Intellectual Property Laws May Provide Protection For An Advertising Campaign That Identifies The Plaintiff And Has Grown Distinctive: Delhi High Commission

CASE TITLE:

Bright Lifecare Pvt. Ltd. Vs Vini Cosmetics Pvt. Ltd. and Anr.

DATE OF ORDER:

7^th July 2022

BENCH:

Hon’ble Justice Pratibha M. Singh

PARTIES:

Plaintiff: Bright Lifecare Pvt. Ltd.

Respondent: Vini Cosmetics Pvt. Ltd.

SUBJECT: The Delhi High Court emphasized that proving distinctiveness would require meeting a fairly high standard, but it did state that an advertising campaign could be legally protected if it discloses the source and has grown to represent the party.

IMPORTANT PROVISIONS:

Section 30 of the Trademarks Act, 1999: This section of the Act outlines the limitations placed on the rights of a registered trademark and the types of business operations that are exempt from infringement. These processes can also be employed in the event that accusations of trademark infringement are made.

OVERVIEW:

• The plaintiff, Bright Lifecare Pvt. Ltd., is a company that produces and distributes food items, nutraceuticals, and health supplements. Alleging infringement of multiple rights under copyright, trademark, passing off, and other laws, it filed the current action.
• The defendant is a company that produces and markets cosmetics, ayurvedic products, and medications under the VINI brand. The defendant asserted that they held a prominent position in the Indian deodorant and perfume industry.
• The plaintiff launched an advertising campaign in March 2018 on various online platforms, such as YouTube, with a video titled "ZIDDI HOON MAIN. "The terms "ZIDD" and "ZIDDI," in various combinations, were used in the plaintiff's recordings to convey the quality of people who persevere in the face of difficulty.
• The trademark 'ZIDD' was registered in multiple classes, along with slogans that included the mark 'ZIDDI' in different variations and associated marks.
• The plaintiff claims that in January 2022, she saw advertisements for the defendant's "REALMAN" deodorant brand, which were thematically and visually identical to her own commercials. The plaintiff's mark and the defendant's tagline, "ZIDDI PERFUME," are strikingly similar.
• The Plaintiff alleges that the Defendant violated both the Plaintiff's trade mark rights and the copyrights in the cinematographic works by allegedly adopting and using the same sequences in advertisements under the mark "ZIDDI PERFUME."

ISSUES RAISED

• Is there a way that intellectual property law can protect an advertising campaign and all of its components?
• Is the campaign's content an idea or an expression of an idea, according to the plaintiff?

ARGUMENTS ADVANCED BY THE PLANTIFF

5. The plaintiff filed the complaint alleging infringement of its copyrights in its cinematograph images and rights in the trademarks "ZIDD" and "ZIDDI." It was suggested that the 'ZIDDI' campaign consisted of the following elements:

• In a number of slogans and expressions, the word "ZIDDI" appears.
• The unique script of the word "ZIDDI" in yellow and black.
• The distinctive elements used in the advertisements—such as the description of the workout routine and the dark gym environment—were intended to evoke tenacity and perseverance.

5. It was contended that a close study of the Plaintiff's and Defendant's advertising campaigns would demonstrate that the latter had imitated the entire idea, look, and feel of the term "ZIDDI," down to the black and yellow color scheme.

5. Although the defendant sold perfumes under the brand name "REALMAN," the plaintiff's attorney claimed that using the term "ZIDDI PERFUME" would cause consumers to associate the defendant's product with the plaintiff's. It was established through a comparative frame-by-frame analysis of the advertisements that the Defendant replicated the Plaintiff's entire campaign and copied not only the idea but also the wording.
5. 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] were cited as authoritative cases.
5. It was also made clear that, in addition to stealing a frame from the movie, there was copyright protection for the plot, the screenplay, the music, the dialogue, the dialogue videos, the songs, and more. Thus, copyright infringement in the cinematograph would occur even if a portion of the movie or the idea behind it was lifted.
5. Moreover, it was argued that even though the term "ZIDDI" had not yet been registered as a distinct word mark, it was a significant aspect of the Plaintiff's mark and slogan that was protected

ARGUMENTS ADVANCED BY THE DEFENDANT

5. The defendant's attorney claimed that there is no rivalry between the plaintiff and the defendant. The plaintiff works in the pharmaceutical sector, whereas the defendant manufactures and sells perfumes and deodorants.
5. It was contended that because the terms "ZIDD" and "ZIDDI" have been used in earlier advertisements and motion pictures, the Plaintiff cannot create a monopoly on their use. The following instances were used as a guide:

• A song from the movie "Mary Kom" that uses the phrase "ZiddiDil" in both its title and lyrics;
• 'ZiddiChoriya', a Parel-G product promotional;
• 'Ziddi Kalakaar' and 'Main Ziddi Hoon' are used in an advertisement for 'Dronacharya's The Gym’.

5. It was argued that the defendant's first contested film showed typical gym scenes, such as a person working out with a rope and sweating. These kinds of scenes are common in advertising.
5. Additionally, the Plaintiff's main character was attributed with the trait of being "ZIDDI" or assertive in their advertisements, while the Defendant's advertisement attributed the same trait to the product rather than the protagonist; the two advertisements' themes were unrelated.

5. It was argued that the defendant used the term "Ziddi" to characterize the perfume's lasting power, even after an intense workout. This would be defended since the Trademarks Act of 1999's Section 30 protects descriptive use.
5. To show that there is no copyright for an idea and that a cinematograph cannot violate copyright unless there is theft of specific frames or images that are included in the film, the case of R.G. Anand v. Deleux Films [AIR 1978 SC 1613] was cited.

5. Furthermore, it was claimed that the plaint had no merit and that Defendant had copied no other copyrighted material, including the screenplay, dialogue, or story. Therefore, there should be no relief given in connection with these underlying works.
5. The defendant argued that the Plaintiff's goal in this case is to assert a legal monopoly on a concept related to working out in a gym that is not recognized by the law. Moreover, terms such as 'ZIDD/ZIDDI' are commendatory and cannot be restricted.
5. In the end, it was claimed that the Plaintiff is not registered for Class-3 fragrances or deodorants.

JUDGEMENT ANALYSIS:

5. The Court found that the phrases "ZIDD" and "ZIDDI" as characteristics of the people portrayed in the commercials, commercials showing people working out in a gym with a dark background and regular background music, and the campaign's overall use of white and yellow text were what set Plaintiff's "ZIDDI" marketing campaign apart.

5. The RG Anand case served as a summary of the criteria used by the court to determine whether copyright infringement had occurred. It stipulated that before the defendant is prosecuted for plagiarism, it must be proven that the defendant used the protected work without authorization and appropriated a significant portion of the content from the original source. Rather than subjecting the two works under consideration to an intensely critical examination, they should be thoroughly examined and tested.
5. After viewing the competing commercials, the Court concluded that an average viewer would assume that the two commercials were connected or came from the same source.
5. The phrase in the contested advertisements is a vibrant copy of the Plaintiff's advertisement, according to the Court. By utilizing the term "ZIDDI," the plaintiffs present the protagonists in a favourable light in their advertisement. A similar idea is used by Defendant No. 1 in their advertising.
5. It was claimed that the defendant's advertisement, which features strong people working out in a gym with a rope and punching bag on the same dark background, is strikingly similar to Plaintiff's advertising campaign in terms of colour scheme. In this case, the defendant was unable to independently create the contested advertisements.
5. The Plaintiff's advertisements were found to have duplicated artistic expression by the Court. The bench took into account the entire impact of the defendant's advertisement on the typical viewer in addition to the specific portions that were allegedly copied and whether or not they could be monopolized.
5. As a result, the Defendant's contested advertisements mimicked the subject matter, tone, and numerous other distinctive elements of the Plaintiff's marketing campaign, thereby supporting the Plaintiff's complaint under the circumstances.

CONCLUSION:

The court ruled that the two contested advertisements, which are strikingly similar to Plaintiff's campaign and suggestive of it, should be kept to a minimum in their current incarnations. As long as the viewer could distinguish between the Plaintiff's campaign and the Defendants advertisement, the Defendants were free to alter the contested commercials to remove the offending frames and then re-launch the advertisements. The Defendants were ordered to remove the two commercials from platforms where they are visible for public viewing immediately. It was also not against the law for the defendant to use the terms or expressions "ZIDD" or "ZIDDI" in any way that differed from the Plaintiff's, provided that it wasn't used as a trade mark.