An Advertising Campaign That Signifies The Source And Has Become Distinctive Of The Plaintiff Can Be Protected By Intellectual Property Laws: Delhi HC

Case title:
Bright Lifecare Pvt Ltd Vs Vini Cosmetics Pvt Ltd and Anr

Date of Order:
7th July, 2022

Bench:
Hon’ble Justice Prathiba M. Singh

Parties:
Plaintiffs: Bright Lifecare Pvt Ltd
Defendants:Vini Cosmetics Pvt Ltd

SUBJECT

The Delhi High Court stated that an advertising campaign could be legally protected if it indicates the source and has become distinctive of the party, while stressing that the standard for demonstrating distinctiveness in such a situation would be fairly high.

IMPORTANT PROVISIONS

Section 30 of the Trademarks Act, 1999- Section 30 of the Act defines the restrictions on a registered trademark's rights, as well as the business activity which does not entail infringement. These procedures can also be used to defend against trademark infringement claims.

OVERVIEW

• Bright Lifecare Pvt. Ltd., the plaintiff, is a corporation that manufactures and trades health supplements, nutraceuticals, and food products. It filed the current action, alleging infringement of its numerous rights under copyright, trademark, passing off, and other laws.
• The defendant is a corporation that manufactures and sells medicines, ayurveda, and cosmetic items under the brand name VINI'. Defendant claimed to have a considerable position in the Indian deodorant and perfume sector.
• In March of 2018, the plaintiff began an advertising campaign on numerous internet platforms, including YouTube, with a video named "ZIDDI HOON MAIN."The plaintiff's recordings utilized various variants of the phrases 'ZIDD' and 'ZIDDI' to express a trait of people who do not give up in the face of adversity.
• The trademark 'ZIDD', as well as slogans including the mark 'ZIDDI' in various versions and marks affiliated with it, were registered in several classes.
• In January 2022, the plaintiff came upon commercials for Defendant's 'REALMAN' deodorant brand, which, according to the plaintiff, were thematically and aesthetically identical to the plaintiff's advertisements. The defendant adopted the tagline 'ZIDDI PERFUME,' which is substantially similar to the plaintiff's mark.
• The Plaintiff claims that via the alleged adoption and use of identical sequences in ads and the mark 'ZIDDI PERFUME,' the Defendant infringed upon the Plaintiff's trade mark rights as well as the copyrights contained in the cinematograph works.

ISSUES RAISED

1. Whether an advertising campaign and its various elements can be protected under intellectual property law and in what manner?
2. Whether the elements of the Plaintiff’s campaign constitute an idea or an expression of an idea?

ARGUMENTS ADVANCED BY THE PLAINTIFF

• The Plaintiff brought the complaint for violation of its rights in the trademarks 'ZIDD'/'ZIDDI' as well as copyrights in its cinematograph pictures. It was submitted that the following aspects comprised the 'ZIDDI' campaign:

1. Various slogans and phrases include the word 'ZIDDI.'
2. The distinctive writing style of the word 'ZIDDI' in black and yellow.
3. To convey persistence and perseverance, the distinguishing aspects employed in the ads, such as the dark gym atmosphere and description of how the workout is done, were utilized.

• It was argued that an examination of the Plaintiff's and Defendant's commercial campaigns would reveal that Defendant replicated the whole concept, appearance, and feel of the term 'ZIDDI,' including the colour scheme of black and yellow.
• The counsel for the plaintiff stated that though the Defendant sold perfumes under the brand name 'REALMAN,' the use of the phrase 'ZIDDI PERFUME' would create a mental link between the Defendant’s product and the Plaintiff’s. A comparative frame-by-frame examination of the adverts was used to establish that Defendant plagiarized not just the idea but also the phrasing and duplicated the Plaintiff's whole campaign.
• Reliance was placed on the judgements of MRF Limited v. Metro Tyres Ltd. [262 (2019) DLT 734] and Procter & Gamble Manufacturing (Tianjin) v. Anchor Health & Beauty Care Pvt. Ltd. [211 (2014) DLT 466].
• It was also highlighted that, in addition to copying a frame from the film, the copyright existed in the storyline, screenplay, musical score, dialogue video pictures, songs, and so on. So, even if a section of the film or the concept behind it was lifted, there would be copyright infringement in the cinematograph.
• Furthermore, it was contended that the term 'ZIDDI' was a substantial feature of the Plaintiff's mark and slogan that is protected, despite the fact that it was yet to be registered as a distinct word mark.

ARGUMENTS ADVANCED BY THE DEFENDANT

• The counsel for the defendant asserted that the plaintiff and the defendant are not rivals in any way. The defendant is in the perfume and deodorant manufacturing and selling industry, while the plaintiff is in the pharmaceutical industry.
• It was argued that the Plaintiff cannot establish a monopoly on the use of the terms 'ZIDD' or 'ZIDDI,' as they have been used in previous campaigns and films. The following examples were relied upon:

1. A song in the film 'Mary Kom' that incorporates the term and title 'ZiddiDil';
2. A Parel-G product promo named 'ZiddiChoriya';
3. A commercial for a gym named 'Dronacharya's The Gym,' in which the phrases 'Ziddi Kalakaar' and 'Main Ziddi Hoon' are used.

• It was submitted that the first impugned film of the Defendant depicts ordinary scenes at a gym, including a person working out with a rope and perspiring. Such situations are prevalent in many advertisements.
• Furthermore, the characteristic of being 'ZIDDI' or assertive was attributable to the main character in the Plaintiff's advertisements, whereas, in the Defendant's advertisement, the said quality was credited to the product, not the protagonist; there was no commonality in the theme of both advertisements.
• It was submitted that the defendant described the perfume's property as being one that lasts despite a vigorous workout by using the term 'Ziddi'. This would be defended as descriptive use is protected by Section 30 of the Trademarks Act of 1999.
• The case of R.G. Anand v. Deleux Films[AIR 1978 SC 1613]was cited to demonstrate that there is no copyright for an idea and that there cannot be a breach of copyright in a cinematograph unless there exists theft of frames or particular pictures that form part of the film.
• It was further asserted that there exists no merit in the plaint concerning any other copyrighted material copied by Defendant, such as the story, screenplay, or dialogue. As a result, no relief should be provided in relation to such underlying works.
• The defendant contended that the Plaintiff's objective in the current case is to claim a monopoly in a notion about working out in a gym that cannot be recognized under the law. Furthermore, words like 'ZIDD/ZIDDI' are laudatory terms that cannot be monopolized.
• It was finally submitted that the Plaintiff has no registration for fragrances and deodorants with respect to Class-3.

JUDGEMENT ANALYSIS

• According to the Court, the distinguishing features of Plaintiff's 'ZIDDI' marketing campaign were the use of the phrases 'ZIDD' and 'ZIDDI' as a trait of the people depicted in the advertisements; commercials depicting people working out in a gym setting with a dark background and regular background music and the general usage of the Plaintiff's campaign's color scheme of white and yellow text.
• The court relied on the RG Anand case, to sum up the test for the determination of copyright infringement. It stated that before the defendant is charged for plagiarism, it must be demonstrated that the defendant took a considerable percentage of the material from the source and made unauthorized use of the protected work. The two works in question must be evaluated and tested with rigorous examination rather than hypercritical inspection.
• The Court viewed the competing advertisements and was of the opinion that seeing them would give an average viewer the notion that the two commercials were related or originated from the same source.
• According to the Court, the phrase in the contested advertisements is a colorful replica of the Plaintiff's advertising commercial. In the Plaintiff's advertisement, the protagonists are shown in a positive light by using the term 'ZIDDI.' Defendant No.1 uses a similar concept in their advertising.
• It was stated that the way the defendant’s advertisement is employed in the same color scheme, on the same dark backdrop, representing strong people working out in a gym with a rope and punching bag is highly reminiscent of Plaintiff's commercial campaign. The defendant could not have independently generated the advertisements in question in this instance.
• The Court deemed that the Plaintiff's advertisements' artistic expression had been duplicated. The bench considered not only the particular parts alleged to have been duplicated and if they could be monopolised or not, but also the entire effect of the Defendant's advertisement on an average viewer.
• Thus, the Plaintiff's complaint was supported under the facts since the Defendant replicated the topic, expression, and many distinguishing characteristics of Plaintiff's marketing campaign in the contested advertisements.

CONCLUSION

The court held that in their existing iterations, the two disputed advertisements, which are suggestive of and highly similar to Plaintiff's campaign, are to be restrained. The Defendants were directed to immediately remove the two commercials from platforms on which they are visible for public viewing; however, they were free to change the impugned commercials to remove the offending frames and then re-launch the advertisements as long as the viewer could see the difference between the Plaintiff's campaign and the Defendants advertisement. The defendant was also not prohibited from using the term or expression 'ZIDD' or 'ZIDDI' in a way that was not identical or similar to that of the Plaintiff, so far as it was not utilized as a trade mark.

Learn the practical aspects of CrPC HERE, CPC HERE, IPC HERE, Evidence Act HERE, Family Laws HERE, DV Act HERE

Click here to download the original copy of the judgement