In CS(COMM) 144/2022 – DEL HC – Advertising campaigns including commercials involve enormous creativity & originality; undoubtedly protectable under intellectual property law: Delhi High Court Justice Prathiba M Singh [07-07-2022]

Read Order: BRIGHT LIFECARE PVT. LTD Vs. VINI COSMETICS PVT. LTD. & ANR

Mansimran Kaur

New Delhi, July 9, 2022: Even a ten second commercial involves enormous creativity and originality, thus an advertising campaign including commercials is undoubtedly protectable under intellectual property law, the Delhi High Court has observed.

The Single bench of Justice Pratibha M. Singh allowed the suit alleging that the defendant adopted the tagline “Ziddi” Perfume which was deceptively similar to the mark of the plaintiff. The High Court was of the view that the manner in which the defendant portrayed it in the commercial using the same color combination, the same dark background depicting muscular persons working out in a gym using a rope and punching bag, was very evocative of the plaintiff’s advertisement campaign.

The question before the Court in the instant matter was whether an advertising campaign and its various elements are protected under the intellectual property law. 

“The settled legal position is that there can be no copyright in an idea but only in its expression. This idea-expression dichotomy is the subject matter of innumerable decisions worldwide but the rule itself is unexceptionable. 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,” the High Court observed.

“It requires an understanding of the product, its qualities, features, what is to be highlighted, manner of highlighting the product, capturing of the theme, weaving of a story, adding creative elements, deciding on endorsees, how to capture the story, shooting of the video and other imagery, studio set up and finally connecting the entire campaign to the consumer,” the Court noted. 

Factual matrix of the case was such that the plaintiff – Bright Lifecare Pvt. Ltd. – was a company engaged in the business of manufacturing and trading of health supplements, nutraceuticals and food products. It instituted the present suit claiming infringement of various rights under the copyright laws, trademark, passing off, etc. 

One of the products of the plaintiff was a protein supplement which was sold in a series of products under the MuscleBlaze (MB) trademark.  The first defendant was a company involved in the business of manufacturing merchandising of pharmaceuticals, ayurvedic and cosmetic products under the house mark VINI. The first defendant claimed to have a strong presence in the deodorant and perfume segment in the Indian market. Some of its brands were Fog, Ossum, and Whitetone.

The advertisements of the first defendant that were aired allegedly infringed on the rights of the plaintiff. It was the case of the plaintiff that in March of 2018 it started an advertising campaign in the form of a video titled “Ziddi Hun Main” on several online platforms. 

Thereafter, in January 2022, the plaintiff came across advertisements of a deodorant product named “Real man” of the first defendant, which as per the plaintiff, were conceptually, visually similar to the plaintiff’s advertisements. 

The plaintiff further alleged that the defendant adopted the tagline “Ziddi Perfume” which was deceptively similar to the mark of the plaintiff. In view of the same, the present suit was preferred. 

After hearing the submissions of the parties and after pursuing all the material available on record, the Court noted that the prime question that was posed for consideration before the present Court was whether advertising campaigns of this nature are capable of getting protection. 

“Even a ten second commercial involves enormous creativity and originality. Thus, advertising campaigns including commercials are undoubtedly protectable under intellectual property law,” the Court opined. 

The Court also noted that a mere idea behind the commercial is not protectable, only the elements of expression incorporated in the commercial are protectable. In view of the same, the Court noted that apparently, both the parties do not use the concept of “Zid” or “Ziddi” as  trademarks for their products.  

The Court placed its reliance on the case of R.G. Anand v. Deleux Films , wherein the Apex Court summed up the test of determination of copyright infringement. Further reliance was also placed on the case of India Tv Independent News Service Pvt. Ltd. v. Yashraj Films Pvt. Ltd. 

In view of the aforestated precedents, the Court observed that it is settled in law that there cannot be any exclusivity in respect of an idea but only the expression can be protected.

Further reliance was placed on the case of n Cadbury-Schweppes v. The Pub Squash Co. Ltd. (New South Wales) [1981] RPC 429, wherein it was observed that where it was categorically held that confusion or deception arising from descriptive material such as slogans and visual images in an advertising campaign can amount to passing off. 

Thus, the Court 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. 

Coming back to the facts of the present case, the Court noted that deodorants and perfumes belong to completely different product categories to that of the plaintiff’s and cannot be confused with each other. 

In spite of the said fact, the first defendant was entitled to use the word/expression ‘ZIDDI’ or connote the quality thereof, however, the manner in which it is used in the same color combination, in the same dark background depicting muscular persons working out in a gym using a rope and punching bag was very evocative of plaintiff’s advertisement campaign, the Court submitted.

In this case, in both the commercials, the High Court was of the view that the creative expression of the plaintiff’s commercials has been imitated. Thus, in the opinion of the Court, the two impugned commercials which are evocative of and very similar to plaintiff’s campaign were liable to be restrained in their present form.

In light of the aforesaid observations, the Court directed the defendants to pull down the two impugned commercials from www.youtube.com and other platforms where they were available for viewing by the public.