc v. RBS Advanta (1996) RPC307................................... 113,202,273
10. Bernard Food Industries Inc. v. Dietene Co 415 F.2d 1279 (7th Cir. 1969)…….….246
11. Bismag Ltd v. Amblins (Chemists) Ltd [1940] 2 All ER 608……………………..190,200
12. British Airways v Ryanair [2001] E.T.M.R. 235………………………………………..195
13. Bubbuck v. Wilkinson 1899 (1) OB 86 …………………………………………………..285
14. Bubbuck v. Wilkinson 1899 (1) OB 86……………………………………………..……..287
15. Cable & Wireless v British Telecommunication [1998] F.S.R. 383 at 385…….195,269
16. Chanel v. Triton Packaging Ltd., [1993] RPC 32……………………………………....200
17. Coca-Cola Co. v. Tropicana Products, Inc. 690 F.2d 312 (2d Cir. 1982)………..…248
18. Colgate Palmolive (India) Limited v Anchor Health &
Beauty Care Private Limited Case (2008) 7MLJ1119........................................ 74,273
19. Colgate Palmolive (India) Ltd. v. Anchor Health &
Beauty Care Private Ltd, (2008) 7 MLJ 1119)...................................................169,187
20. Colgate Palmolive India Ltd. v. HLL 1997 (5) CTJ 421...........................................118
21. Colgate Palmolive v. Hindustan Lever 1997 (5) CTJ 421.........................................122
22. Compaq Computer Corporation and Another v. Dell Computer Corporation Limited
and Another [1992] F.S.R. 93……………………………………………………..…190,200
23. Compaq Computers v Dell Computers, [1992] FSR 93............................................. 14
24. Competition Commission of India vs. Steel Authority of India & Anr. On 9 September,
2010............................................................................................................................ 57
25. Dabur India Ltd vs ColortekMeghlaya Ltd, 2010 (42) PTC 88 (Del.)......................
………………………………………………………………………….…174,178,285,286,290
26. Dabur India Ltd. V. Emami Ltd. 2004 (29) PTC 1 (Del)......................128,148,266,284
27. Dabur India Ltd. v. Wipro Ltd., Bangalore, 129 (2006) DLT 265.....................155,282
28. Dabur India Ltd. Vs. Colgate Palmolive India Ltd. (2004) 29 PTC
401……................................................................................................ 128,150,284,289
29. De Beers Abrasive Products Limited and Others v International General Electric Co.
of New York Ltd. [1975] 1 W.L.R.
972……………………………………………………195
30. De Beers v. International General Electric, [1975] 2 All ER 599......................118,124
31. De Beers v. International General Electric, [1975] 2 All ER 599.............................123
32. Director General (I&R) v. Milkfood Ltd., 1993 (1) CTJ 465.................................... 124
33. Director General (I&R) v. MIS Fusion Polymers Ltd., 1995 (3) CTJ 181…........... 121

266  
 
34. Director General (Investigation & Registration) v. Shakthi Publications, (1999) CTJ
357..............................................................................................................................118
35. Duracell International Ltd. v. Ever Ready Ltd. [1989] FSR 87………………….……200
36. Duracell v. BPL Ltd., 1999 CTJ 115……………………………...................................124
37. Durbin Brass Works, Inc. v. Schuler, 532 F. Supp. 41 (E.D. Mo. 1982)………...…..250
38. Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories
MANU/SC/0197/1964...................................................................................................114
39. Durga Dutt vs. Navaratna Pharmaceutical, AIR 1965 SC
980............................................................................................................................. 103
40. Electronics Corporation of America v. Honeywell, Inc., 428 F.2d 191 (1st Cir.
1970)…...…………………………………………………………………………………......231
41. Ely-Norris Safe Co. v. Mosler Safe Co., 7 F2d 603 (CA 2 1925………….....……..…231
42. Estee Lauder Case C-220/98…………………………………………………..…….…….205
43. Eureka Forbes Ltd. and Anr. Vs. Pentair Water India Pvt. Ltd., 2007(4)
KarLJ122...................................................................................................................154
44. Eveready Industries India Ltd vs. Gillette India Ltd..................................................168
45. Federation of Parenternal Manufacturers of India v. Core Parenternal Ltd., 1994 (2)
CTJ 183......................................................................................................................123
46. Frankfinn Aviation Services Pvt Ltd V. Akash Gupta 2010 (42) PTC 294
(Del)………………………………………………………………………………………......151
47. G.M. Pens International Pvt. Ltd. vs Cello Plastic Products and Ors......................151

48. Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd.,
MANU/DE/2840/2005……………………..…………………………………..............……96
49. Glaxosmithkline Consumer Healthcare Ltd. v. Heinz India,
(MANU/DE/3273/2010)……………………………………………………..………….….282
50. Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd., 2006 (32) P.T.C. 307................156
51. Grand Chemical Works v. Nirmala Dyechem 2003(27)PTC 27 (Del)…………....…266
52. HamdardDawakhana vs. Union of India. AIR 1960 SC 554............................69,70, 72
53. Hawkins Cooker Ltd Vs Murgan Enterprises,MIPR 2008 (1) 128............................113
54. Hindustan Lever v. Colgate Palmolive (I) Ltd. 1998 (1) SCC 720.................... 126,143
55. Hindustan Unilever Limited v. Cavincare Private Limited, 2010 (44) PTC 270
(Del)……………………………………………………………………………….……….…286
56. Hindustan Unilever Limited vs. Procter & Gamble Home Products, C.S.NO.43 OF
2010............................................................................................................................162
57. HLL v. Marico Industries , 1999 CTJ 412.................................................................120
58. Hubrick & Sons v Wilkinson Heywood & Clark Ltd 1898 1 Q.B. 86……………..….198

59. Imperial Tobacoo v. Registrar Trademarks AIR 1977 Cal 413...................................95

60. Indian Express Newspapers vs. Union of India AIR 1986 SC 515..............................71
61. Intel Corp Inc V. CPM United Kingdom Ltd (C-252/07)………………………..…..…275
62. Investwell Publishers (P) Ltd., Bombay, UTP Enquiry no. 146/1987........................ 49
63. Irving’s Yeast-Vite Ltd v. Horsenail, (1934) 51 RPC 110....................................109,125
64. Irving's Yeastvite Ltd. v. Horsenail (1934) 51 RPC 110………………………….……199
65. Johnson & Johnson v. P&G Ltd., 1999 CTJ 244.......................................................121

267  
 
66. Karamchand Appliances Pvt. Ltd. v. Sh. Adhikari Brothers, 2005(31) PTC
1……….………………………………………………………………………….....151,271,284
67. Kaye v Robertson [1991] F.S.R. 62………………………………………….……………196
68. Khemraj v. Garg , AIR 1975 DEL 130......................................................................105
69. L’ Oréal SA, Lancôme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie v
Bellure NV, Malaika Investments Ltd, Starion International Ltd, 18 June 2009, Case
C-487/07……………………………………………………………………….………..215,274
70. L’Aiglon Apparel, Inc. v. Lana Lobell, Inc..214 F.2d 649 (3d Cir. 1954)……....…..245
71. Lady Esther, Ltd. v. Lady Esther Corset Shoppe, 317 I1 App 451, 455 (1st Dist
1943)……..............................................................................................................….230
72. Lakhanpal National Limited v. M.R.T.P. 1989 AIR (SC) 1692..............51,118,120,147
73. Lyne v Nichols (1906) 23 T.L.R. 86……………………………………………….………199
74. Lyne v Nichols (1906) 23 TLR 86……………………………………………...………....196
75. M. Balasundram v Jyothi Laboratories, 1995 (82) CC 830.................................50,124
76. Marico Limited vs Adani Wilmar Ltd, 2013 INDLAW DEL 1027...........................178
77. Matter of Kinetic Honda Motors Ltd ,1994 (2) CTJ 157..........................................119
78. MC Mehta v India (1987) 1 SCR 819………………………………………….......….….283
79. McDonald’s Hamburgers Ltd. v. Burger King (UK) Ltd. 1986] FSR 45…………...194
80. Metrics & Multistandard Components Corp. v. Metric's, Inc., 635 F.2d 710, 715 (8th
Cir. 1980)................................................................................................................ 249

81. MilmetOftho Industries & Ors. v. Allergan, Inc. (2006 (32) PTC 495)..…….….….…91
82. N. R. Dongre v. Whirlpool (1996) 5SCC 714…………………………………….….....…91
83. National Refining Co. v. Benzo Gas Motor Fuel Co., 20 F2d 763………..……..…..228
84. O2 Holdings Limited and O2 UK Limited v Hutchison 3G UK Limited, 12 June 2008,
Case C-533/06……………………………………………………………….……213,270,274
85. Palmolive (India) Limited v Vicco Laboratories 1997 (5) CTJ 488…................ 52,147
86. Paras Pharmaceuticals Ltd. vs. Ranbaxy Laboratories Ltd., AIR 2008 Guj 94…....163
87. Paras v Ranbaxy (2008) AIR Gujarat 94………………………………………………...266
88. Pepsi Co. Inc. & Ors. v.Hindustan Coca Cola Ltd. & Anr., 2003 (27) PTC
305................................................................................................... 24,126,139,266,271
89. Pepsico Inc. vs. Hindustan Coca- cola, (2001) PTC 699 (Del.)……………...... 113,137
90. Picker Int’l, Inc. v. Leavitt, 865 F. Supp. 951, 964....................................................116
91. Procter & Gamble Home Products v. Hindustan Unilever Limited, C.S. No. 12 of
2010..............................................................................................................166,167,290
92. RadicoKhaitan Ltd. Vs Carlsberg India Pvt. Ltd, 2011 (48) PTC 1 (Del)…….........113
93. re Guinea Mansion UTP Enquiry no.451/1987.......................................................... 51
94. Re Jay Norris, Inc., 91 F.T.C. 751 (1978)………………………………….…………….259
95. Reckitt & Colman of India Ltd. v Kiwi TTK, 63(1996) DLT29....... 24,133,265,279,288
96. Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1 AII ER 873…….............105
97. Reckitt and Coleman India Limited v Jyothi Laboratories Limited, 1999 (34) CLA
46........................................................................................................... 53,114,135,139
98. Reckitt and Colman of India Ltd. v. M.P. Ramchandran and Anr.,1999 PTC (19)
741.............................................................................................................. 126,133,177

268  
 
99. Reckitt Benckiser (India) Limited v. CavinKare Pvt Ltd. (2007 (35) PTC 317
(Del)...........................................................................................................................161
100. Reckitt Benckiser (India) Limited v. Naga Limited & Others, 2003 (26) PTC 535
(Del.)........................................................................................................... 115,146,165
101. Reckitt Benckiser (India) Ltd. vs. Hindustan Lever Limited, 2008 (38) PTC 139
(Del)............................................................................................................ 128,164,170
102. Reckitt Benkciser (India) Ltd vs. Hindustan Unilever, CS (OS) No.
375/2013....................................................................................................................179
103. Royer v. Stoody Company 192 F. Supp. 949 (W.D. Okla. 1961)…………….......….231
104. Royer v. Stoody Company, 192 F. Supp. 949 (W.D. Okla. 1961)………….….........230
105. Rupa& Co. Ltd v. Dawn Mills Co. Ltd., 1999 PTC 334(GUJ)...............................105
106. S.C. Johnson & Son, INC & Anr. Vs. Buchanan Group Pty Ltd. & Ors 2010 (42)
PTC 77................................................................................................................166,177
107. S.M. Dyechem Ltd. v. Cadbury (India) Ltd., 2000 PTC
297.............................................................................................................................104
108. Saxlehner v. Wagner (1910), 216 US 375………………………………………………227
109. Secretary, Ministry of Information and Broadcasting v. Cricket
Association of Bengal, (1995) 5 SCC 161…………………….......................................71
110. Skil Corp. v. Rockwell International Corp 375 F. Supp. 777, 782 (N.D. Ill.
1974)……...........................................................................................................246,249
111. Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968)…………………………………. 222
112. Smith Victor Co. v. Sylvania Electrical Products, Inc. 242 F Supp 302,
309.......................................................................................................................122,129
113. Society for Civic Rights v. Colgate Palmolive (India) Ltd. (1991)2 Comp L J
372(MRTPC)................................................................................................................48
114. Tata Press Ltd v Mahanagar Telephone Nigam Ltd &Ors AIR 1995 (SC)
2438.....................................................................................................02,03, 71,263,286
115. Testing Systems, Inc. v. Magnaflux Corp., 251 F. Supp. 286………........................229
116. Time Incorporated v. Lokesh Srivastava and Anr. {2005 (30) PTC 3 (Del)}..........107
117. Toshiba v Katun, Case C-112/99……………………………………………...……190,210
118. U-Haul Int'l, Inc. v. Jartran, Inc. 601 F. Supp. 1140………………..…………...250,304
119. Unibic Biscuits India (P) Ltd. v. Britannia Industries Ltd., MANU/KA/0240/2008.149
120. Universal Athletic Sales Co. v. American Gym, Recreational &Athletic Equipment
Corp., 397 F Supp 1063..........................................................................................…229
121. Varca Druggist v. Chemist & Druggist Association,
MRTP CASE NO. C127/2009/DGIR (4/28) JUNE 11,2012......................................117
122. V-Guard Industries Ltd. v. Pushkar Appliances (Pvt) Ltd., 1999 CTJ 366.............119

123. Vijay Grover v. Biocure laboratories, AIR 2002 (2) Raj 111…………………….……92
124. Vodaphone Group Plc v Orange Personal Communications Services Ltd [1997]
F.S.R. 34……………………………………………………………………………195,201,203
125. Warner v. Lambert 562 F 2d……………………………………………………….……..304
126. Western Counties Manure Co. v Lawes Chemical Manure Co. (1874) L.R…….….198
127. White v. Mellin, 1895 AC 154...................................................... 119,129,196,286,288

269  
 
BIBLOGRAPHY
 BIBLOGRAPHY
BOOKS

• Ahuja, V K “Law relating to Intellectual Property Rights”, Lexis Nexis, (2009).

• Arthur R. Miller and Davis, Michael H. “Intellectual property – Patents, Trademarks
and Copyrights”, Thomson West Publishing Co. (2000).
• Bansal, Ashwani Kr. “Law of Trade marks in India with Introduction to Intellectual
Property”, 3rd Edition (2014)
• Bansal, Ashwini Kr” law of Trademarks in India”, New Delhi, Institute of
Constitutional and Parliamentary Studies and CLIPTRADE (2009)
• Cornish & Llewelyn, “Intellectual Property: Patents, Copyright, Trade Marks and
Allied Rights” Sixth edition Sweet & Maxwell, London (2007).
• Cornish & Llewelyn, “Intellectual Property”, Published by Thomson, Sweet &
Maxwell Publication, Edn.V.( 2005).
• Cornish, “Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights”
4th ed. (1999).
• Dr. Singh, S.K “Intellectual Property Laws”, 2nd Edition, Central Law Agency (2013)
• Dr. Wadhera, B.L “Law Relating To Intellectual Property”, Published by Universal
Law Publishing Co., Edition: IV (2007).
• Dugur, S M “Law of Monopolistic and Restrictive Trade Practices”, 385 Wadhwa
&Nagpur (2000).
• Dinwoodie Graeme B. & Janis Mark D, “Trademarks & Unfair Competition Law
Policy”, Fourth Edition, Aspen Publishers, New York (2014).

• Hart Tina & Fazzani Linda, “Intellectual property law”, published by Palgrave
Macmillan, Edition: III (2004).
• Jain, M.P. “Indian Constitutional Law”; Fifth Edition (2003).
• Jalan, P K “Industrial Sector Reforms in Globalization Era”, Sarup and Sons, (2004).
• Kailasam, K.C. & Ramuvedaraman, “Law of Trade -Marks” Nagpur, Wadhwa (2007).
• Kailasam, K.C. “Law of Trademark & Geographical Indications: Law & Practice”,
421 Wadhwa & Nagpur (2003).
• Kane, Siegrun D. “Trademark Law, A Practitioner Guide”, Supplement, Practicing
Law Institute, New York, (1989).

270  
 
 • Kitchen, Kerly, “Law on Trademarks and Trade Names” 13th Edn (Oxford, London).
• Krishnamurthi, S. “Consumer and Law: Redressal of Grievances”, Vinod Law
Publication, (2001)
• Mc Carthy, Thomas “Trademarks and Unfair Competition”, 2nd Edn. West Pub Co.
St. Paul MN, (1984).
• Narayanan, P. “Law of Trademark & Passing Off”, Published by Eastern Law House,
Edition: VI (2006).
• Narayanan, P. “Law of Trademarks and passing off”, 6th Ed., Kolkata, Eastern Law
House (2004)
• Ohly, Ansgar and Spence, Michael, “The Law of Comparative Advertising: Directive
97/55/EC in the United Kingdom and Germany”, Oxford and Portland, Oregon: Hart
Publishing, (2000).

• Phillips, Jeremy, “Trade marks at the limit”, Edward Elgar Publishing (2006).
• R. Chauhan, Meenakshi 'Advertising -The Social Ad. Challenge', Anmole Publication
Pvt. Ltd. New Delhi, (1998).
• Ryder, Rodney, “Brands, Trademarks and Advertising”, LexisNexis Butterworth,
(2003).
• Sachadeva, M. L & Ranganathasamy, N. “Unfair Trade Practices: Cases &
Materials”, Bahri Brothers, New Delhi (1992).
• Sampson, Henry 'History of Advertising', Chatto & Windus, London, (1930)
• Sawant, P.B & Bandhopadhyay, P.K. “Advertising Law and Ethics”, 7-8, Universal
Law Publishing Co. Ltd., New Delhi (2002).
• Singh, Avtar “Competition Law”; Eastern Book Company, 1st Ed (2012).
• Sontakki , C.N. 'Advertising', Kalyani Publishers, New Delhi, (2001)

• Sople, Vinod V “Managing Intellectual Property” PHI Learning Pvt Ltd, (2006).
• Trehan Mukesh & Trehanin, Ranju ‘Advertising and Sales Management ‘, V.K.
(India) Enterprises, New Delhi (2009-2010).

ARTICLES (Journal)

• Abrams, Bill," Comparative Ads Are Getting More Popular, Harder Hitting," Wall
Street Journal (March 11 1982).

271  
 
 • Ahmed, Farooq” Comparative Advertising: Emerging issues” Cochin University Law
Review 22, 340- 349 (Sept 1998).
• Anthony, Matthew “Legal Aspects of Comparative Advertising and a Strategy for Its
Use”, 12 Queensland U. Tech. L.J. 41 (1996).
• Avinash, “Law of Comparative Advertisement: An Analysis”, Amity e-journal for
Law and humanities, Vol.1 Issue1, (2014).
• Banerjee, Arpan” Comparative advertising and the tort of generic disparagement”,
Journal of Intellectual Property Law & Practice, Vol. 5, No. 11,(2010)
• Beller, Jenna D. “The Law of Comparative Advertising in the United States and
Around the World: A Practical Guide for U.S. Lawyers and Their Clients”, The
International Lawyer, Vol. 29, No. 4, pp. 917-944 (Winter 1995).

• Benton, Frederick, “Fairness and Unfairness in Television Product Advertising”,

Michigan Law Review, Vol.76, No.3, pp498-550 (Jan.1978).
• Bernitz, Ulf, “The EC Directive on Comparative Advertising and its Implementation
in the Nordic Countries: Especially in Relation to Intellectual Property”, Stockholm
Institute for Scandinavian Law, Vol.42, pp11-49 (2002).
• Bernstein, Sid “All Advertising Is Negative”, Advertising Age, Oct. 5, (1992).
• Bhardwaj, Kritika “Law on Trademark Infringement in Comparative
Advertisements”, Karnataka Law Journal 3(11), (2010).
• Bodewig, Theo “The Regulation of Comparative advertising in European Union”, 9
Tul. Eur. & Civ. L.F. 179 (1994).
• Bodnar, Peter Miskolczi “Definition of Comparative Advertising”, European
Integration Studies, Miskolc, Volume 3. Number 1. (2004)
• Chakraborty, S. “Why India Adopted new competition Law”, p 6-7, CUTS Centre for
competition, Investment and economic regulation, CUTS International, (2006).
• Colnon, Suzanne B “Comparative Advertising: Whatever Happened to Brand X”, 67
Trademark Rep. 407 (1977).
• Cynthia W, Sharp, “The Intersection of Comparative Advertising and Trademark
Laws in the United States and the European Union”, Nordic Journal of Commercial
• Datta, Ameet, “Comparative Advertising India-Puff under the Scrutiny”, World
Trademark Review, pp-60-61 (Dec-Jan, 2010),

272  
 
 • Dean, O.H “Intellectual property and Comparative Advertising”, 7 Stellenbosch L.
Rev. 25 (1996.)
• Desai, R. Deven and Waller, Spencer, “Brands, Competition, and the Law”, B.Y.U.L.
Rev., Vol.2010, (2010).
• Desai, R. Deven, “From Trademarks to Brands”, Fla. L. Rev., Vol.64, (July 2012).
• "Developments in the Law: Competitive Torts", Harvard Law Review, note, 77, 888-
978 (1964)
• “Developments in the Law: Deceptive Advertising”, Harvard Law Review 80.5 1005–
1163 (1967).
• Dhillon, Rati “Scope of Comparative Advertising in India: a Review of Present Legal
Framework”, Global research Analysis, Vol.2 Issue 12 (Dec.2013).
• Diamond, Sidney A. “The Public Interest and the Trademark System”, 62 J. PAT.
OFF. SOC'Y 528, 537 (1980)
• Dillbary, Shahar, “Trademark as a media for False Advertising”, Cardozo Law
Review, Vol.32,(2009)
• Dole, “The Uniform Deceptive Trade Practices Act: Another Step toward a National
Law of Unfair Trade Practices”, 51 MINN. L. REV. 1005, 1008 (1967).
• Donthu, Naveen “A Cross-Country Investigation of Recall of and Attitude toward
Comparative Advertising”, 27(2) J. Advertising. 111, (1998).
• Fernandes, Semila “Comparative Advertisement And It’s Relation To Trademark
Violation – An Analysis Of The Indian Statute”, Journal of Business Management &
Social Sciences Research (JBM&SSR) Volume 2, No.6, (June 2013).
• Fitzgerald, Darren “Comparative Advertising in the United Kingdom”, 19 E.I.P.R.
(1997)
• Fletcher, S, Fussig, P. & Indraccolo, A., “Comparisons and conclusions: Welcome
clarification from the European Court of Justice on the interpretation of the
comparative advertising directive”. European Intellectual Property Review 25(12),
570-574 (2003).
• Gaughan,” Advertisements Which Identify 'Brand X": A Trialogue on the Law and
Policy”, 35 Fordham l. Rev. 445, 446 (1967).
• Ghosh Abhirup & Kumar, Amit “Comparative advertising: An Emerging
Jurisprudence in Trademark Regime” Madras Law Journal, 248(6) (2010).

273  
 
 • Giges, Nancy “Comparative Ads: Battles That Wrote Do's and Don'ts”, Advertising
Age 59 (September 29, 1980).
• Goel, Sonal ”Comparative advertisement and the Law: The changing face of market”,
International Journal of Research And Analysis Vol. 2, Issue.3, (2014)
• Gokhale, Parth & Datta, Shriyani “Comparative Advertising in India: Evolving a
regulatory Framework”, 4 NUJS L. Rev. 131 (2011).
• Goldman, Lee, “Worlds Best Article on Competitor Suit for False advertising”, Fla.
L. Rev., Vol.45, (July, 1993).
• Gotlieb, Jerry B. and Sarel, Dan “Comparative Advertising Effectiveness: The Role of
Involvement and Source Credibility”, Journal of Advertising, Vol. 20, No. 1 (1991),
pp. 38-45.
• Gottlieb, Norman E. “NAD/NARB-A Voluntary Approach to Abuses in Comparative
Advertising”, 64 TMR 498 (1974).
• Graeme W. Austin, “Trademarks and the Burdened Imagination”, 69 Brooklyn L. Rev.
827 (2004).
• Hayden, Paul T. “A Goodly Apple Rotten at the Heart: Commercial Disparagement in
Comparative Advertising as Common-Law Tortious Unfair Competition”, 76 Iowa L.
Rev. 67(1990)
• Huston, Julia & Peck, Sarah C. “Defamation, Commercial Disparagement, and False
Advertising”, Chapter 9, Business torts in Massachusetts, 1st Edition , (2002)
• Jeon, Ok Jung and Beatly E. Sharon, “Comparative Advertisement effectiveness in
national culture”, Journal of Business Research 55 pp 907– 913 (2002).
• John Wolff, "Unfair Competition by Truthful Disparagement", 47 Yale Law -Journals
1304 (1938)
• Kapnoullas, Stephen and Clarke, Bruce “The Legal Regulation of Comparative
Advertising”, 11 Queensland U. Tech. L.J. 7 (1995).
• Keller, “How Do You Spell Relief? Private Regulation of Advertising under Section
43(a) of the Lanham Act”, 75 TRADEMARK REP. 227, 228 (1985).
• Kiran, Ayushi, “Parody and Comparative Advertisements”, Patent and Trademark
Cases 38(9) pp13-16 (Sept 2008).
• Kirman, Samia M, “Cross-border Comparative Advertising in the European Union”,
B.C. Int'l & Comp. L. Rev, Vol.19, (1996).

274  
 
 • Knight L. Victoria, “Symposium Business Torts in Civil and Common Law Systems:
Unfair Competition”, Tul. L. Rev., Vol.53, pp.164 (Dec. 1978).
• Lee, Jeerome G. “Comparative Advertising, Commercial Disparagement and False
Advertising”, 71 Trademark Rep. 620 (1981).
• Li Y Celia, “Playing with fire: The Risk and Rewards of Comparative Advertising in
China”, World Trademark Review, pp-56-57 (Dec-Jan, 2010).
• Magid M. Julie, Cox D. Anthony and Cox D. Dena, “Quantifying Brand Image:
Empirical Evidence of Trademark Dilution”, Am. Bus. L.J., Vol.43, pp1 (2001).
• Making a Mark: An Introduction to Trademarks for Small and Medium-sized
Enterprises by WIPO, (2003).
• McDougall, Gordon H. G., "Comparative Advertising: Consumer Issues and
Attitudes," in Contemporary Marketing Thought, B. A. Greenberg and D. M.
Belenger, eds. Chicago, Illinois: American Marketing Association, 286-91 (1977).
• Mills, Belinda “Comparative Advertisement –Should it be allowed in the United
kingdom”, 86 Trademark Rep. 174 (1996).
• Miskolczi- Bodnar, Peter, “Definition of Comparative Advertisement”, European
Integration Studies, Vol.3, No.1, pp25-44 (2004).
• Mittal Rajat & Singh, Ashiwarya "Comparative advertising: An eye for an eye
making the consumer blind”, Journal of Intellectual property rights, Vol.13, (January
2008).
• Muehling, Darrel D. and Kangun, Norman “The Multi-Dimensionality of
Comparative Advertising: Implications for the Federal Trade Commission”, Journal
of Public Policy & Marketing, Vol. 4 (1985).
• Nair, Manisha Singh “Comparative advertising in Indian legal regime”, Entertainment
Law Review, (2009).
• Nair, Manisha Singh” Comparative advertising in the Indian legal realm”,
Entertainment Law Review, (2009).
• Naser, Mohammad Amin “Re-Examining the Functions of Trademark Law”, 8 Chi.-
Kent J. Intell. Prop. 99 (2008).
• Nebbia, Paolisa “Competition Law and Consumer Protection against unfair
Commercial Practices: A more than complimentary relationship” in The Global
Limits of Competition Law, edited by Ioannis Lianos, D. Daniel Sokol, Stanford
University Press,(2012)

275  
 
 • Nye, Stephen “In Defence of Truthful Comparative Advertising” 67 Trademark Rep.
353 (1977).
• Parth and Shreya, “Comparative advertising in India: Evolving a Regulatory
Framework”, 4 NUJS Law Review 131, (January-March, 2011).
• Pathak, Akhileshwar “Legal response to Economic liberalization: The case of unfair
trade practices”, Vikalpa, Vol.29, No.3, (July-Sept 2004).
• Petty, Ross D "FTC Advertising Regulation: Survivor or Casualty of the Reagan
Revolution," American Business Law Journal, 29 (4).
• Petty, Ross D “The Evolution of Comparative Advertising Law: Has the Lanham Act
Gone Too Far”, Journal of Public Policy & Marketing, Vol. 10, No. 2, Environmental
Problems and Marketing, pp. 161-181(Fall, 1991).
• Petty, Ross D. “The U.S. International Trade Commission: Import Advertising Arbiter
or Artifice”, 17 N.C. J. Int'l L. & Com. Reg. 45, 68-69 (1992).
• Petty, Ross D. and Paul M. Spink, “Comparative Advertising Law in the European
Community: Will the Proposed Directive Harmonize across the Atlantic?” Journal of
Public Policy & Marketing, Vol. 14, No. 2, pp. 310-317(Fall, 1995).
• Pompeo, Paul E. “To Tell the Truth: Comparative Advertising and Lanham Act
Section 43(a)”, 36 Cath. U. L. Rev. 565, 565 (1987).
• Preston, Ivan “"False or Deceptive Advertising Under the Lanham Act: An Analysis
of Factual Findings and Types of Evidence", Trademark Reporter, 79(4), 508-553
• Reichman, Courtland L and Cannady M. Melissa, “False Advertisement under the
Lahmen Act”, Franchise Law Journal, Vol.21, pp187 (2002).
• Rennhak, C. and Schwaiger, M., “Can Comparative Advertising is effective in
Germany? A Tale of two campaign”, Journal of Advertising Research, Vol. 47(1),
pp2-13(2007)
• Romano, Charlotte J. “Comparative Advertising in the United States and in France”,
25 Nw. J. Int'l L. & Bus. 371 (2004-2005).
• Roy, Souvik and Samanta, Navajyoti “Comparative analysis of Advertising Rules and
Regulations in India and the EU”, Vol 1 LSEU addnl. (2013) Contribution.
• Rutherford, BR “Trademarks and Comparative Advertising”, the Comparative and
International Law Journal of Southern Africa, Vol. 43, No. 2 pp. 173-189. (JULY
2010),

276  
 
 • Salhotra, Anuradha “Beware India's comparative advertising rules”, No. 194
Managing Intell. Prop. 26 (November 2009).
• Schechter, Frank “The rational basis of Trade mark protection”, 40 Harvard Law
Review Volume 813 (1927).
• Sharma, Khushi & Sharma, Shaili “The Era of Combative advertising in India”,
Wisdom Voyage, Journal of Management Experts, Vol.1, Issue 1, (March 2011).
• Shukla, Uphar “Comparative Advertising and Product Disparagement vis-a-vis
Trademark Law”, Journal of Intellectual Property Rights, Vol II p.409-414.
(Nov.2006).
• Singh, Meghna “Comparative Advertising Effectiveness with Legal and Cross Culture
Framework”, International Journal for Research in Management and Pharmacy, Vol.
3, Issue 3, (April 2014)
• Singh, Vijay Kumar “Competition Law and Policy in India: the journey in a Decade”,
4 N.U.J.S. L.Rev.523 (2011).
• Spink, P. & Petty, R., “Comparative advertising in the European Union”,
International and Comparative Law Quarterly 47, 855-876 (1998).
• Steckler, Brunhilde and Bachmann, Frank “Comparative Advertising in Germany
with Regard to European Community Law”, 10 E.I.P.R (1997).
• Stephenson, Paul “Comparative advertising and Intellectual Property Rights”,
European Intellectual Property Review, (2006).
• Sterk, Stewert E. “The Law of Comparative Advertising: How Much Worse is
‘Better’ Than ‘Great’,” 67 Trademark Rep. 368 (1977).
• Tackaberry, Paul “Comparative Advertising in Hong Kong: Denigration and
Competition”, 5 Asia Pac. L. Rev. 68 (1996-1997).
• Tepper, Maurya, “False advertising Claims and the Revision of the Lanham Act: A
step in which direction”, U. Cin. L. Rev., Vol.59, pp.957 (1991).
• The Law of Commercial Disparagement: Business Defamation's Impotent Ally, 63
Yale L.J. 65 (1953).
• The Regulation of Advertising, Columbia Law Review, Vol. 56, No. 7, pp. 1018-
1111, (Nov., 1956).
• Thomas. Zakir, “IP Case Law Developments”, Journal of Intellectual Property Rights
Vol.14, pp532-541 (Nov.2009).

277  
 
 • Thomas. Zakir, “IP Case Law Developments”, Journal of Intellectual Property Rights
Vol.11, pp359-363 (Sept.2006).
• Thomson, David I. C “Problems of Proof in False Comparative Product Advertising:
How Gullible is the Consumer?” 72 Trademark Rep. 385, 386 (1982).
• Verma, D.P.S “Advertising and the Law”, Journal of Indian Law Institute, Vol.48 (2),
(2006, April.-June).
• Villafranco, John E. “The Law of Comparative Advertising in the United States”, IP
Litigator, Vol.16, Aspen Publishers (Jan-Feb 2010)
• Villafranco, John E. and Lustigman, Andrew B. “Regulation of Dietary Supplement
Advertising: Current Claims of Interest to the Federal Trade Commission,” Food and
Drug Administration and National Advertising Division 62 Food & Drug L.J . 709,
710 (2007).
• Wilke and Ferris, 'Comparison Advertising: Problems and Potential’ 39 Journal of
Marketing 7-15 (1975).
• William M. Pride, Dr. Charles Lamb, Jr. and Barbara A. Pletcher, “The
Informativeness of Comparative Advertisements: An Empirical Investigation”, 8 J
Advertising 29, 35 (Spring 1979).
• Wright, B., and Morgan, F., ‘Comparative Advertising in the European Union and the
United States: Legal and Managerial Issues’, Journal of Euro marketing, 11(3), 7-
31(2002)

ARTICLES (Online)

• Agarwal, Sanchit “Competition Law and Protection of Consumer Interest”, Research

paper submitted to Competition Commission of India on 11th Aug.2011, available at
http://cci.gov.in/images/media/ResearchReports/SanchitInt260811.pdf.
• Aggarwal, Hitesh “Comparative Advertisements: IPR Infringement vis-à-vis
Balanced Approach”, available at http://rostrumlegal.com/comparative-
advertisements-ipr-infringement-vis-a-vis-balanced-approach/
• Ahmed Rawi, “Importing a Reference and comparative advertisement”, available at
http://documents.mx/documents/sample-assignment-comparative-trademark-law-
uk.html.

278  
 
 • Anand Safir & Katyayan, Shivli “Legal issues in advertising: major implications for
IP rights” available at http://www.lexology.com/library/detail.aspx?g=15090c39-
9709-4e08-8090-1c0ca5e6d83b.
• Anand, Safir & Sharma, Swati “Trademarks: evolving law in India”, Intellectual Asset
Management (May/June 2013).Source: www.iam-magazine.com.
• Anand, Tuhina “Comparative advertising: Too hot to handle”, available at
http://www.exchange4media.com/33411_comparative-advertising-too-hot-to-
handle.html.
• Bafna, Puneet &Dr. Rajpurohit, G.S “Comparative Advertising: An Incentive or a
Jeopardy”, Vol 4 Issue 8 August 2004 available at
https://www.worldwidejournals.com/ijar/file.php?val=August_2014_1406901206__8
4.pdf.
• Banerjee, Rajarshi “Freedom of commercial Advertisement”, Available at
http://www.academia.edu/938632/Freedom_Of_Commercial_Advertisements_In_Indi
a.
• Bansal, Priya “Use of Trademark in Comparative Advertising: Situation in India”,
available at http://www.legalserviceindia.com/articles/tadv.htm.
• Barigozzi, Francesca and Peitz, Martin, “Comparative Advertising and Competition
Policy” (August 2004). International University in Germany Working Paper No.
19/2004. Available at SSRN: http://ssrn.com/abstract=699583 or
http://dx.doi.org/10.2139/ssrn.699583
• Barigozzi, Francesca and Peitz, Martin, “Comparative Advertising and Competition
Policy”, (2004) International University in Germany Working Paper No.19/2004
available at SSRN: http// ssm.com/abstract=699583.
• Barooah, Swaraj Paul & Bhattacharya, Shivaji “Comparative Advertisement;
Balancing Consumer interest vis-a- vis IPR Infringement” available at
http://www.nalsar.ac.in/IJIPL.
• Bonewitz, Paul, “Beyond Confusion: Re-examining Trademark Law’s Goals in the
World of Online Advertising”, St. John’s Law Review, Vol.81, Iss.4, Article 6
available at http://scholarship.law.stjohns.edu/lawreview/vol81/iss4/6
• Chhabra Medha, “Comparative Advertising in India”, (2011), available at SSRN:
http// ssm.com/abstract=1654556.

279  
 
 • Das, Pradip Kumar “Comparative Advertising And Trademark Infringement–The
Indian Scenario” available at http://www.legalserviceindia.com/article/l180-
Advertising-And-Trademark-Infringement.html
• Dr. Chakroborty, S. “MRTP Act metamorphoses into the Competition Act”, available
at http://www.cut.international.org/doc.
• Gadhre, Avinash “Advertising – Its Evolution, Significance & Effects”, Source:
http://www.legalservicesindia.com/article/article/advertising-534-1.html,
• Gangwar, Pinkeshwar, “Comparative Advertisement and Infringement of Trademark”
(June 19, 2013). Available at SSRN: http://ssrn.com/abstract=2281768 or
http://dx.doi.org/10.2139/ssrn.2281768
• Goel, Hemant “India: Advertising and Marketing Advertising Law”, Global Jurix,
Advocates & Solicitors, India, available at http://www.globaljurix.com/our-
publications/advertising-and-marketing-law-india.pdf.
• Goel, Shivam “Trademark Disparagement & Advertising Ethos-Pathos: India”,
available at: http://ssrn.com/abstract=2589209.
• Goel, Shubhangi “Protecting Consumer Interests under Competition Law”, available
on http://www.cci.gov.in
• Grigoriadis, Lazaros G. “Comparing Trademark Protections in the Comparative and
keyword advertising in the US and European Union”, available at
http://ssrn.com/abstract=2523059.
• Han, Nguyen Mai “A comparative study of comparative advertising in Vietnamese
and English law”, available at
http://privat.bahnhof.se/wb250067/buongiorno/vietnam/documents/theses/Nguyen%2
0Mai%20Han.pdf.
• Harms, LTC “The enforcement of Intellectual Property Rights”, a Case book,3rd
Edition, (2012) available at
http://www.wipo.int/edocs/pubdocs/en/intproperty/791/wipo_pub_791.pdf
• Jain, Tarun, “Rin v Tide: The Legality of Comparative advertisement Revisited”,
available at http://legalperspectives.blogspot.in/2010/03/rin-v-tide-legality-of-
comparative.html#links.
• Kaushik, Rajiv, “Comparative Advertising and its Status in India”, International
Journal of Computational Engineering & Management, Vol. 15 Issue 3, (May 2012).
Available at http://www.ijcem.org/papers052012/ijcem_052012_11.pdf.

280  
 
 • Keshav S. Dhadak and Mittal, Vaishali “India: How to Gain from Comparative
Advertising” available at
http://www.managingip.com/Article.aspx?ArticleID=1321496.
• Kumar, Pradip, “Comparative Advertising And Trademark Infringement- The Indian
Scenario”, (2008), available at http://www.legalserviceindia.com/article/l180-
Advertising-And-Trademark-Infringement.html
• Lott, Leslie J “Intellectual Property Issues in Comparative Advertising”, available at
http://lottfischer.com/articles/IP%20Issues%20in%20Corporate%20Advertising.pdf.
• Lurie, Mark David “Issue Advertising, Commercial Expressions, and Freedom of
Speech: A Proposed Framework for First Amendment Adjudication”, 28 B.C.L. Rev.
981 (1987), http://lawdigitalcommons.bc.edu/bclr/vol28/iss5/4.
• Mehra, Aparna “Competition Law: Ambiguity ends”, First Published: Sun, Sep 13 2009,
available at
http://www.livemint.com/Politics/vQBmzYEOwandQFcSzAVpgO/Competition-law-
the-ambiguity-ends.html.
• Mishra, Ankur “Comparative Advertising: Comparative study on U.S. and India”
(2011) available at, http://www.lawyersclubindia.com/articles/Comparative-
Advertising-Comparative-Study-on-U-S-and-India--4186.asp#.UBFAvGEb994.
• Moitra, Shubhra Deepa “The Code of Self-Regulation in Advertising”, available at
http://www.legalserviceindia.com/article/l275-The-Code-For-Self---Regulation-In-
Advertising.html.
• Nair, Manisha Singh “India: Comparative Advertising Permitted But Not
Disparagement”, available at
http://www.mondaq.com/india/x/59858/Trademark/Comparative+Advertising+Permit
ted+But+Not+Disparagement.

• Naniwadekar, Mihir “Commercial disparagement: A new approach to puffing”, Spicy

IP available at http://spicyip.com/2008/12/commercal-disparagement-new-approach-
to.html
• Niranjan V, “Changing Advertising Practices in India- The end of “Puffery?”(2009),
available at http://indiacorplaw.blogspot.in/2009/10/changing-advertising-practices-
in-india.html
• Pamnani, Honey, “The Legal framework of Comparative Advertising”, available at
http://www.legalindia.in/the-legal-framework-of-comparative-advertising.

281  
 
 • Panjrath, Navpreet and Singh, Kanwardeep “Comparative Advertising: A Brief
Overview”, Available at http://www.manupatrafast.in/pers/Personalized.aspx.
• Pathak, Akhileshwar “Liberation and Law on Comparative Advertising in India”,
available at http://EconPapers.repec.org/RePEc:iim:iimawp:wp01792
• Patil, Anita “A critical comparative study of Misleading advertisements in India: with
special reference to Food, Drugs and cosmetics”, available at
https://researchersclub.wordpress.com/2014/06/15/a-critical-comparative-study-of-
misleading-advertisements-in-india-with-special-reference-to-food-drugs-and-
cosmetics/.
• Ramappa, T. “Repeal of the MRTP Act, 1969: Reducing the Twilight Period”,
available at www.lawyersclubindia.com/articles/print_this_page.asp?article_id=1409
2/5.
• Rennhak, Carsten, Bakay, Zoltan and Strassner Stefan, “Comparative Advertising
Lessons Learned after Deregulation in Germany”, Munich Business School Working
Paper, (2004), available at http://www.munich-business-
school.de/fileadmin/mbs/documents/working_papers/MBS-WP-2004-03.pdf
• Saraf, Rashi, “ Overview of Comparative Advertising Law”,(2008), available at
http://www.legalserviceindia.com/article/l182-Comparative-Advertising-laws.html
• Shanrma, Apoorva “Comparative Advertisement and Infringement of Trademarks: A
perspective from Consumers”, Available at http://ssrn.com/abstract=1896367.
• Sharp, W. Cynthia, “The Intersection of Comparative Advertising and Trademark
Laws in Unites states and European Union”, Nordics Journal of Commercial Law,
Issue1, (2012) available at http://www.njcl.utu.fi/1_2012/cynthia_sharp.pdf
• Singhi, Surbhi “Freedom of Speech and Expression”, available at
http://www.goforthelaw.com/articles/fromlawstu/article16.htm
• Solish, Nick, “Is use of a competitor’s Trademark for advertising Infringement?”
(2011), available at http://lawoftomorrow.com/2011/07/06/is-use-of-a-
competitor%E2%80%99s-trademark-for-advertising-infringement/
• Thakur, Rustam Singh “Judicial view regarding Deceptive Similarity: a Chronological
Case Study”, available at http://ssrn.com/abstract=1955436.
• Tyagi, Apurv “Disparaging Advertising and the Media War”, India Law Journal, Vol.
6 Issue.1, Available at http://indialawjournal.com/volume6/issue_1/article9.html.

282  
 
 • Vadehra, Sharad “Comparative Advertising: Increasing Incidents in India”, Kan and
Krishme Attorneys at Law. Available at
http://www.lawgratis.com/2016/03/03/comparative-advertising-comparative-study-
on-u-s-and-india/
• Verbauwhede, Lien, “Intellectual Property Issues in Advertising” (2005), available at
http://www.wipo.int/sme/en/documents/ip_advertising.htm.
• Wildes, Joy J. and Singer, Brooke Erdos “Ours Works Better”: Use of a Competitor’s
Trademark in Advertising”, available at http://corporate.findlaw.com/intellectual-
property/ours-works-better-use-of-a-competitor-s-trademark-in-advertising.html.

OTHERS

• Chidambaram P. “Law and Commerce: And the twain shall Meet”, Sunday Express,
Ahmadabad, 26 (Oct 2003).
• Competition Law Bulletin, “An Overview of Competition Act, 2002”, Issue Sept-Oct
2009, Vash Associates and official website of Competition Commission of India,
www.cci.gov.in.
• Fraser, Brian, Grad, David and Hearn, Bill, “Mine’s Better than Yours: Managing
Legal Considerations in Comparative Advertising Campaigns”, 14 Annual
Advertising & Marketing Law Conference, The Canadian Institute, January 24-25,
Toronto (2008).
• Glöckner, Jochen “To what extent can intellectual property rights (trademarks,
patents, designs, copyrights, designations of origin) limit comparative advertising?,
International Report rendered to the International League of Competition Law (LIDC)
on the annual meeting 2010 in Bordeaux, final version Oct. 4, 2010. Available at
https://www.wettbewerbszentrale.de/media/getlivedoc.aspx?id=30166.
• Kamvounias, Patty. “Comparative Advertising and the Law: Recent Developments in
the European Union”. European Applied Business Research (EABR) Conference
proceedings-ISSN 1539-8757, Dublin, Ireland (June 7-10, 2010).
• Morasch, Manuel, “Comparative Advertising - A Comparative Study of Trade-mark
Laws and Competition Laws in Canada and the European Union”, (2004). University
of Toronto, Faculty of Law - Dissertations, Thesis. Available at SSRN:
http://ssrn.com/abstract=685602

283  
 
 • Report of High Level Committee on Competition Policy and Law, May 2000,
Available at www.nic.in/dca/comp.
• S. Reid, Amanda “Trademark Dilution Law: A cross disciplinary examination of
dilution and brand equity scholarship”, Dissertation presented to Florida University.
Available at http://etd.fcla.edu/UF/UFE0008360/reid_a.pdf.
• See Preamble of Directive 97/55 and European Association of Commercial
Communications Agencies (EACA) at http://www.eaca.be affirm that “comparative
advertising, when correctly done is a desirable means of product communication.”
• Statutory Instrument 2000 No. 914.
• Tam, Phan Ngoc “Well Known Trademark Protection- A Comparative study between
the laws of European Union and Vietnam”, Doctoral Dessertation Submitted to Lund
University, Hochiminh city. Available at http://text.123doc.org/document/2240392-
well-known-trademark-protection-a-comparative-study-between-the-laws-of-
european-union-and-vietnam.htm.
• Thapliyal, Arvind “Comparative advertising; Indian Perspective”, Newsletter, Indian
Legal Impetus, Vol.V, Issue III.
• The Hindu: “tribunal Inaugurated”, October 20, 2009
http://www.thehindu.com/todays-paper/tp-national/tribunal-
inaugurated/article165259.ece

284  
 
PUBLICATIONS
 LIST OF PUBLICATIONS

1. “Comparative Advertising: Problems and Potentials under Trademark Law in India”-

International Journal of Law and Legal Jurisprudence Studies, Vol.3 Issue 1,
ISSN: 2348-8212

2. “Examining the Legal Provisions on Comparative Advertising in India”-

Journal of Legal Studies and Research, Vol.2 Issue 5,
ISSN: 2455-2437
 International Journal of Law and Legal Jurisprudence Studies :ISSN:2348-8212:Volume 3 Issue 1 27

COMPARATIVE ADVERTISING: PROBLEMS AND

POTENTIALS UNDER TRADEMARK LAW IN INDIA

**PROF. M AFZAL WANI

Professor& Dean
University School of Law and Legal Studies
Guru Gobind Singh Indrapastha University, Delhi, India

*Mrs. SHIKHA SHARMA

PhD Research Scholar
University School of Law and Legal Studies
Guru Gobind Singh Indrapastha University, Delhi, India

Abstract: This article emphasis on the concept of trademark infringement, comparative advertisement and
when such advertising results into infringement of trademark. It further illustrates the existing legal mechanisms in
India to control disparagement in comparative advertising and also recent judicial pronouncements in India on the
same. The author is of the view that more stringent and effective legal provisions should be incorporated in the
existing Trade Mark Act, 1999 to prevent the commercial disparagement in comparative advertising. The
Author also suggests some measures to prevent disparaging in comparative advertising.

Keywords: Comparative advertising, advertiser, competitor, trademark, unfair trade practice, disparagement

Introduction

In this epoch of ferocious competition, antagonistic promotion and battle of brands,

comparative advertising is a very relevant and definitely an interesting phenomenon. We are
living in this global village where advertisers are continually trying to dominate the fame by
promoting their brand and stating their own products are better than any other in the market.
Advertising has become a serious and big business where brands compete with each other by top
notch marketing and constant comparison of the merits and demerits of the other brands to
prove that one is better than the other. The motive behind such marketing is to create more
consumer demand and therefore more sales henceforth more profit, like a chain reaction.
Advertisements build up a psychology in consumers mind of what is good an appealing to the
 International Journal of Law and Legal Jurisprudence Studies :ISSN:2348-8212:Volume 3 Issue 1 28

eye as a consequence of which the consumer generally get attracted to the more advertised
product and ignore the less advertised one. Advertisements create brand image and reinforce it
time and again. It intends to create brand loyalty amongst the users of a particular brand.

Advertising has become an omnipresent phenomenon. From the unknown street vendor to the
multi-billionaire multinational corporation, everybody is advertising there goods and services.
From drum beating to You Tubing, advertising has definitely come of age. It has become a
glamorous multibillion dollar business A sophisticated, fascinating, eye-catching and larger than
life industry with the ultimate purpose of standing out amongst others in public eye and making
money out of the same. Described as the life blood of free media, it has now become the life
blood of competition in market.

It is seen that a tradesman is entitled to declare his goods to be best in the world, even though
the declaration may be untrue reason being that every individual has the right to believe he is the
best and his product is also the best. For the purpose of proclaiming his goods as being the best
in the world he might be tempted to compare the advantages of his goods over the goods of
others. However, while saying his goods are better than his competitors', can one be allowed to
say that the competitors' goods are bad? Another issue here is that whether a seller's use of a
competitor's trademark in advertisement which compares the relative qualities of the competitive
goods would constitute trademark infringement? The paper seeks to analyse the intricacies of law
involved in the concept of comparative advertising in relation with trademark infringement.

TRADEMARK LAW IN INDIA

A trademark is a word, name, or symbol that a seller uses to distinguish goods from those
manufactured or sold by others. It simply means a mark capable of being represented graphically
and which is capable of distinguishing the goods or services of one person from those of others.
Registration of trademark is not mandatory but in the present day scenario there is increasing
infringement and a lot of cases are challenged so it is advisable to register Trademarks. There is
also a need for trademarks to be globally protected. This is said because most have regional or
local name brands and most constantly push these weak names while struggling to get global
clearance. A trademark can thus be called a device that gives distinctiveness and a mode of
identification to a particular product or service.

The main rationale behind trademark is to differentiate the goods of one person from that of
another. Therefore a trademark enables a consumer to identify the goods and their origin. This
source and identification being the primary function, the secondary function of trademarks is
signifying quality, advertising the product and provide information to the budding consumers.
Trademarks categorize products and services to the consumer and the advertiser endorse its
products and services through the use of trademarks. The advertising function aids in preventing
of the distraction of sales to other undertakings. Trademarks also play an important role in
providing consumers with the essential amount of information that needs to be communicated.
 International Journal of Law and Legal Jurisprudence Studies :ISSN:2348-8212:Volume 3 Issue 1 29

In reality, some of the functions of advertising can be said to be identical with the function of
trademarksand when a consumer buys an advertised product it is the because of the
acknowledgment of the trademark of the product.

Advertising is extremely significant for businesses, since it is the medium through which
companies communicate their brand and products to consumers. Advertisements help
companies to build brand equity. It is important to project brand image correctly in an
advertisement, as this can leave a lasting impression in consumers’ minds. Care must be taken
not to use the brand in a descriptive or generic manner, and use of the trademark must be
consistent In case if the mark is so close to its rival that the average buyer is likely to be deceived
or confused regarding the source of goods or services then it would raise issues related to
trademark infringement.

Trademark Infringement is a violation of exclusive rights attaching to a trademark without the

authorization of the trademark owner or any licensee. There are two types of remedies accessible
to the holder of a trademark for unlawful use of its replication by a third party. These remedies
are: an action for passing off in the case of an unregistered trademark and an action for
infringement in case of a registered trademark. An infringement action and an action for passing
off are quite different from each other, an infringement action is a statutory remedy and an
action for passing off is a common law remedy. If trademark owners do not hold registrations
for their marks, the extent to which they will be able to enforce their rights through trademark
infringement proceedings will therefore be limited. The Trademark law is very comprehensible
about the infringement of trademarks. Section 29 of the Trade Mark Act, 1999 deals in detail
about the infringement provisions. Section 29 (1) says that a trademark is infringed by a person
who uses the trademark despite not being a registered proprietor and not having the right to use
that particular trademark. Moreover, this mark should be used in the course of the trade. This
use should in a way mislead the consumers making them believe that the goods belonged to the
registered proprietor of the trademark. The other sub provisions also deal with various aspects of
infringement, such as the rights of the company whose trademark has been infringed by other
company who uses the trademark without any lawful right to use it.

On the other hand comparative advertisement constitute trademark infringement if it is without

due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the
trademark

CONCEPT OF COMPARATIVE ADVERTISING

“Anything his can do, mine can do better!” This adage sums up the essence of comparative
advertising. There was a time when it was customary in the advertising trade not to even hint at
the identity of competitors. But times change and so does the practices of trade and business.
This custom too changed and many advertisements now show the competitor's goods, identify
them by the trademark, and even invite the buyer to make comparisons. It is a marketing
strategy used by the companies in promotion of their products to attract instant attention.
‘Comparative advertising’ is the term used to describe advertisements where the goods or
 International Journal of Law and Legal Jurisprudence Studies :ISSN:2348-8212:Volume 3 Issue 1 30

services of one trader are compared with the goods and services of another trader. Article 2(c) of
the Directive 2006/114/EC of the European Parliament and of the Council Concerning
Misleading and Comparative Advertising defines ‘comparative advertising’ as ‘any advertising
which explicitly or by implication identifies a competitor or goods or services offered by a
competitor.’

Typically, comparative advertisements contain more or apparently more information than

“normal” advertisement that rely upon traditional salesman “puffery”, and that raises the
possibilities of benefit to the public as well as the chances of abuse of the same. Comparative
advertising enables advertisers to objectively demonstrate the merits of their products. It
improves the quality of information available to the consumers enabling them to make more
informed decisions relating to the choices available to them as between competing
products/services by means of demonstrating its merits over various comparable products.
Based on this information, consumers may make informed and therefore efficient choices.
Comparative advertising aiming to inform the consumer, objectively and truthfully, promotes the
transparency of the market. Market transparency is deemed to benefit the public interest as the
functioning of competition is improved resulting in keeping down prices and improving
products. Comparative advertising stimulates competition between suppliers of goods and
services to the consumer's advantage.

The concept of comparative advertising is construed broadly to include personal comparative

advertising, objective comparative advertising, positive or parasitic comparative advertising,
negative or critical comparative advertising. It is not necessary for the express or tacit, direct or
indirect, reference to the competitor to be identifiable. It can occur without any use of the
competitor’s trademark at all. Comparative advertising may refer to an indeterminate number of
competitors. Thus, advertising claiming the superiority or uniqueness of a product constitutes a
form of comparative advertising.

ANALYSIS OF COMPARATIVE ADVERTTISING UNDER

TRADEMARK REGIME

An important aspect of advertising is the use of trademark of the product or service. What is
most conspicuous in an advertisement is the trademark of the product. What sells is the brand
name or the trademark. It is the trademark with which the consumers associate the product
shown in the advertisement. For example seeing the symbol “M” which is the distinct trademark
of McDonalds on a hoarding or on television what flashes in the minds of the public is the
famous American fast food chain. Consumers associate product/goods /service with the
symbol/trademark that is marketed for ease of promotion. It wouldn’t be an exaggeration to say
that we live by symbols and buy goods by them as well. A trademark is a form of a
merchandising shortcut which induces a purchaser to select what he wants or made to believe
that he wants.
 International Journal of Law and Legal Jurisprudence Studies :ISSN:2348-8212:Volume 3 Issue 1 31

The advertisement uses the power of the symbol/mark to draw the prospective consumer
towards his product. It is through the advertisement of the mark that the desirability of the
commodity is conveyed to the minds of the potential customers. The trade mark has become the
outward expression of goodwill, the inanimate, intangible thing that has come to connect the
goods with a person. Trademarks create goodwill for the trademark owner as the owner puts his
efforts into the promotion of the mark. When a purchaser wants or believes he wants the goods
or services symbolized by the trademark, that desire is created by goodwill.

The traditional trademark protection doctrine is based on the identification of the source of
particular goods and services. The orthodox justification for protecting trademarks is that
trademarks enhance the efficient functioning of a competitive marketplace by ensuring that
consumers can either find goods from the same source as goods they have enjoyed previously, or
can find goods whose reputation has been advanced through advertising. This source and
identification being the primary function, the secondary function of trademarks is indicating
quality, advertising the product and providing information to the potential consumers.
Trademarks identify products and services to the consumer, and the advertiser promotes its
products and services through the use of trademarks. The advertising function assists in
preventing of the diversion of sales to other undertakings. Trademarks also play an important
role in providing consumers with the necessary amount of information that needs to be
communicated. In fact, some of the functions of advertising can be said to synonymous with the
function of trademarks and when a customer buys an advertised product it is the because of the
recognition of the trademark of the product.

As per the traditional theory of trademark protection the law guarantees the owner, the exclusive
right to use the mark for the purpose of identification of his goods and services. This right is
protected by the trade mark law against the commercial use of the mark by others, if the use is in
any ways likely to deceive the consumers or susceptible to cause confusion. Trade mark laws in
general do not prohibit the non-confusing use of another's trade mark. Now this poses an
interesting situation when a competitor uses somebody else’s trademark not with the intention of
causing confusion as to the origin or source but still may cause harm to the trademark owner.
Use of rival company’s trademark in comparative advertising is one such instance. A comparative
advertiser uses the trademark of the compared product to identify product quality and not
product source and in seen in light of the traditional theory of protection of trademark such use
cannot violate the right of the trademark owner. However, considering the secondary function of
trademark as a tool of advertisement and promotion, it is interesting to see whether the use of
competitor’s trademark while comparing it with one’s own amounts to trademark infringement
or not.

The general approach of the courts while deciding such cases has been to permit comparative
advertisement so long as such advertisement was not detrimental to and did not take unfair
advantage of a registered trademark.

The Trade Marks Act, 1999, has incorporated provisions relating to comparative advertising
under Sections 29(8) and 30(1). Section 29(8) of The Trademarks Act, 1999 enunciates situations,
when the use of a trademark in advertising can constitute infringement. It says that any
advertising which is not in accordance with honest practices; or is detrimental to the distinctive
 International Journal of Law and Legal Jurisprudence Studies :ISSN:2348-8212:Volume 3 Issue 1 32

character, or to the repute of the mark, shall be an act constituting infringement. At the same
time section 30(1) makes comparative advertising an exception, to acts constituting infringement
under section 29. It provides that any advertising which is in accordance with honest practices,
and does not cause detriment to the distinctive character or to the repute of the trademark will
be permissible and will not constitute infringement.

Thus, non honest practices or the use of trademark that is detrimental to the reputation or
distinctiveness of the mark is the only grounds of infringement. The term “honest practice” is
nowhere defined. By its very nature, the concept must allow of a certain amount of flexibility. Its
detailed contours may vary from time to time and according to circumstances as well as the
changing perceptions of what is acceptable. According to Kerly, the term ‘honest practices’ is a
hybrid derived originally from the Paris Convention (article 10 bis), “honest practices in industrial
and commercial matters” (and now in article 6 of the Trademarks Directive of European Union)
and words found in articles 4 and 5 of the Directive: “where use of sign without due cause takes
advantage of, or is detrimental to, the distinctive character or repute of the trademark.”

The meanings of the expressions ‘in accordance with honest practices’ and ‘is not such as to be
detrimental to repute of the trademark’ appear to be intertwined- any comparison, which causes
detriment to the reputation of a trademark owner, should be dishonest. At the same time, while
making a comparison a trader cannot say that the goods of a competitor are undesirable or bad
because that would amount to slandering or defaming the competitor and his goods, which
would not be in accordance with honest practices, as it would be detrimental to the reputation of
a trademark. In case, if no derogatory reference has been made, no action lies against the
advertiser, even if the advertisement does not compare like with like and is untrue, as an
advertisement has to be ‘significantly misleading’ in order to be dishonest. Thereby in case, the
substance of the comparison remains true, the fact that representation is ‘literally false’ will not
render the advertisement dishonest.

Further, the question whether a particular advertisement is ‘honest or not’ is greatly open ended,
and is to be decided from the perspective of a reasonable consumer i.e. whether a reasonable
consumer presumed to ignore claims that are considered to be exaggerated, hyperbole, would be
likely to say that the advertisement is honest. There is, however a large and clearly shared core
concept of what constitutes honest conduct in trade, which may be applied by the courts without
great difficulty and without any excessive danger of greatly diverging interpretations Statutory or
industry agreed codes of conduct are not sufficient guide as to whether a practice is honest for
the purposes of Section 29 (8) and Section 30 (1). Honesty has to be gauged against as what is
reasonable for the relevant public of advertisements for the goods or services in use. Also, the
burden of proof remains upon the trademark owner that the unauthorized use of his mark is not
honest, and not upon the user of the mark.

JUDICIAL APPROACH

Indian judiciary has been very vigilant in guarding in the interest of the consumers as well as that
of the corporations whose products are seeks to denigrate. The courts have over the time
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evolved certain guidelines to check whether there has been any infringement of the rights of the
owner or his goods are disparaged through comparative advertising. In Reckitt & Colman of India
Ltd. v Kiwi T.T.K. Ltd. the court held that –

“I.)A tradesman is entitled to declare his goods to be best in the words, even though the
declaration is untrue. II) He can also say that my goods are better than his competitors',
even though such statement is untrue. III) For the purpose of saying that his goods are
the best in the world or his goods are better than his competitors' he can even compare
the advantages of his goods over the goods of others. IV) He, however, cannot while
saying his goods are better than his competitors', say that his competitors' goods are bad.
If he says so, he really slanders the goods of his competitors. In other words he defames
his competitors and their goods, which is not permissible. V) 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 above principle that while praising its product, an advertiser cannot describe the
competitor's product as inferior, thereby damaging its reputation has been reiterated in
many cases.

In Eureka Forbes Ltd., v. Pentair Water India Pvt. Ltd., while reiterating the principle laid down in
reckitt (1996) held that advertisement is a disparaging one, even in generic sense and hence is
actionable and a disparagement can be restrained even at instance of a party who manufactures
or trades in that class of goods.

In Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr. the court held that

“In the electronic media the disparaging message is conveyed to the viewer by repeatedly
showing the commercial everyday thereby ensuring that the viewers get clear message as
the said commercial leaves an indelible impression in their mind and so in order to
decide the question of disparagement, the following factors have to be kept in mind: (i)
intent of the commercial; (ii) manner of the commercial; (iii) story line of the commercial
and the message sought to be conveyed by the commercial. Out of the above, "manner
of the commercial", is very important. If the manner is ridiculing or the condemning
product of the competitor then it amounts to disparaging but if the manner is only to
show one's product better or best without derogating other's product then that is not
actionable.”

In Reckit Benckiser (India) Limited v. Naga Limited and Ors the court while expressing its
disappointment over not having an authority to check false advertising held that .

“If a competitor makes the consumer aware of his mistaken impression, the Plaintiff
cannot be heard to complain of such action. I find it difficult, nay impossible, to hold a
party liable for libel when all that has been stated by the competitor is the truth. Truth is
always a complete defense against any assault or challenge regardless of whether any
damage is sustained as a result of it”.
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In Dabur India Ltd v. Wipro Limited

In comparative advertising, a consumer may look at a commercial from a particular point of view
and come to a conclusion that one product is superior to the other, while another consumer may
look at the same commercial from another point of view and come to a conclusion that one
product is inferior to the other. Disparagement of a product should be defamatory or should
border on defamation, a view that has consistently been endorsed by this Court. A manufacturer
of a product ought not to be hyper-sensitive in such matters. It is necessary to remember that
market forces are far stronger than the best advertisements. If a product is good and can stand
up to be counted, adverse advertising may temporarily damage its market acceptability, but
certainly not in the long run. The court also said that matter regarding truthfulness of the content
of advertising has to be considered (if it at all arises) at the stage of trial but until then the
defendant cannot be allowed to go on defaming the Plaintiff on its submission that what it is
saying is the truth.

CONCLUSION

“All that glitters is not gold” goes the old adage. And this is apt for advertising industry.
Advertisements luring people with subtle truth and lies are inundating the mass media. In times
of cut throat competition warring corporations are coming up with more and more sophisticated
means of advertising. Comparative advertising is one of the most fascinating techniques adopted
by them. Comparative advertising is no doubt one of the most effective methods for advertising.
It arouses consumer interest in the product and at the same time promotes competition in the
market. It encourages the producers of goods and providers of services to raise their standards
to meet the competition. It also helps the consumers in making informed choices. But it is not
always that what the consumers are being told is the truth. It can be false, misleading and
deceptive.

In the interest of consumers it is highly desirable to have a regulatory advertising regime. In case
of disparagement the corporations have only recourse to the trademark Act for protection of
infringement of trademark and common law remedies for disparagement. What are honest
practices under the trade law is a subjective term. There should be a body to lay down guidelines
as to what constitutes such practices. We have High courts Judgements regarding disparagement
in comparative advertisement. What is evident from the judgments is that the courts approach
has been to protect the goodwill of the owner. We do not have comparative advertisement
directives like that in Europe. There should be a commission to regulate advertising practices in
the mass media.

REFRENCES

1. Roy S. and Samanta N., (2013) A Comparative Analysis of Advertising Rules and Regulations in India and
the EU, Vol 1 LSEU addnl. 2013 Contribution
2. For details on evolution of advertising from ancient to modern times see Sawant P.B &. Bandhopadhyay
P.K , Advertising Law and Ethics, 7-8, Universal Law Publishing Co. Ltd., New Delhi (2002).
International Journal of Law and Legal Jurisprudence Studies :ISSN:2348-8212:Volume 3 Issue 1 35

3. G. Lee, Jeerome, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71

Trademark Rep. 620 (1981).
4. As Justice Mckenna in John W. Rast v. Van Deman & Lewis Company put it- “Advertising is merely
identification and description, apprising of quality and place. It has no other object than to draw attention
to the article to be sold and the acquisition of the article to be sold constitutes the only inducement to its
purchase." Quoted from Tata Press Ltd v Mahanagar Telephone Nigam Ltd & Ors AIR 1995 (SC) 2438.
5. Tata Press Ltd v Mahanagar Telephone Nigam Ltd & Ors AIR 1995 (SC) 2438.
6. See Lakmikant V. Patel vs. Chetanbhat Shah AIR 2002 SC 275
7. Srinivasan, Sruthi “Evolution of Trademark Laws in India”, available at
http://www.altacit.com/publication/evolution-of-trademark-laws-in-india/#i_1
8. Mohammad Amin Naser, “Re-Examining the Functions of Trademark Law”, 8 Chi.-Kent J. Intell. Prop.
99 (2008).
9. G. Lee Jeerome, “Comparative Advertising, Commercial Disparagement and False Advertising”, 71
Trademark Rep. 620 (1981).herein the author points out that the functions of adverting are synonymous
with trademark law that is to prevent likelihood of confusion. The author quotes Courtland L. Bovee &
William F. Arens, Contemporary Advertising 6-7 (2d ed., Irwin 1986) where the following functions- a)
identification of products and differentiation from others, b) communication of information about the
product, its features etc., c) inducing customers to try new products and to suggest reuse, d) increasing
product usage, e) building brand preference and loyalty are describes as being the primary functions of
advertising and further compares them with modern trademark function and argues that if an
advertisement utilizing a trademark identifies the product and differentiates it from other like products, the
likelihood of confusion is reduced and the advertisement achieves a sale for the trademark owner. Thus,
the functions of modern advertising promote trademarks.
10. Safir Anand and Sharma Swati,”Trademark: Evolving Law in India”, Intellectual Asset Management
May/June 2013, available at:www.iam-magazine.com/issues/article.ashx?g=4fc3f329-8538-415d-abb2-
f23896dd9445 Trademarks: evolving law in India
11. V Sople Vinod, “Managing Intellectual Property: The Strategic Imperative”, PHI Learning Pvt. Ltd,
Eastern Economy Edition, 2006, pg 107
12. Ryder, Rodney D (2003), Brands, Trademarks and Advertising, LexisNexis Butterworth’s, Nagpur, pp.312-
313
13. As per Section 29(8) of Trademark Act, 1999.
14. Thomas McCarthy, “McCarthy on Trademarks and Unfair Competition”, § 25:52, Fourth Edition.
15. Shukla Uphar, “Comparative Advertising and Product Disparagement vis-à-vis Trademark Law”, 11 JIPR
409 (2006).
16. Stewert E. Sterk, “The Law of Comparative Advertising: How Much Worse is ‘Better’ Than ‘Great’,” 67
Trademark Rep. 368 (1977). However, according to some authors, advertisements that indulge in
disparaging the goods of competitor’s product are more often than not tasteless, misleading, and essentially
uninformative. See Paul T. Hayden, “A Goodly Apple Rotten at the Heart: Commercial Disparagement in
Comparative Advertising as Common-Law Tortious Unfair Competition”, 76 Iowa L. Rev. 67(1990) for an
elaborate discussion.
17. Péter Iskolczi-Bodnár, “Definition of Comparative Advertising” , European Integration Studies, Miskolc,
25-44 Volume 3. (1) (2004).
18. Dominique Junod Moser, “Regulation of comparative advertising: which framework?” sic! 6/2005, 523
Swiss Report LIDC Congress, Budapest (2004).
19. Justice Frankfurter in Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co. held that “The protection
of trademarks is the law’s recognition of the psychological function of symbols. If it is true that we live by
symbols, it is no less true that we purchase goods by them.” 316 U.S.203,205, 53, USPQ 323, 324-25
(1942), quoted from Albert Robin & Howard B. Barnaby, “Comparative Advertising: A Skeptical View”,
67 Trademark Rep. 359 (1977).
20. Justice Frankfurter further says that the owner of the mark exploits this human propensity of being led into
belief of want by making every possible effort to impregnate the atmosphere of the market with the
drawing power of the congenial symbol. Whatever may be the means applied, the aim is the same, to
convey through the mark, in the minds of the potential customers, the desirability of the commodity on
which the mark appears. Ibid.
International Journal of Law and Legal Jurisprudence Studies :ISSN:2348-8212:Volume 3 Issue 1 36

21. David D. Mouery, “Trademark Law And The Bottom Line Coke Is It!”, 2 Barry L. Rev. 107(2001).
22. Graeme W. Austin, “Trademarks and the Burdened Imagination”, 69 Brooklyn L. Rev. 827 (2004).
23. Mohammad Amin Naser, “Re-Examining the Functions of Trademark Law”, 8 Chi.-Kent J. Intell. Prop.
99 (2008).
24. See supra note 17 wherein the author points out that the functions of adverting are synonymous with
trademark law that is to prevent likelihood of confusion. The author quotes Courtland L. Bovee & William
F. Arens, Contemporary Advertising 6-7 (2d ed., Irwin 1986) where the following functions- a)
identification of products and differentiation from others, b) communication of information about the
product, its features etc., c) inducing customers to try new products and to suggest reuse, d) increasing
product usage, e) building brand preference and loyalty are describes as being the primary functions of
advertising and further compares them with modern trademark function and argues that if an
advertisement utilizing a trademark identifies the product and differentiates it from other like products, the
likelihood of confusion is reduced and the advertisement achieves a sale for the trademark owner. Thus,
the functions of modern advertising promote trademarks.
25. Albert Robin & Howard B. Barnaby, “Comparative Advertising: A Skeptical View”, 67 Trademark Rep.
358 (1977).
26. Vodafone Group PLC v. Orange Personal Communications Service Ltd. [1997] F.S.R. 34 quoted from
infra note 77 at 417.
27. Section 29(8)- A registered trade mark is infringed by any advertising of the trade mark if such advertising--
- (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters or (b)
is detrimental to its distinctive character or (c) is against the reputation of the trade mark.
28. Section 30(1)- Nothing in section 29 shall be construed as preventing the use of a registered trade mark by
any person for the purpose of identifying goods or services as those of the proprietor provided the use---
(a) is in accordance with honest practices in industrial or commercial matters. And (b) is not such as to take
unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
29. K.C. Kailasam, “Law of Trademark & Geographical Indications: Law & Practice”,421 Wadhwa &
Nagpur(2003)
30. Kerly, “Law on Trademark and Trade names”, 13th Edn. Sweet and Maxwell , p.366
31. “It appears to be now well settled that the test of honesty for the purpose of the proviso is one that has to
be judged by an objective standard, and in my judgment the appropriate question to be asked in relation to
that test in the present case is whether a reasonable motor service provider would think the use complained
of in the present case to be honest, or rather, in accordance with honest practices in that business.”
Aktiebolget Volvo v Heritage (Leicester) Ltd., F.S. R (2000)253 . As quoted in supra note 40.
32. (1996) 114 PLR 45
33. See Dabur India Ltd. v. Colgate Palmolive India Ltd. AIR2005Delhi102, Dabur India Ltd. v. Emami
Limited 112(2004)DLT73,
34. 2007(35) PTC 556 (Karn).
35. 2003 (27) PTC 305 Del
36. 2003(26)PTC535(Del)
37. 2006(32)PTC677(Del)
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EXAMINING THE LEGAL PROVISIONS ON COMPARATIVE

ADVERTISING IN INDIA

Written by Shikha Sharma* & Prof. M Afzal Wani**

*PhD Research Scholar, University School of Law and Legal Studies, Guru Gobind Singh
Indraprastha University, Delhi
**Professor and Dean, University School of Law and Legal Studies, Guru Gobind Singh
Indraprastha University, Delhi.

INTRODUCTION

Comparative advertising provides consumers with information and can enhance decision
making. It can also lead to confusion and misinformed decisions. In addition, it is also an
effective promotional tool for the advertiser1. Essentially, it can allow for a trader to receive a
free ride on the reputation of another trader and in some cases may even allow for poaching of
that reputation. Comparative advertising will continue to be a valuable and effective form of
advertising. ‘Comparative advertising’ is the term used to describe advertisements where the
goods or services of one trader are compared with the goods and services of another trader.2
Article 2(c) of the Directive 2006/114/EC of the European Parliament and of the Council
Concerning Misleading and Comparative Advertising defines ‘comparative advertising’ as
‘any advertising which explicitly or by implication identifies a competitor or goods or services
offered by a competitor.’ The ideal legal framework for comparative advertising puts
consumers in the position to be the judges of the comparison, with the comparison providing
truthful facts about the competing products or services; such an approach will counteract the
assumptions that the advertiser takes the role of judge in the same activity in which he is
participating. Where such a scenario can be achieved, fears that comparisons reduce the
credibility and effectiveness of advertising as an institution are untenable.3

*. For any correspondence regarding article contact shikhasharma008@gmail.com..

1 Matthew Anthony, “Legal Aspects of Comparative Advertising and a Strategy for Its Use”, 12 Queensland U.

Tech. L.J. 41 1996. Source: http://heinonline.org

2 Uphar Shukla, “Comparative Advertising and Product Disparagement vis-à-vis Trademark Law”, 11 JIPR 409 (2006).
3 Manuel Morasch, “A comparative study of trade-mark laws and competition laws in Canada and the European

Union”, (2004). University of Toronto, Faculty of Law - Dissertations, Thesis. Available at SSRN:
http://ssrn.com/abstract=685602.

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The important legal issues that can be identified in the context of comparative advertising
include statutory provisions in competition law, trade-marks law and common law principles.
The legal framework for potential areas of conflict is a composition of several diverse
mechanisms, whereby no statutory provision explicitly governs comparative advertising in
India which create a lacuna in the present system.

The present paper seeks to examine the role of the existing forms of regulation and analyze the
intricacies of law involved in the concept of comparative advertising

LAW ON COMPARATIVE ADVERTISING IN INDIA

In the legal framework governing comparative advertising, there has been a shift from curbing
monopolies to encouraging competition. The basic legal structure has been laid down by the
Monopolies of Restrictive Trade Practices Act, 1984 (M.R.T.P Act) and the Trade Marks Act,
1999 (T.M.A.)

1. Monopolies and Restrictive Trade Practices (MRTP) Act, 1969 and Competition
law:
The Monopolies and Restrictive Trade Practices (MRTP) Act started its life in 1969.4 Major
amendments were made to the MRTP Act in 1984; the thrust thereof is on curbing
Monopolistic, Restrictive and Unfair Trade Practices with a view to maintain competition in
the economy and safeguarding the interest of consumers by providing them protection against
false or misleading advertisements and/or deceptive trade practices.5 To understand the
working of the law on unfair trade practices, we would need to examine specific provisions of
the present Act.

Section 36 A of the Act lists unfair trade practices. Unfair trade practices in comparative
advertisement include any endorsement of goods or services that deceives or gives false
information concerning the goods or services of another individual. Other instances of unfair
trade practices comprise the acceptance of any unfair or misleading methods or practices in the

4Now stand repealed and replaced by Competition Act,2000

5 Again Dr. Chakroborty in
his paper, “MRTP Act metamorphoses into the Competition Act” addresses the enactment
and the change in MRTP Act in detail, available at http://www.cut.international.org/doc.

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representation of goods and services. The intact notion of ‘disparagement of goods of another
person’ thus runs from the MRTP Act.

The MRTP creates a judicial body also called the Monopolies and Restrictive Trade Practices
Commission (MRTPC). The Commission, after evaluating the practice to be an unfair trade
practice, could order the aberrant party to cease and stop the practice.6 The commission decided
many cases related to unfair trade practices in the realm of advertising before the repeal of the
MRTP Act. The commission was the authority to decide and provide for relief in case of
disparagement and unfair practices indulged in advertising by a competitor.

The commission in course of deciding cases evolved certain standards as to what would
constitute unfair trade practice and amount to disparagement7.

In Investwell Publishers (P) Ltd., Bombay8 the commission interpreted the following five
necessary ingredients of unfair trade practice- a) there must be a “trade practice”; b) the trade
practice must be employed for the purpose of promoting the sale, use, supply of any goods or
the provision of any service; c) trade practice should fall within the ambit of one or more of the
categories enumerated in clause (1) to (5) of section 36A; d) the trade practice should cause
loss or injury to the consumers of goods or services; e) the trade practice under clause (1)
should involve making a ‘statement’ whether orally or in writing or by visible representation.

In M. Balasundram v Jyothi Laboratories,9 A television advertisement promoting Ujala

liquid blue showed that 2-3 drops were adequate to bring striking whiteness of clothes while
several spoons of other brands were required though no label of any other brand was shown. A
lady holding a bottle of Ujala was looking down on another bottle and exclaiming „chhi, chhi,
chhi! in disgust. The manufacturers of Regaul, a competing brand, approached the MRTP
Commission that the advertisement was disparaging its goods. The Commission was of the
view that a mere claim to superiority in the quality of one's product‟ by itself is not sufficient
to attract section 36(1) (x) of MRTP Act. The Commission elaborated the meaning of the

6See Akhileshwar Pathak, “Legal response to Economic liberalization: The case of unfair trade practices”, Vikalpa,
Vol.29, No.3, July-Sept 2004, p.61.
7 As per New International Webster’s Comprehensive Dictionary the term “disparagement” means the act of

depreciating, aspersing, slighting, or undervaluing, derogation, or a reproach; disgrace.

8 UTP Enquiry no. 146/1987, order dated 05/10/1988 quoted from M. L Sachadeva & N. Ranganathasamy, Unfair

Trade Practices: Cases & Materials, Bahri Brothers, New Delhi (1992).
9 M. Balasundram v Jyothi Laboratories, judgement of the MRTP Commission, 10/10/1994. Citation: 1995 (82) CC

830.

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provision: In order to bring home a charge under clause (x) of section 36A (1) it must be
established that the disparagement is of the goods, services or trade of another. ... the words
"goods of another person" have a definite connotation. It implies disparagement of the product
of an identifiable manufacturer. Further, the bottle did not have similarity with bottle of any
brand. The Commission, thus, was of the opinion that it could not be a case of disparagement
of goods.

In the case of Palmolive (India) Limited v Vicco Laboratories10, Hindustan Lever Limited
advertised its toothpaste, ‘New Pepsodent’ in print, visual and hoarding media, claiming that
its toothpaste 'New Pepsodent' was ‘102% better than the leading toothpaste’11. The
Commission was of the view that the word toothpaste has become synonymous with Colgate
over the years. The Commission in addition noted that the jingle in the background was a
familiar one. The comparative manufactured goods in the television commercials could,
therefore, be identified as Colgate dental cream. Thus, it became a case of comparative
advertisement and a claim could be made of disparagement of Colgate’s products.

The principle, thus, emerged that a case of disparagement arises only if the product in question
is identifiable. Identification could be explicit or from the facts and circumstances.

Thus MRTP Act in its ultimate truncated shape was dealing with only three aspects of the
market, namely, monopolistic, restrictive and unfair trade practices. All these aspects are fully
reflected by the packed-up four sections12 of the competition law13. The experience in
administering the MRTP Act, for about three decades since 1969, the deficiencies noted in the
said Act, the difficulties that arose out of different interpretations and judgments of the MRTP
Commission and the superior Courts of Law and the new and changing economic milieu
spurred by the LPG paradigm and the economic reforms of 1991 (and thereafter) impelled the

10 Palmolive (India) Limited v Vicco Laboratories 1997 (5) CTJ 488

11 In the television advertisement, samples of saliva are taken for testing from two boys, hours after brushing .One
boy has brushed with the New Pepsodent while another has brushed ‘with a leading toothpaste’. The saliva of ‘the
leading toothpaste’ shows large number of germs. While the slide of the New Pepsodent shows negligible quantity of
germs. While the sample was being taken from the boys, they were asked the name of the toothpaste with which they
had brushed in the morning. One boy had said Pepsodent. The response of the second boy was muffled. However,
lip movement of the boy would indicate that he was saying ‘Colgate’. Also, when the muting was done, there was a
sound of the jingle used in the Colgate advertisement.
12 See Section3 to 6 of Competition Act,2000
13 Avtar Singh, “Competition Law”; Eastern Book Company, 1 st Ed.2012, Preface page.

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need for a new competition law. The need for a new law has its origin in Finance Minister’s
budget speech in February, 1999:

“The MRTP Act has become obsolete in certain areas in the light of international
economic developments relating to competition laws. We need to shift our focus from
curbing monopolies to promoting competition. The Government has decided to appoint
a committee to examine this range of issues and propose a modern competition law
suitable for our conditions.”

Hence the act now stand repealed but its provision still continue to persuade the court of law.
The new law that came into being was the Competition Act, 2000. The modern competition
law seeks to protect the process of free market competition in order to ensure efficient
allocation of economic resources. It is commonly believed that competition law is ultimately
concerned with the interest of the consumers.14

The Competition Act, 2002, provide for the establishment of Competition Commission of India
(CCI) and takeover the regulatory authority from the MRTP commission 15 Along with a
number of other amendments to the Act made by the Competition (Amendment) Act, 2007, the
date of initiation of which was October 12, 2007, a new Section 66 was replaced by the original
section 66. According to the new amended Section 66, the central issue is that the Monopolies
and Restrictive Trade Practices Act, 1969 has been repealed and the Monopolies and
Restrictive Trade Practices Commission established under section 5(1) of the said Act
(hereinafter referred to as the repealed Act) shall stand dissolved. Nevertheless, under said
section the MRTP Commission is allowed to continue to exercise jurisdiction and control under
the MRTP Act for a period of two years from the date of the commencement of the Competition
(Amendment) Act of 2007, which means two years from the notification of section 66 as being
brought into force. But the MRTP Commission cannot decide or adjudicate any case or
proceeding ensues under the MRTP Act on or after the said commencement.16

14 Sanchit Agarwal, “Competition Law and Protection of Consumer Interest”, Research paper submitted to
Competition Commission of India on 11th Aug.2011, available at
http://cci.gov.in/images/media/ResearchReports/SanchitInt260811.pdf. (Last visited on 20th Aug 2013)
15 As stated under Section 66 of the Competition Act,” The Monopolies and Restrictive Trade Practices Act, 1969 (54

of 1969 ) is hereby repealed and the Monopolies and Restrictive Trade Practices Commission established under sub-
section (1) of section 5 of the said Act (hereinafter referred to as the repealed Act) shall stand dissolved
16 T. Ramappa, “Repeal of the MRTP Act, 1969: Reducing the Twilight Period”, available at

www.lawyersclubindia.com/articles/print_this_page.asp?article_id=1409 2/5. (Last visited on 20th April 2013)

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It also elucidate that on suspension of the MRTPC, the cases and other matters pending either
before the MRTPC17 will be reassign to only three authorities i.e. (i) Competition Appellate
Tribunal, (ii) Competition Commission of India and (iii) the National Commission comprised
under the Consumer Protection Act, 1986.

It is considered that if Unfair Trade Practices are put into Competition Act would augment the
load on the Competition Commission and would deflect the commission from its main purpose.
The commission is designed to develop and encourage competition in the market and it is
supposed that addition of unfair trade practices in the Competition Act will distract its
proficiency or resources towards unfair trade practices while anti-competitive issues will take
a backseat. While the cases of unfair trade practices vis a vis business transactions are
concerned; they are covered under the domain of Competition Act, 2002 if they harm
competition in the market. Thus it is argued that there is no need of inclusion of unfair trade
practices in Competition Law.18

The provisions on unfair trade practices had a life for two years under the MRTP Act. Since a
consumer needed protection not only from being supplied with defective good and deficient
service, but also unfair trade practices, the provisions on unfair trade practices were copied
from the MRTP Act into the Consumer Protection Act.

2. Consumer Protection Act, 1986

The Consumer Protection Act 1986 is a social welfare legislation which was enacted as a result
of widespread consumer protection movement.19 The main object of the legislature in the
enactment of this act is to provide for the better protection of the interests of the consumer and
to make provisions for establishment of consumer councils and other authorities for settlement
20
of consumer disputes and matter therewith connected. While the consumer forums have
adjudicated large number of cases on ‘defect in good’ or ‘deficiency in service’, the provisions
on unfair trade practice have almost never been taken before the Consumer forums. These cases
and investigations were taken by the MRTP Commission. The provisions on Unfair Trade
Practices, in the way of being imitated from the MRTP Act into the arrangement of the

17 Also see section 66 (3) and (8) of the Competition Act, 2000.
18 Sanchit, Supra Note 14, pg 54.
19 “Consumer Rights”, Available onhttp://www.business.gov.in, (Last visited on 8th March, 2013)
20 As provided under the Statement and Objective clause under Consumer Protection Act, 1986.

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Consumer Protection Act, have obtained a new meaning21. Within the Consumer Protection
Act, a ‘consumer’22 cannot take up a case of an Unfair Trade Practice before a consumer forum.
It can only be taken up by a consumer association, central government or the State
Governments. Thus, within the existing law, a manufacturer whose product is disparaged has
no locus standi to seek a remedy. The only choice available is to bring it to the notice of a
consumer association or represent to the Central or State government. These are merely
slanting course of seeking justice. Even if a firm were to succeed in getting an advertisement
blocked through this route, as it is not a party to the case, it would not get any damages for loss
of profit. Thus, in actual fact, the ground of comparative representation has become
unfettered.23

3. Trademarks Act, 1999

India enacted its new Trademarks Act, 1999 and the Trademarks Rules 2002, with effect from
15th September 2003, to guarantee protection to domestic and international brand owners, in
conformity with the TRIPS Agreement.24

It has opened a new phase in regulating unfair Trade practices in comparative advertising and
preventing trademark infringement in India. The Trade Marks Act is an attempt to balance the
conflicting interests of the rights of registered trade mark owners and a compelling consumer
interest in informative advertising.25According to the present Act a registered trademark is
infringed by a person if he exploits such registered trademark, as his trade name or part of his
trade name, or name of his business concern or part of the name, of his business concern dealing
in goods or services in respect of which the trademark is registered

21 Paolisa Nebbia, “Competition Law and Consumer Protection against unfair Commercial Practices: A more than
complimentary relationship” in The Global Limits of Competition Law, edited by Ioannis Lianos, D. Daniel Sokol,
Stanford University Press,2012, pg 127.
22 Consumer is defined under section 2(d) of the Consumer Protection Act, 1986. Also see S. Krishnamurthi,

Consumer and Law: Redressal of Grievances, Vinod Law Publication, 2001, pg 44.
23 Akheleshwar Pathak, Supra Note 6.
24Priya Bansal, “Use of trademark in comparative advertising: Situation in India”, available at
http://www.legalserviceindia.com/articles/tadv.htm (Last visited 8th March, 2013)
25Rashi Saraf, “Overview of Comparative Advertising Laws”, available at

http://www.legalserviceindia.com/articles/tadv.htm. (Last visited on 10th April 2013)

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Section 29(8) of the Trademarks Act outlines the situations in which use of another's trademark
in advertising amounts to infringement. At the same time, Section 30(1) provides an escape
route for what would otherwise have been an infringing act under Section 29.

According to Section 29(8), a registered trademark is infringed where an advertisement:

 takes unfair advantage or considered to be contrary to honest practice in industrial or

commercial matters;
 is detrimental to the trademark's distinctive character; or
 is harmful to the trademark's reputation.

Section 30(1) provides exceptions to the rule, explaining how comparative advertising can
concord with honest practice in industrial or commercial matters so as not to take unfair
advantage of or be detrimental to the distinctive character or repute of the trademark. Such
advertising does not include infringement

Section 29(8) of the Trademark act, 1999 is considered to be unification of laws of unfair
competition and unfair trade practices that has set considerations for the use of trademarks in
comparative advertisements. 26

Therefore, it follows from the above that adding the provisions related to comparative
advertising into the trademarks regime has the main objective of ensuring the highest possible
balance between two competent interests-competitive freedom and acting against incorrect and
incomplete presentation. Although it is probable to have clearer provisions with regard to
comparative advertising, however, it has not been so easy in practice. 27The explanation for
comparative advertising on electronics media lies into their far reaching impact on the mindset
of the people at large. though there is no restriction for a tradesman for claiming his/her goods
to be of the best in the world which may be an untrue claim, however, in that process
disparagement of the products of the competitor is not allowed as the same will amount to
infringement of competitors trademark.28In context of comparative advertising it would mean
making untrue and deceptive statements about the goods of the competitors to influence the

26 Ashwini Kr. Bansal,” law of Trademarks in India”, (2009), New Delhi, Institute of Constitutional and Parliamentary
Studies and CLIPTRADE, pg 507
27 Abhirup Ghosh & Amit Kumar, “Comparative advertising: An Emerging Jurisprudence in Trademark Regime”

Madras Law Journal, 248(6) 2010, pg.60.

28 Supra Note, 24. Priya Bansal, “Use of trademark in comparative advertising: Situation in India”.

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public not to buy. In order to decide the issue of disparagement, a court must come to the
deduction as to how many consumers would be influenced by such advertisement and end up
purchasing the advertised products rather than the competitor’s product. Therefore, from the
above it may be deciphered that comparative advertising may be allowed in India to the extend
it does not ridicule or take any undue privilege of a competitor’s trademark in the course.

4. Advertising Standards Council of India (ASCI) and Comparative Advertising

In addition to the numerous regulations as examined above, in India the Advertising Standards
Council (ASCI) was established for protecting the interests of the consumers while observing
and guiding the commercial communications.29

To scrutinize advertising in India, ASCI has adopted a Code for Self-Regulation (ASCI Code),
which applies to all involved in the commissioning, creation, placement, or publishing of
advertisements. ASCI have divided its code into four chapters, as regards the form and manner
of comparative advertising is concerned the code under Chapter IV of the Code for Self
Regulation30 in Advertising stated herein that advertisements containing comparisons with
competing manufacturers and sellers are permissible in the interests of vigorous competition
and free dissemination of information, subject to the following requirements being satisfied:
(a) It is clear what aspects of the advertiser’s product are being compared with what
aspects of the competitor’s product.

(b) The subject matter of comparison is not chosen in such a way as to confer an
artificial advantage upon the advertiser or so as to suggest that a better bargain is offered
than is truly the case.

(c) The comparisons are factual, accurate and capable of substantiation.

(d) There is no likelihood of the consumer being misled as a result of the comparison,
whether about the product advertised or that with which it is compared.

29 Shubhra Deepa Moitra, “The Code of Self-Regulation in Advertising”, available at

http://www.legalserviceindia.com/article/l275-The-Code-For-Self---Regulation-In-Advertising.html (Last visited on
10th April 2013)
30 ASCI Code for Self Regulation in Advertising (2007)

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(e) The advertisement does not unfairly denigrate attack or discredit other products,
advertisers or advertisements directly or by implication.31

The abovementioned principles ensure that advertising activities are conducted in a fair
manner, with the interests of all associated groups being secured. Secondly these guidelines do
not have the force of law there are merely recommendatory in nature.

CONCLUSION

A scrutiny into the law governing comparative advertising in India reveals that there is a
nonappearance of an obvious approach with respect to the cases in which a merchant through
comparative advertising extends genuine however irrelevant correlations or when he portrays
precisely contenders merchandise. A to a great extent unpleasant and prepared methodology
has been taken after, with differing parts of the same being resolved with reference to
conflicting standards. Such a methodology is insufficient on a maintainable premise, as the
specific utilization of various laws deserts a trail of lacunae in any endeavour to decide question
an extensive way. It is a need of hour to reinforce the current lawful procurements and or
introduce a new provision in the current Acts to limit and check and check commercial
disparaging in comparative advertising.

References

 Akhileshwar Pathak, “Legal response to Economic liberalization: The case of unfair

trade practices”, Vikalpa, Vol.29, No.3, July-Sept 2004,
 Akhileshwar Pathak, “Liberation and Law on Comparative Advertising in India”, at
http://EconPapers.repec.org/RePEc:iim:iimawp:wp01792
 Ashwini Kr. Bansal,” law of Trademarks in India”, (2009), New Delhi, Institute of
Constitutional and Parliamentary Studies and CLIPTRADE.
 Ashwini Kr. Bansal,” law of Trademarks in India”, (2009), New Delhi, Institute of
Constitutional and Parliamentary Studies and CLIPTRADE
 Avtar Singh, “Competition Law”; Eastern Book Company, 1st Ed.2012,

31D.P.S Verma, “Advertising and the Law”, Journal of Indian Law Institute, Vol.48 (2), 2006, (April.-June) pp. 267-
69.

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 D.P.S Verma, “Advertising and the Law”, Journal of Indian Law Institute, Vol.48 (2),
2006, (April.-June)

 Manuel Morasch, “A comparative study of trade-mark laws and competition laws in

Canada and the European Union”, (2004). University of Toronto, Faculty of Law -
Dissertations, Thesis. Available at SSRN: http://ssrn.com/abstract=685602.
 Matthew Anthony, “Legal Aspects of Comparative Advertising and a Strategy for Its
Use”, 12 Queensland U. Tech. L.J. 41 1996. Source: http://heinonline.org
 P. Chidambaram “Law and Commerce: And the twain shall Meet”, Sunday Express,
Ahmedabad, 26 Oct 2003
 Paolisa Nebbia, “Competition Law and Consumer Protection against unfair
Commercial Practices: A more than complimentary relationship” in The Global
Limits of Competition Law, edited by Ioannis Lianos, D. Daniel Sokol, Stanford
University Press,2012
 Parth Gokhale &Shriyani Datta, “Comparative Advertising in India: Evolving a
regulatory Framework”, 4 NUJS L. Rev. 131 (2011)
 Priya Bansal, “Use of trademark in comparative advertising: Situation in India”,
available at http://www.legalserviceindia.com/articles/tadv.htm
 S M Dugur, “Law of Monopolistic and Restrictive Trade Practices”, 385 Wadhwa
&Nagpur (2000).
 Stewert E. Sterk, “The Law of Comparative Advertising: How Much Worse is
‘Better’ Than ‘Great’,” 67 Trademark Rep. 368 (1977).
 T. Ramappa, “Repeal of the MRTP Act, 1969: Reducing the Twilight Period”,
available at www.lawyersclubindia.com/articles/print_this_page.asp?article_id=1409
2/5.
 Uphar Shukla, “Comparative Advertising and Product Disparagement vis-à-vis
Trademark Law”, 11 JIPR 409 (2006).

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