Advertising Lien

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WIPO-NIFT

³TRAINING THE TRAINERS´ WORKSHOP

ON INTELLECTUAL PROPERTY RIGHTS

New Delhi, June 20 to 24, 2005



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Intellectual Propertyand

Advertising

Lien VerbauwhedeConsultant, SMEs Division

World Intellectual Property Organization (WIPO)



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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 techniquesin online environment:

± Expand role of advertising (receipt from

advertising often main source of income)

±Potential problems because of ease and speedwith 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 inviolating IPRs of

others



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2.

HOW TO PROTECT YOUR IPRIGHTS IN ADVERTISING



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(a) What types of IPRs are involved

in advertising?

± Creative contentp copyright

± Slogans, soundsp copyright/trademarks

±Business names, logos, domain names

p

trademarks

± GIsp unfair competition, consumer protection,certification marks, special laws on GIs

± Graphic symbols, screen displays, graphic user interfaces, web pages p industrial design/copyright

± Software (to create digital ads, e.g. computer generated imagery) p trade secrets + copyrightand/or patent



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± Advertising techniques or means of

doing businessp patent (not in India)

± Website designp copyright

± Distinctive packagingp trademark,

industrial design, trade dress ± Person¶s identityp publicity or privacy

rights

± Databasesp copyright/sui generis

± Unfair advertising methodsp unfair

competition laws, tort



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(b) How to protect your creativeadvertising?

Cfr. presentation on Website



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(c) Do you own the rights in your

advertisement?

You pay freelance advertising designer tocreate advertising campaign for you on the

occasion of fashion exhibition.

Year later : you want to use some text andgraphic 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 formcertain uses by others



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Fashion brewery sells

calendar with unknown

persons driving car withrefreshing pint in their

hands

- without permission...



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Textile company sells

catalogue with SaniaMirza wearing its cloths

- without permission...

(ficticious example)



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(c) Can you use a competitor¶s trademark inyour 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 berestricted

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)

p 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 µNIFT¶ banner of other university on top of search results

- I click on banner get directed to other university

Search engine sells keyword to business

p 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 areinformational for

competition

Beneficial to competition

Some countries:

Only allowed if specific

requirements fulfilled

Some countries:

ForbiddenSome countries:

Forbidden for

certain products



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Cable&Wireless PLC v British

Telecommunications (U

K,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 µKIWI¶ which does not

drip as against another bottle described

as µOTHERS¶ which drips and is shownas µBrand X¶.

Brand X looks similar to the plaintiff¶s

Cherry Blossom. There is a red blob onµBrand X¶ which represents µCHERRY¶

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 calledN ew Pepsodent , claiming to be ³102% better than theleading toothpaste´.

Advertisement showed N ew Pepsodent superior inkilling germs than any other toothpaste.

Lip movement in the ad indicated ³Colgate´ as theother 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 advertisingdirected 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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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/

Advertising Lien

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