The elements of good advertising are likely to be imitated or copied by others. Thus, companies must be familiar with the various intellectual property rights that may come into play when drafting and finalizing the content of an advertisement or executing an advertising campaign. Businesses are finding more inventive ways to advertise their products and services than ever before. Each level of sophistication and increased creativity will result in additional intellectual property rights. The simplest advertisement may involve only the two main frameworks, i.e. the copyright and/or trademark associated with a logo; while advanced audiovisual works can raise many complex concepts related to intellectual property. In the recent judgment of the Delhi High Court, it was ruled that the distinctive elements of advertising campaigns can be protected by courts under intellectual property law.
In the case of Bright Lifecare Pvt Ltd v Vini Cosmetics Pvt Ltd and Anr where the applicant, Bright Lifecare Pvt Ltd is a company specializing in the manufacture and trading of supplements for gym professionals, nutraceuticals and related food products. One of the plaintiff’s products is a supplement that is sold in a series of products under the name MuscleBlaze (MB), which is protected by trademarks. Accused no. 1 is a company active in the manufacture and marketing of pharmaceutical, Ayurvedic and cosmetic products under the “VINI” brand. It is present in the field of deodorants and perfumes in the Indian market.
The plaintiff states that in March 2018, he launched an advertising campaign in the form of a video game titled “PRINCIPAL ZIDDI HOONon various online platforms. The videos posted by the applicant used various forms of the words “ZIDD” and “ZIDDI” to describe the quality of people who do not give up despite various challenges. In January 2022, the applicant came across many such advertisements of a deodorant product named “REALMAN” under Defendant No. 1 which, according to Plaintiff, were conceptually and visually similar to Plaintiff’s advertisements. Plaintiff further stated that for said advertising campaign, Defendant No. 1 adopted the “ZIDDI PERFUME” which is allegedly deceptively similar to plaintiff’s mark. It is plaintiff’s case that, through the disputed adoption and use of similar scenes in advertisements and the mark “ZIDDI PERFUME”. In addition to the trademark and slogans, slogans such as “PHIRSEZIDDKAR” are used which are written in yellow and white in the plaintiff’s advertisement and the product.
Vini Cosmetics Pvt. ltd. manufactures, promotes and sells’REAL MAN SCENT‘deodorants for men, which are described as ‘ZIDDI PERFUME‘ in all of their advertisements which are challenged in this lawsuit. The ad used by Defendant’s theme is that Defendant’s product, i.e., perfume/deodorant, can counter the odor resulting from perspiration. The words “ZIDDI PERFUME” are displayed and are written in yellow on a black background near the end of the ad. Defendant’s product and use of the disputed mark “ZIDDI”.
Seeing the facts of the advertisements, it can be established that there are similarities such as various slogans using the word “ZIDDI” and the style of writing in a combination of black and yellow colors by the plaintiff and the defendant. It is argued by the Applicant that the Applicant’s mark is registered in Class 38 and Class 44 which include advertising services. Defendant argues in said case that Plaintiff and Defendant No. 1 are not competitors and that Plaintiff cannot claim any monopoly over the use of the word “ZIDD” or “ZIDDI” because it has been used in earlier campaigns and films.
The main restraint in this case is whether advertising campaigns of this nature are eligible for protection. In order to examine this issue, the court considered whether the allegedly infringed elements of the plaintiff’s campaign simply constituted a ideaor do they constitute expression of an idea. The established legal position is that there can be no copyright in an idea but only in its expression. It was decided that:
“However, a mere idea behind the advertisement is not
protectable. Only the elements of expression incorporated in the advertising message are protectable. Parties that manufacture and sell products devote a great deal of time, effort, energy and investment to creating advertising campaigns. They generally call on creative agencies and advertising agencies that provide them with the services necessary to carry out these campaigns. These campaigns are the result of painstaking efforts by creative directors, artists, lyricists, slogan writers, cartoonists, etc., who work in conjunction with marketing teams to deliver such campaigns. Thus, these campaigns and advertisements are extremely thoughtful, deliberate and also determine the success/failure of a product. Even a ten-second commercial involves enormous creativity and originality. Thus, an advertising campaign comprising advertisements is undoubtedly protectable under intellectual property
right.“
Regarding the similarity between the two campaigns, the court held that “The general theme of the dark setting, people working out, using ‘ZIDDI‘ and ‘ZIDD‘ and the color of yellow and black is featured in Plaintiff and Defendant #1’s campaign. The third-party videos relied upon by Defendant #1 using the “ZIDDI” trademark or concept of “ZIDD” are completely separate from Plaintiff’s advertisements and Defendant #1’s challenged advertisements. There is no doubt that no monopoly can be granted on the concept and idea of “ZIDD” and “ZIDDI”. However, the representation of the same thing by choosing almost identical elements cannot be completely ignored by the Court.“
With respect to the argument of the defense of no monopoly of the plaintiff on the word ziddi, the court held that “There can be no monopoly Where
exclusivity on the use of the word ‘ZIDD‘ and ‘ZIDDI‘ as an idea to show perseverance. However, the representation must be different. Nor can there be a monopoly or exclusivity on the presentation of a muscleperson who trains in a gym but the expression of the idea must be different. Again, the representation of a person using a punching bag also cannot be monopolized, but the expression must be different. In the impugned commercials, in the Court’s view, the expression is a disguised imitation of the plaintiff’s commercial.“
Therefore, the Court ruled that the two contested advertisements which are evocative from and very similarto Plaintiff’s campaign are likely to be restricted in their current form and Defendants are urged to remove the two challenged advertisements from YouTube and other platforms where they are available for public viewing.
Conclusion
In this case, the court held that the simple campaign is not protectable but certain elements that are expressed and incorporated are copyrightable. For example, in the present case are the expression and the context in which “ZIDDI” is used by the applicant and the yellow and white color theme. The court too opined that these campaigns are the result of the creativity of various people such as screenwriter, director, lyricist, designers, etc. Thus, certain distinctive elements of an advertising campaign are protectable under Intellectual Property rights. There can be no monopoly on terms like ‘ZIDDI‘ but the court is of the opinion that the representation must be different, there should be no imitation.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
