Advertising Campaign Can Be Protected Under Intellectual Property Law If It Has Become Distinctive, Threshold High: Delhi High Court

The Delhi High Court has observed that an advertising campaign can be granted protection in law, 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.

Justice Pratibha M Singh was of the view that while distinctive elements in advertising campaigns can be protected by the Court, unless and until there is enormous distinctiveness and likelihood of confusion or deception, the Court would not grant an injunction against an advertisement campaign, as the same may stultify creativity.

The Court was dealing with a suit filed by Bright Lifecare Pvt. Ltd. a company engaged in the business of manufacturing and trading of health supplements, nutraceuticals and food products. The suit was filed claiming infringement of its various rights under the laws of copyright, trademarks, passing off, etc.

One of the products of the Plaintiff was a protein supplement sold in a series of products under the MuscleBlaze (MB) trademark. The Defendant No.1 was a company involved in the business of manufacturing and merchandising of pharmaceuticals, ayurvedic and cosmetic products under the house mark 'VINI'. Defendant No.2 was YouTube platform on which Defendant No.1's advertisements were aired, that allegedly infringe the rights of the Plaintiff.

It was the plaintiff's case that in March of 2018 it started 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 4th April, 2018. Similarly, further videos were released in May, 2018 and November, 2018.

The trademark 'ZIDD' and slogans consisting of the mark `ZIDDI', in various variants and marks associated therewith were also registered in various classes. 'ZIDDI' marks and slogans used by the Plaintiff were- 'ZIDDIS DON'T WAIT', 'ZIDDI HOON MAIN', 'ZIDD WARS', 'NAAM HAI ZIDDI', 'PHIR SE ZIDD KAR'.

In January, 2022, the Plaintiff came across advertisements of a deodorant product named 'REALMAN' of Defendant No.1 which, as per the Plaintiff, were conceptually, visually similar to the its advertisements.

It was also the case of the Plaintiff that for the said advertisement campaign, Defendant No.1 had adopted the mark/tagline 'ZIDDI PERFUME' which was deceptively similar to the mark of the Plaintiff.

It was the case of the Plaintiff that by the impugned adoption and use of similar scenes in the advertisements and the mark 'ZIDDI PERFUME', Defendant No.1 had infringed the trade mark rights of the Plaintiff and also infringed the copyright involved in the cinematograph works.

The question before the Court was that: Can an advertising campaign and its various elements be protected under intellectual property law? If so, in what manner?

The Court was of the view that the manifestation of an idea into an expression in an advertising campaign is a long process which involves not only `sweat of the brow' but even more.

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

"Parties which manufacture and sell products expend enormous time, effort, energy and investment in creation of advertising campaigns. They usually engage creative agencies and advertising agencies who render them the services for making these campaigns. Such campaigns are a result of painstaking effort of creative directors, artists, lyricists, slogan writers, cartoonists etc., who work in collaboration with marketing teams for making such campaigns. Thus, these campaigns and commercials are extremely thought out, deliberate and also determine the success/failure of a product. Even a ten second commercial involves enormous creativity and originality. Thus, an advertising campaign including commercials are undoubtedly protectable under intellectual property law," the Court said.

It added "Thus, in law, an advertising campaign, if it signifies the source and has become distinctive of the Plaintiff, can be granted protection. The threshold for establishing distinctiveness would however be quite high."

The Court observed that anyone who is familiar with the Plaintiff's protein supplement and the corresponding commercials could well imagine that Defendant No.1's deodorants or perfumes also emanate from the same basket, owing to the substantial similarities in the commercials.

"There can be no monopoly or exclusivity on the use of the word 'ZIDD' and 'ZIDDI' as an idea to show perseverance. However, the portrayal has to be different. There can also be no monopoly or exclusivity on showing a muscular person working out in a gym but the expression of the idea has to be different. Again, the portrayal of a person using a punching bag can also not be monopolized but the expression has to be different. In the impugned commercials, in the opinion of the Court, the expression is a colourable imitation of the Plaintiff's advertising commercial," the Court added.

The Court said that the creative expression of the Plaintiff's commercials had been imitated and that in such cases, the Court has to see not merely the individual elements that have been alleged to be copied and whether they can be monopolised or not but the overall effect of Defendants commercial on an ordinary viewer.

The Court was of the view that the two impugned commercials which were evocative of and very similar to Plaintiff's campaign were liable to be restrained in their present form.

The Court thus directed the Defendants to forthwith pull down the two impugned commercials from www.youtube.com and other platforms where they were available for viewing by the public.

The Court also directed that the Defendant No.1 will be free to modify the impugned commercials so as to remove the objectionable frames and thereafter re-launch the commercials so long as the distinction between the its campaign and Defendant No.1's commercial is clear and visible to the viewer.

"There is however no restraint, upon Defendant No.1 from using the word or expression 'ZIDD' or 'ZIDDI' in a manner so as to signify or describe long lasting nature of the deodorant/perfume in a manner which is not similar or identical to that of the Plaintiff, so long as it is not used as a trade mark," the Court said.

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

Citation: 2022 LiveLaw (Del) 626

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