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Ankita Patnaik, Analysing the Status of Comparative Advertisement with Special
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2. ANALYSING THE STATUS OF COMPARATIVE ADVERTISEMENT WITH SPECIAL
REFERENCE TO TRADEMARK REGIME
Ankita Patnaik
LLM, Army Institute of Law, Mohali
ABSTRACT
The IndustrialRevolution a;
especially in Europeancoun)
helped in setting up factorie
globalizationstartedspreadi
raised. Though the competiti
race haspushed the compani
get maximum market share
companies. Advertisemenl is
f commerce and economics
strialization,many inventions
7when industrializationand
actories and companies also
'in the market, nowadays the
y to rule over the market. To
rsements are stratagemsfor
t creates a brand image and
helps in promoting the product to a large no of cusnomers.
Due to technological advancements advertisement techniques are changing into glamorous
businesses. Advertisement is recognisedand >rotectedunder law.
In India, under the constitutionalarticle 19 (1) (a) advertisements are entitled to limited protection
under freedom of speech and exp;ression. Hence the businessman has the right to express his
product to be the finest in the world. The concept of comparative advertisement means to compare
goods and services through advertisements. 'Mine is the best' is the main objective behind the
competitive advertisement. Here the goods and services of one trader are compared to others
through advertisement. The concept also has limitations to avoid misuse. In the United States of
America, comparative advertisement is encouraged to improve innovation and lower down the
market cost of the product. The European Directive (2006/114/EC) regulates the comparative
advertisement in European Union state members. The comparative advertisement is permissible
in India if it does not mislead the consumers. The rival products should be present in healthy
comparison and should be factual and substantiative. While using comparative advertisement
.aw Essentials Journal (Volume 2, Issue 2, 2021)

3. many questions arise like whether it is allowed to use a competitor's trademark in advertisements?
Or would it lead to trademark infringement ifthe comparative advertisement isperformedwithout
the permission of the competitor? The paper seeks to analyse the law which is involved in a
comparative advertisement concerning trademark infringement. It includesjudgements to support
the status of comparativeadvertisement in India.
COMPARATIVE ADVERTISEMENT
No competition leads to no progress. Comparative advertisement is a practice that started with the
evolution in trade and business. where goods and services are compared through advertisements.
In the twentieth century advertisements through print media revealed major competitions.
Eventually, in the twenty-first century. digital media boost up the competition amongst the traders.
The traces can be collected from 1910's case Saxlehnervs Wagnerl in the United States concerning
the comparative advertisement. Where the Supreme Court allowed the sale of artificial spring
water which was advertised under 'Hundayi', both the parties in the case were using similar brand
names.
In the year 1972. the Federal Trade Commission (FTC) supported and encouraged the traders to
make comparative advertisements for public welfare. Gradually the concept started legal
recognition throughout the world. Like a coin has two faces similarly, comparative advertisements
have theirpros and cons. Through the concept has helped in eliminating monopoly but sometimes
it becomes aggressive. The comparison is based on quality, price, appearance and other distinctive
attributes of the products. It is sensitive as it may affect the goodwill and reputation of the
company. Hence the healthy comparative advertisement should be promoted.2
There is no legal
definition provided in the statute for comparing advertising.
Tata Press Limited vs Mahanagar Telephone Nigam Ltd' is the landmark judgement by the
Supreme Court of India, where the court held that advertisement of products for a commercial
purpose is a constitutional right and is protected under article 19(1)(a) 4 as freedom of speech and
expression. The only restriction to it is under the constitution is Article 19(2).5 Therefore, corporate
' Saxlehner vs Wagner, 216 U.S. 375 (1910).
2 Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Fourth Edition (1999), 19:77
3 Tata Press Limited vs Mahanagar Telephone Nigam Ltd (1995) 5 SCC 139.
4 CONST. art. 19(1)(a).
s CONST. art. 19(2).
-awEssentials Journal (Volume 2, Issue 2, 2021)

4. entities can use their freedom of speech and expression to compare comparative advertisements in
the market.
CLASSIFICATION AND OBJECTIVE OF COMPARATIVE ADVERTISEMENT
As it is said that completion is the good thing as it brings out the best, similarly the comparative
advertisement provides best to the consumers. But the comparative advertisement comes up with
huge baggage of responsibility. It is classified under two major categories.
1. Direct Comparative Advertisement: In such advertisements, the name of a competitive
brand is used explicitly. It is easy for customers to identify the brand through photos,
trademarks, images, logos and other distinctive attributes.
2. Indirect Comparative Advertisement: It does not refer to the brand name of the competitor
directly in the ad. Commonly indirect comparative advertisements are made.
The objective of comparative advertisement is to outshine their brand as the best in the market. It
has helped in increasing innovations in trade and business and also helped in protecting the public
interest. Due to comparative advertisement. the quality of the product is enhanced, and the price
of the product is reduced which supports public welfarc. It helps in enlightening the information
about the brand to the consumer. It also aids in evaluating the brand name. The comparison is
performed based on quality. quantity and ingredients used in products.
TRADEMARK INFRINGEMENT IN COMPARATIVE ADVERTISEMENT
To encourage comparative advertisement Legal protection is provided in India. To regulate it, the
Advertising Standards Council of India (ASCI) provide regulations. Earlier the Monopolies and
Restrictive Trade Practices (MRTP) Committee regulated the comparative advertisement later on
the act was repealed by the Competition Act. The committee played important role in the
comparative advertisement as their decisions ended the dispute in the case Balasundaramvs Jyoti
Laboratories6.In this case, the Ujala indigo brand aired an advertisement where they criticised the
competitive brand 'Regaul'. The MRTP Committee encouraged the comparative advertisement
and stated that mere claim over superiority does not affect the brand value and does not come
under unfair trade practices.
6 Balasundaram vs Jyoti Laboratories, AIR 1995 (82) CC 830.
Law Essentials Journal (Volume 2, Issue 2, 2021)

5. Trademark plays an important role in the advertisement as symbol or mark is considered very
powerful in making a brand name. The trademark is to provide a face to a brand, which means it
distinguishes one brand from another. It involves figures, colours, logos, images, shapes, sounds
and other distinctive attributes. The majorobjective of the trademarkis discussed in the following.
1. The primary function of a trademark is to protect the identification of the product. It provides
exclusive rights to the trademark owner.
2. The secondary function of the trademark is to provide quality indications, advertisements and
information to the consumers.
If anyone uses a similar trademark then the owner has the right to stop. In the case of comparative
advertisement where competitors tradenark is used in the advertisement without permission would
raise issues and overcome from such situation sections 29(8) and 30(1)' were inserted in the
TrademarkAct, 1999. The sections are the exception to trademark infringement in the comparative
advertisement. Hence, the Trademark Act, 1999 provides legal provisions for comparative
advertisement with certain limitations added to it.
JUDICIAL PRONOUNCEMENT
In this section different judgements are provided to understand the judicial stand on the
comparative advertisement in India. In maximum cases, direct trademark infringement is
prohibited in comparison advertising but in recent cases when the comparison is based on truth,
fairness and facts the comparison in advertisement using trademarks is allowed.
Dabur India Limited vs Colgate Palmolive India Ltd' in this case interim injunction application
was filed by Dabur India Ltd. In an advertisement aired in visual media where Colgate use a
strategy to target Dabur Laal Dantmanjan powder. In this advertisement, Sunil Shetty is
influencing consumers to stop using Dantmanjan powders because they are abrasive and it
damages teeth, whereas he endorses Colgate toothpaste and ensured thatit is 16 times less abrasive.
The court held that disparagement in competitive products without pointing the product brand is
equally objectionable.
' Trademark Act, 1999, section 29(8) & 30, Acts of Parliament, 1999 (India).
8 Dabur IndiaLimited vs Colgate Palmolive India Ltd, 2004 (29) PTC 401 (Del).
Law Essentials Journal (Volume 2, Issue 2, 2021)

6. Unibic Biscuits India (P) Ltd. v. Britannia Industries Ltd.9 in this case the Karnataka High Court
held that comparative advertisement has limitations and is permissible if the advertisement does
not disintegrate the brand name as doing this could lead to irreparable damage and loss.
Dabur India Ltd. vs Colortek Meghalaya Pvt Ltd 10 case is considered important as the court
provided guiding principles for comparative advertisement. Delhi High Court laid down that
advertisement must not be misleading the consumers. false or deceptive. The Court has highlighted
that serious representation should not be added in advertisements to glorify the advertiser product
because it leads to commercial loss. Mere comparison can he healthy but untruthfuldisparagement
should be avoided.
In Havells India Ltd. vs Amritanshu Khaitan and Others, Delhi High Court provided two
importantelements in a comparative advertisement. The most important thing in such cases should
be the deceptiveness of the advertisement, it should deceive or have the ability to deceive. Another
element is that such deceptiveness should be addressed to the public and should harm the brandof
the competitor.
Gujarat Co-operative Milk Mrarketing FederationLtd. vs HindutsanUnilever Ltd and Ors1
2
in this
recent judgement. Amul published a television commercial where Amul compared its products
with other frozen desserts. Amul ensured that their products are made of 100% milk and on the
contrary other frozen items used vanaspati to manufacture them. The advertisement was opposed
by Kwality and contended that the advertisement was disparaging frozen dessert in the majority.
Kwality also contended that they use 10%i vegetable oils and not vanaspati to manufacture frozen
desserts. FurtherAmul stated facts in which almost 30% of the manufacturers were using vanaspati
which is harmful to health. The single bench of the Bombay High court stated that the
advertisement is misleading and leads to disparagement. The court further added that because
Amul has accepted the factual figures that 70% of manufacturers do not use vanaspati and in their
advertisement, they were misleading the facts. Therefore, causing such disparagement under
comparative advertisement is not allowed.
9 Unibic Biscuits India (P) Ltd. v. Britannia Industries Ltd, MANU/KA/0240/2008.
10 Dabur India Ltd. vs Colortek Meghalaya Pvt Ltd, 2010 SC Online Del 391
" Havells India Ltd. vs Amritanshu Khaitan and Others, 2015 (62) PTC 64.
12 Gujarat Co-operative Milk Marketing Federation Ltd. vs Hindustan Unilever Ltd and Ors, Appeal No. 340 of 2017
dated December 13, 2018.
Law Essentials Journal (Volume 2, Issue 2, 2021)

7. In the case Karamchand Appliances Pvt. Ltd. v. Sh. Adhikari Brothers and Ors,13 the court
considering the public interest ruled that competitors have the right to boast about their product's
efficiency in the market, but misleading claims should not be entertained as this violates public
interest. So, the larger interest of the people should be given importance and not the misleading
glittering advertisements in the market.
CURRENT SCENARIO
The current stand on the comparative advertisement has slightly changed as in recent judgements
certain liberties have been provided by the court. At this stage, the concept of comparative
advertisement needs to be revised. In certain scenarios, the flexibility of sections 29 (8) and 30 of
the Trademark Act, 1999 is observed through case summaries. Below recent judgement is
discussed briefly to explain the current position of the comparative advertisement concerning
trademark law in India.
The HorlicksLtd. andAnr. is one of the major cases related to
trademark infringement in the comparative advertisement is Horlicks vs Complain. In this case,
Complan advertised its brand in a newspaper comparing a cup of Complan to two cups of Horlicks.
The Heinz India Pvt Ltd. product 'Complan' in that advertisement was claiming that their milk
protein is providing double the amount of protein. The Horlicks opposed the advertisement and
contended that it was violative of Section 29 (8) and 30 of the Trademark Act, 1999, as the
advertisement made direct reference to the registered trademark of Horlicks. Further Horlicks
added tath the advertisement is misleading and untrue facts which was affecting the brand value
of the Horlicks.
Further Complan in its defence stated that they used the trademark for comparison of products
which is allowed under section 30 (1) of the Trademark Act, 199915 and followed the ASCI code.
Horlicks also contended that article 2116 prevents others to use the image in commercial use
without its consent and use the precedent laid in the case of K.S Puttaswamy & Anr. Vs Union of
India
17
. Hence according to Horlicks, the use of its trademark has violated their privacy.
13 Karamchand Appliances Pvt. Ltd. v. Sh. Adhikari Brothers and Ors, 2005(31) PTC 1(Del).
14 Horlicks Ltd. and Anr. vs Heinz India, Private Limited, LSI-546-HC-2018(DEL).
1s Trademark Act, 1999, section 30 (1), Acts of Parliament, 1999 (India).
16 CONST. art. 19.
" K.S Puttaswamy & Anr. Vs Union of India, (2017) 10 SCC 1.
Law Essentials Journal (Volume 2, Issue 2, 2021)

8. The Delhi High Court stated the judgement in favour of Complan. The court held that the aim of
sections 29 (8) and 30 (1) is permissible if the facts are correct and the use of marks is fair and
honest. The court also further explained the right to privacy is not applicable in this scenario as
any information provided to the public is not counted under this constitutional provision. The
Horlicks have already provided their information of elements in their packaging which was used
by the Heinz company.
CONCLUSION AND SUGGESTION
Advertisement and marketing are now an important part of any commerce. To improve trade and
commerce companies can go up to any height and one of the best examples of it is a comparative
advertisement. The cut-throat competition in advertisement needs certain limitations and to
prohibit disparagement certain guidelines are provided by the court to follow in a comparative
advertisement. The concept is acceptable in many countries across the globe like the US, Australia
and European union members. The provision mention under sections 29 (8) and 30 (1) of the
Trademark Act has allowed the use of the trademark in a comparative advertisement. The judicial
pronouncement also has provided a green signal to comparative advertising, but the exception is
that there should be no misleading and unfair trade practices performed. The comparison should
be fair and should not bring disparagement to the brand value. Hence, comparative advertisement
leading to the disparagement of the products are not allowed in India. The scenario is almost
similar worldwide.
Some of the pros of comparative advertising are it creates awareness, eliminates monopoly,
maintain the competitive spirit in the market, is useful for public welfare and increase innovation
in trade and commerce. On another side of the coin, it is helping in setting superiority in the market
and certain loopholes in the legal field lead to misuse and abuse of power provided in comparative
advertising.
In recent judgements, there has been flexibility seen in judgements provided by the court. The
exception to this scenario is misleading, unfair or deceptive advertisements. In recent years court
has provided flexibility because advertisers use more creativeness, and some relaxation is needed
in this era. There is a need for a more flexible system related to comparing advertising in India. In
a competitive world, business is superior and not mankind. As no one is above law similarly public
interest should be considered as a major factor in comparing advertisement, so if companies have
Law Essentials Journal (Volume 2, Issue 2, 2121)

9. the right to promote safe products using comparison it should be allowed. Even the Parliament
need to set certain norms for companies for promoting misleading comparisons in advertising
goods that are not good for the public interest. Hence fair and healthy completion is a sign of
improvement and denigrating competitors' products leads to loss and damages which should be
avoided, and a balance of public interest should be present in the marketing of the goods and
services.
Law Essentials Journal (Volume 2, Issue 2, 2021)