Advertisement campaign eligible for protection if it has become distinctive, threshold to establish distinctiveness is high: Delhi High Court

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The Delhi High Court observed that an advertisement campaign can enjoy legal protection if it signifies the source and has become distinctive of the party while adding that the threshold for establishing distinctiveness would however be quite high in such a case.

Judge Pratibha M Singh was of the view that while the distinctive elements of advertising campaigns may be protected by the Court, unless and until there is enormous distinctiveness and a likelihood of confusion or deception, the Court would not grant no injunction against an advertising campaign, because it can stupefy creativity.

The Court was dealing with a complaint filed by Bright Lifecare Pvt. ltd. a company specializing in the manufacture and trade of health supplements, nutraceuticals and food products. The lawsuit was filed for violation of his various rights under copyright, trademark, deception, etc. laws.

One of the Applicant’s products was a protein supplement sold in a series of products under the MuscleBlaze (MB) brand. Defendant #1 was a company involved in the manufacture and marketing of pharmaceutical, Ayurvedic and cosmetic products under the house brand “VINI”. Defendant #2 was the YouTube platform on which Defendant #1’s advertisements were shown, which allegedly violated the rights of the plaintiff.

The plaintiff said that in March 2018, he launched an advertising campaign in the form of a video titled “ZIDDI HOON MAIN” on various online platforms, including YouTube, etc. The said video was followed by another video in Tamil on April 4, 2018. Similarly, other videos were released in May 2018 and November 2018.

The mark “ZIDD” and slogans consisting of the mark “ZIDDI”, in various variations and marks associated therewith, have also been registered in various classes. The trademarks and slogans “ZIDDI” used by the plaintiff were as follows: “ZIDDIS DON’T WAIT”, “ZIDDI HOON MAIN”, “ZIDD WARS”, “NAAM HAI ZIDDI”, “PHIR SE ZIDD KAR”.

In January 2022, Plaintiff came across advertisements for a deodorant product named “REALMAN” from Defendant #1 which Plaintiff claimed were conceptually and visually similar to its advertisements.

It was also the case of the plaintiff that for the said advertising campaign, defendant no. 1 had adopted the mark/slogan “ZIDDI PARFUM” which was deceptively similar to the mark of the plaintiff.

It was Plaintiff’s case that through the disputed adoption and use of similar scenes in the ‘ZIDDI PERFUME’ advertisements and trademark, Defendant #1 had infringed Plaintiff’s trademark rights and also infringed the right of author involved in cinematographic works.

The question put to the Court was as follows: Can an advertising campaign and its various elements be protected by intellectual property law? If yes, how ?

The Court was of the opinion that translating an idea into an expression in an advertising campaign is a long process that not only involves the “sweat of the brow”, but more.

However, the Court added that a mere idea behind the advertisement is not protectable and only the elements of expression incorporated in the advertisement are protectable.

“Parties that manufacture and sell products spend a tremendous amount of time, effort, energy and investment in creating advertising campaigns. They usually hire creative agencies and advertising agencies to render the necessary services to them. to the realization of these campaigns directors, artists, lyricists, slogan writers, cartoonists, etc., who work in collaboration with the marketing teams to carry out such campaigns.Thus, these campaigns and advertisements are extremely thoughtful, deliberate and also determine the success/failure of a product.Even a ten second advertisement involves enormous creativity and originality.Thus an advertising campaign including advertisements is undoubtedly protectable by intellectual property law“, said the Court.

He added “So in law an advertising campaign, if it signifies the source and has become distinctive of the plaintiff, is eligible for protection. The threshold for establishing distinctiveness, however, would be quite high.”

The Court observed that anyone familiar with Plaintiff’s protein supplement and the corresponding advertisements might well imagine that Defendant #1’s deodorants or perfumes also emanate from the same basket, due to the substantial similarities in the advertisements.

“There can be no monopoly or exclusivity on the use of the words ‘ZIDD’ and ‘ZIDDI’ as an idea to show perseverance. However, the representation must be different. Nor can there be a monopoly or exclusivity about showing a muscular person in a gym, but the expression of the idea must be different. Again, the depiction of a person using a punching bag also cannot no longer be monopolized, but the expression must be different. In the contested advertisements, in the opinion of the Court, the expression is a disguised imitation of the plaintiff’s advertisement “ added the Court.

The Court said that the creative expression of the plaintiff’s advertisements had been imitated and that in such cases the Court must see not only the individual elements that were allegedly copied and whether or not they can be monopolized, but the effect overall Advertisement of the defendants on an ordinary viewer.

The Court held that the two contested advertisements which evoked and were very similar to the plaintiff’s campaign were liable to be restricted in their current form.

The Court therefore ordered the defendants to immediately remove the two contested advertisements from www.youtube.com and other platforms where they were publicly available.

The Court also ordered that Defendant #1 be free to edit the challenged ads to remove the objectionable frames and then relaunch the ads as long as the distinction between its campaign and Defendant #1’s ad is clear and visible. for the viewer.

“There is no restriction, however, on Defendant #1 using the word or phrase ‘ZIDD’ or ‘ZIDDI’ in such a way as to mean or describe the long-lasting nature of the deodorant/perfume in a way that is not similar or identical to that of the applicant, as long as it is not used as a trademark,“said the Court.

Case Title: BRIGHT LIFECARE PVT. LTD. against VINI COSMETICS PVT. LTD. & ANR.

Quote: 2022 LiveLaw (Deleted) 626

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