Sweet smell of success in protecting advertising IPRs

By Manisha Singh and Anirudh Arora, LexOrbis
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With the spread of digital media and platforms, particularly across borders, advertising assumes even greater importance in acquiring reputation and goodwill. Jurisprudence and the application of intellectual property rights protection must correspondingly evolve to deal with this development. In the recent case of Bright Lifecare Pvt. Ltd. v Vini Cosmetics Pvt. Ltd. & Anr., the Delhi High Court provided timely guidance on resolving allegations of infringing distinctive advertising.

The plaintiff, Bright Lifecare, a manufacturer and trader of health supplements, nutraceuticals and food products, alleged breaches of its copyright, breaches of trademarks and passing off by the first defendant, Vini Cosmetics, a manufacturer and seller of pharmaceutical, ayurvedic and cosmetic products. The second defendant was YouTube, which hosted the first defendant’s advertisements on its platform.

Sweet smell of success in protecting advertising IPRs
Manisha Singh
Partner
LexOrbis

In 2018, the plaintiff launched an advertising campaign by airing videos under the theme of Ziddi Hoon Main on a number of online platforms, including YouTube. It followed up by publishing advertisements in several languages, including Tamil. The videos released by the plaintiff used various forms of the words zidd and ziddi to describe the tenacity of persons who do not give up despite facing various challenges, and attracted millions of views. The plaintiff had registered the trademark Zidd and slogans including the word ziddi and its variants in various classes.

In January 2022, the plaintiff became aware of advertisements for a deodorant called Realman made and distributed by the first defendant. The plaintiff argued that these advertisements were conceptually and visually similar to the plaintiff’s advertisements. It asserted that, in the advertisement campaign, the first defendant had adopted the name Ziddi Perfume, which was deceptively similar to that used by the plaintiff. The plaintiff argued that by adopting this name and by the use of scenes in advertisements similar to those in its own videos, the first defendant had infringed the plaintiff’s trademark and had infringed the copyright in the cinematograph works. The plaintiff adduced as evidence a comparative chart showing identical scenes from the respective advertisements.

The issue before the court was whether the elements of the plaintiff’s campaign constituted merely an idea or whether they constituted the expression of an idea. The court considered its three core findings. The entire concept, look and feel of the terms zidd and ziddi in the plaintiff’s advertising campaign had been copied by the first defendant in its advertisements. Copying and using frames from the plaintiff’s advertising infringed the plaintiff’s intellectual property rights in its advertisement campaign. The use by the defendants of the expression Ziddi Perfume in a similar advertisement campaign amounted to passing off.

Anirudh Arora
Senior Associate
LexOrbis

The court held that the creative expression of the plaintiff’s commercials had been imitated and that this was likely to give an ordinary viewer the impression that the two commercials were connected or were put out by the same advertiser. The court held that there can be no monopoly or exclusivity on the use of the words zidd and ziddi as an idea showing perseverance. However, the portrayal of that idea has to be different from that of others. The court held that the first defendant’s commercials were simply imitations of the plaintiff’s advertising. The court held that the similarity in the theme and expression of the two sets of advertising was prominent and obvious when looking at the overall look and feel of the two campaigns.

The court ordered the defendants to take down the advertisements from YouTube and other websites. The first defendant was permitted to modify its advertisements as long as there was no similarity to those of the plaintiff.

The court in this case restated the long-established principle that there can be no exclusivity in respect of an idea. Only the expression of that idea can be protected. However, while the judgement held that courts are able to protect distinctive elements in advertising campaigns, it also highlighted the need to balance the rights of intellectual property holders against allowing fair competition.

Manisha Singh is a partner and Anirudh Arora is a senior associate at LexOrbis.

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