WIPO-NIFT TRAINING THE TRAINERS WORKSHOP ON INTELLECTUAL PROPERTY RIGHTS New Delhi, June 20 to 24, 2005.

WIPO-NIFT “TRAINING THE TRAINERS” WORKSHOP ON INTELLECTUAL PROPERTY RIGHTS

New Delhi, June 20 to 24, 2005

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Intellectual Property and

Advertising

Lien VerbauwhedeConsultant, SMEs Division

World Intellectual Property Organization (WIPO)

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1.

INTRODUCTION

THE GROWING ROLE OF ADVERTISING IN THE MARKET

ECONOMY

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Today: bussinesses beckon customers with all types of advertising tools

– Business signs– Pamphlets, door drops– Brochures– Billboards– Radio & TV communications– Telephone solicitations– Commercial text messages– Email advertisements– Banners– Pop-ups– Rich media advertisements

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Internet and digital technologies

• Traditional role: support for good/service

• Innovative digital advertising techniques in online environment:– Expand role of advertising (receipt from

advertising often main source of income)– Potential problems because of ease and speed

with which advertising can be assembled, reshaped and distributed worldwide

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Challenge

• Advertising has become race for unique, cutting-edge, enticing way of ... – passing on information to customers– facilitate and positively influence their buying

decisions

• Difficult to keep content true to facts– Human tendency to exaggerate benefits of

product– Easy to cross thin line demarcating puffery from

misleading, deceptive or false advertisement

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This presentation

IP issues in the process of advertising

Protect your IPRs in your advertising

Dangers in violating IPRs of

others

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2.

HOW TO PROTECT YOUR IP RIGHTS IN ADVERTISING

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(a) What types of IPRs are involved in advertising?

– Creative content copyright– Slogans, sounds copyright/trademarks– Business names, logos, domain names

trademarks– GIs unfair competition, consumer protection,

certification marks, special laws on GIs– Graphic symbols, screen displays, graphic user

interfaces, web pages industrial design/ copyright

– Software (to create digital ads, e.g. computer generated imagery) trade secrets + copyright and/or patent

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– Advertising techniques or means of doing business patent (not in India)

– Website design copyright– Distinctive packaging trademark,

industrial design, trade dress– Person’s identity publicity or privacy

rights– Databases copyright/sui generis

– Unfair advertising methods unfair competition laws, tort

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(b) How to protect your creative advertising?

Cfr. presentation on Website

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(c) Do you own the rights in your advertisement?

You pay freelance advertising designer to create advertising campaign for you on the occasion of fashion exhibition.

Year later: you want to use some text and graphic illustrations in your catalogue...

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3.

DANGERS IN VIOLATING THE IPRs OF

OTHERS WHILE CREATING OR USING

ADVERTISING CONTENT

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(a) Can you use material owned by others in your advertising?

•Technocal tools and software

•Copyright works

•Photographs

•Freeware

•Material in public domain

Cfr presentation Website

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(b) Use of others’ likeness

Tennis star Sania Mirza promoting Tata Indicom mobile phone

Nicole Kidman is the new face of Chanel No 5

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In many countries: name, face, image, voice, other likeness of individual

→protected by privacy and publicity rights

Right of publicity

-Person’s image has economic value

-Presumed to be result of person’s own effort

-Gives person right to exploit own image

Right of privacy

Person has right to protect image form certain uses by others

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• Fashion brewery sells calendar with unknown persons driving car with refreshing pint in their hands

- without permission...

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• Textile company sells catalogue with Sania Mirza wearing its cloths

- without permission...

(ficticious example)

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(c) Can you use a competitor’s trademark in your advertising?

Trademark is exclusive right

(right to exclude others from using the mark)

BUT:

No monopoly on the word, phrase, shape or color as such

Only commercial use of the trademark for the relevant classes of goods/services can be

restricted

Non-commercial use cannot be prevented, except if use affects distinctiveness of trademark

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Therefore:

Use of competitor’s trademark in advertising is not an infringement, so long as ...

Use is in accordance with honest practices in industrial or commercial matters

Use does not take unfair advantage of, or is detrimental to, the distinctive character or reputation of the mark

India: Section 29(5) and 30 (1) Trademark Act

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How to use competitor’s trademark in advertising?

1. Do not alter competitor’s trademark, especially if it is a logo (size, color, spelling)

trademark dilution and infringement

2. If it contains graphic elements (logo, label, design, 3D figure) → authorization

→ copyright

3. Be careful when using competitor’s trademark in metatags, linking, framing, domain names → trademark infringement, unfair competition

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4. Key word triggering

• Ficticious example:- I search ‘NIFT’ → banner of other university on top of

search results

- I click on banner → get directed to other university

• Search engine sells keyword to business

trademark dilution and infringement

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5. Primary meaning of your advertising should be to inform the consumer, not to discredit or unfairly attack competitors

6. Mark competitor’s trademark with trademark symbol

7. Avoid using competitor’s trademark in way that suggests competitor endorses or sponsors your advertising product• E.g. Prominently featuring logo of competitor

8. Do not take unfair advantage of reputation of competitor’s to promote your own business

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(d) Comparative advertising

– Coca-Cola tastes better than Pepsi– Cadillac Seville outperforms BMW 540 in

slalom course

= Direct (competitor named)

– NIFT has the best postgraduate programmes for the textile, garment and allied industries

– We manufacture the nicest sarees in India

= Indirect (competitor not named)

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Can you compare qualities of your products with those of competitors?

Some countries:• Truthful comparisons are

informational for competition

• Beneficial to competition

Some countries:• Only allowed if specific

requirements fulfilled

Some countries:• Forbidden

Some countries:• Forbidden for certain

products

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Cable&Wireless PLC v British Telecommunications (UK, 1998)

• Telephone company compares prices of its telephone service with those of competitor– Accurate and not intended to mislead the

public

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Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd. (India)

• Advertisement on electronic media shows a bottle of ‘KIWI’ which does not drip as against another bottle described as ‘OTHERS’ which drips and is shown as ‘Brand X’.

• Brand X looks similar to the plaintiff’s Cherry Blossom. There is a red blob on ‘Brand X’ which represents ‘CHERRY’ and appears on plaintiff’s product also.

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• Court:

– Comparative advertisement permissible but should not to be intended to disparage or defame the competitor’s product.

– Kiwi ad disparaging to Reckit & Colman’s product and does not hinder freedom of speech

– Kiwi restrained from advertising its products in a disparaging manner.

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Hindustan Lever v. Colgate Palmolive (India)

• Hindustan Lever introduced new toothpaste called New Pepsodent, claiming to be “102% better than the leading toothpaste”.

• Advertisement showed New Pepsodent superior in killing germs than any other toothpaste.

• Lip movement in the ad indicated “Colgate” as the other toothpaste referred, although voice muted. Also, same jingle as used in the Colgate ad is played.

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• Court:

– Direct reference about inferiority need not be shown – reference amounted to disparagement

– Ad likely to leave doubt in minds of viewers that Pepsodent was being compared with Colgate.

– Injunction

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Comparative advertising in India

In principle allowed:– Tradesman entitled to declare his goods to be the

best in the world – Can also say that his goods are better than his

competitors’– Can even compare advantages if his goods over

products of competitor

HOWEVER– Cannot, while saying that his goods are better than

his competitors’, say that his competitors’ goods are bad.

– Slander/defamation is not permissible.

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(e) Sensitive products

Special controls or prohibitions on advertising

• Medicines

• Tobacco

• Food

• Toys

• Pornography

• Credits

• Slimming products

• Casino games

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(f) Advertising and children

E.g. Glamorize violence in advertising directed to children

E.g. Use of children in advertising

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(g) Marketing practices

• Direct marketing: via mail, fax, door-to-door, email, sms,

• Unsolicited emails (spam)

• Free gifts, discounts

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4.

CONCLUSIONS

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• Create yourself, rather than using other’s creations

• Be sure you own rights in your ad

• ‘Clear’ your advertising compaign (in India and abroad)

• Comparative advertising can mislead consumers + unfairly discredit competitors

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• Do not use competitor’s mark in such way that it harms competitor in unfair way

• Your claims must be true and accurate

• No comparisons that are likely to cause confusion

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Lien Verbauwhede

WIPO, SMEs Division: www.wipo.int/sme/