LANHAM ACT: THE SCOPE OF TRADE DRESS PROTECTION

Lanham Act, a popular name for the Federal Trademark Act of 1946 is the Act which deals with the federal statutes of trademark law in the United States. The Act inter alia precludes various sphere of action in the area of trademark usage like trademark infringement, trademark dilution etc. Among these comes another concept called "trademark dress." This is a concept which originated from the way a product is packed or a product's total image or appearance. It is distinctive, non-functional, and distinguishes a trader's or manufacturer's products or services from those of others.

Typically, trademark consists of only a set of words or a logo. On the other hand, Trade Dress includes appearances like size, color or combinations of color, shape, a product's packaging or atmosphere inside a store, restaurant etc. Moreover, trade dress encompasses both packaging and design of products.

The Act which was enacted in 1946 precluded a product's “false description or representation” by a “person who shall with knowledge of the falsity” put the product on trade.  This Act did not refer to trade dress protection as such.  Later on the courts extended protection granted under Section 43(a) of the Lanham Act to trade dress also basically creating a federal law to enhance fair trade practices.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) is a landmark case in the history of trademark dressing in US. In 1987, Taco Cabana sued Two Pesos in the United States District Court of the Southern District of Texas for trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982 ed.) and for theft of trade secrets under Texas common law. The case was then put forward to a jury. The jury was asked to put forth its verdict by answering five questions promulgated by the trial judge. The answers to these questions were as follows:

1)      Taco Cabana has a trade dress;

2)      Taken as a whole, the trade dress is nonfunctional;

3)      The trade dress is inherently distinctive;

4)      The trade dress has not acquired a secondary meaning in the Texas market; and

5)      The alleged infringement creates a likelihood of confusion on the part of ordinary customers as to the source or association of the restaurant's goods or services. [1]

In view of this verdict Taco Cabana's trade dress was safeguarded as it either was naturally unique or had derived a meaning which resulted in granting damages to Taco Cabana. Additionally, while calculating damages the court held that Two Pesos had intentionally and deliberately infringed Taco Cabana's trade dress.[2]

In Qualitex v Jacobson Products, 514 U.S. 159 (1995) court discussed trade dress protection in a different way. Qualitex's cleaning pads sold to dry cleaning establishments many years were green-gold in color. Jacobson Products started to sell pads of an identical color. The color was already registered by Qualitex as their trademark and they sued against Jacobson for infringement.

While considering the case the court took an opinion that color alone could be registered as a trademark. Furthermore, it was noted by the court that anything that could differentiate a provider can be registered which includes shape (of a bottle), sound (chimes or music), and odor (a particular fragrance). While presuming the above view the Court observed that color was nothing other than a distinguishing factor of a product and there was no reason to exclude color from that purview.  To register color it must be distinctive and non-functional. As there is nothing essentially distinct about color, secondary meaning is a requisite to build up distinguishing element based on the aspect of color.

In order to make a color registrable it must be non-functional. If it has a function, inclusive of aesthetic function it will not be registrable.  An example quoted by the Court was that of the competitors of John Deere farm equipment allowing painting their equipment green in spite of John Deere's trademark because farmers want their equipment to match. In addition the court enunciated a list with regard to the trademarks that stands above the trade dress protection. Those are:

     
     1.  § 1124 (ability to block importation of confusingly similar goods).       

     2.  § 1072 (constructive notice of ownership).         

     3.   § 1065 (incontestable status)

     4.   § 1057(b) (prima facie evidence of validity and ownership. [3]

The decision was reviewed by the Supreme Court of United States in Wal-Mart Stores v Samara Bros., Inc. (99-150) 529 U.S. 205 (2000). The Court decided on the circumstances under which a product’s design can be distinctive, and conditions under which it is entitled for protection where an action for infringement of unregistered trade dress under §43(a) of the Trademark Act of 1946 (Lanham Act) take place. Court held that product design, like color, is not inherently distinctive.

The Lanham Act provides for the registration of trademarks, which it defines in §45 to include:

 “any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer’s] goods … from those manufactured or sold by others and to indicate the source of the goods … .” 15 U.S.C. § 1127.

 Registration of a mark under §2 of the Act, 15 U.S.C. § 1052 enables the owner to sue an infringer under §32, 15 U.S.C. § 1114; it also entitles the owner to a presumption that its mark is valid, see §7(b), 15 U.S.C. § 1057(b), and ordinarily renders the registered mark incontestable after five years of continuous use, see §15, 15 U.S.C. § 1065.

 In addition to protecting registered marks, the Lanham Act, in §43(a), gives a producer a cause of action for the use by any person of “any word, term, name, symbol, or device, or any combination thereof . . . which … is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . …” 15 U.S.C. § 1125(a). [4]

The Supreme Court held that "the breadth of the definition of marks registrable under §2, and of the confusion-producing elements recited as actionable by §43(a), has been held to embrace not just word marks, such as “Nike,” and symbol marks, such as Nike’s “swoosh” symbol, but also “trade dress”–a category that originally included only the packaging, or “dressing,” of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product. See, e.g., Ashley Furniture Industries, Inc. v. Sangiacomo N. A., Ltd., 187 F.3d 363 (CA4 1999) (bedroom furniture); Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (CA2 1995) (sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780 (CA8 1995)." [5]

Distinctiveness is the most important aspect of the trade dress protection. It can be either acquired or inherent. It is pertinent to have distinctiveness of trade dress in claiming a "secondary meaning” where it is can be associated with not more than one specific brand. A design to be inherently distinctive should be unusual in shape, color etc when introduced in the market that is essentially distinct from others. Whereas, acquired distinctiveness is something that is acquired by a design through marketing, advertising, promotions etc. It is a "look" that consumers associate with a particular product's brand identity. Demonstration of such association by a consumer survey or other means can provide the "look" a secondary meaning. [6]

It can be concluded from the above discussions that while implementing trademark and related rights such as trade dress one must constantly be aware of the necessity to trade successfully and to maintain proof of ones marketing. By doing so one may acquire secondary meaning, which is the key aspect of trade dress protection. The more distinctive is the selection of mark and packaging design is, the better will be ones chances to claim protection to trade dress.

                                                                                                                                     Submitted by

Vinitha Prasannan

 

http://yarbroughlaw.com/Publications/pubs%20patent2%20Recent%20Developments%20in%20Trade%20Dress.htm

 

PARODY: HOW FAR A PROTECTED SPEECH

“You can parody and make fun of almost anything, but that does not turn the universe into a caricature”[1]

Unlike other forms of freedom of speech guaranteed under the First Amendment, parody and satire plays a paramount role in dome of trademark and copyright. The dichotomy of the terms “parody” and “satire[2]” has been considered and defined by various jurists under enormous circumstances.

Parody and its meaning:

Black’s law dictionary defines the word “parody” as “A transformative use of a well-known work for the purposes of satirizing, ridiculing, critiquing, or commenting on the original work, as opposed to merely alluding to the original to draw attention to the later work.” The origin of parody lies in the definition of the Greek parodeia, quoted in Judge Nelson’s Court of Appeals dissent, as “a song sung alongside another.” [3] Dictionaries has been describing parody as a “literary or artistic work the imitates the characteristic style of an author or a work for comic effect or ridicule” or as a “composition in prose or verse in which the characteristics turns of thought and phrase in an author or class of authors are imitated in such a way as to make them appear ridiculous.”[4]

In spite of its criticizing or ridiculing characteristics, a parody is guaranteed constitutional protection of free speech under the First Amendment of the US constitution. In Constitutional Law, a parody is protected as free speech. When considering parody under copyright law, a particular work is required to come under the definition of a parody and at the same time shall be a fair use of the copyrighted material, if not, it may constitute an infringement. This article provides an insight on the aspects related to the use of parody as a defense under free speech and the consequential rulings by various courts in the subject matter.

Legitimacy of parody:

It is a fact that a parody can claim legitimacy to some extent regardless of its copying and commenting nature, but this does not give either the parodist or a jurist about an idea as to the invisible line to be drawn that makes it illegitimate. For example, book reviews necessitates quoting of a copyrighted material for the purpose of criticizing, whereas a parody may possibly be a fair use considering the context and elements that constitute it. While considering a case,[5] the court declined the petitioner’s contention that any parodic use is presumably fair and stated that this has no more justification in law or on fact than the equally hopeful claim that the use for news reporting should be presumed fair.[6] 

The Act does not provide any proposal of favoritism over the victim for the parodists when it comes to evidence, and no practical presupposition for parody could be taken into account of the fact that a parody typically shadows into satire whilst the public is ridiculed by its inventive artifacts, or that such artifacts may have both parodic and nonparodic essentials. For that reason, like any other use, parody has to toil its line of attack through its pertinent features, and be adjudicated on a case by case basis, under the realm of trademark and copyright law.

Elements of parody:

In order to constitute parody there shall be certain distinguishing elements to the action of the parodists. The important features include an original work that is famous or familiar to a certain class of public. The parodists shall use only that much of the original work that is indispensable in the context in order to bring in the minds of the public the original work. Further, the parody shall subsequently become a fresh and original work.

When a work aims another work in a hilarious or satirical way, it constitutes a new creative work. This new creative work is capable to fight with other creative works in identical market even though they possess common characteristics.  But the fact that a parody is an independent innovative work can be established only when it "make some critical comment or statement about the original work which reflects the original perspective of the parodist—thereby giving the parody social value beyond its entertainment function." Metro-Goldwyn-Mayer, Inc. v. Showcase Atlanta Cooperative Productions, Inc., 479 F. Supp. 351, 357 (ND Ga. 1979).          

Trademark parodies

As the court observed in Anheuser-Busch, Inc. v. Balducci Publications 1993, p.794-5) "trademark parody is a subspecies of the genre that pokes fun at or criticizes a business entity by spoofing the entity's trademark. Trademark parody is only effective if the mark is well-known and the parody is enough like the original to invoke an association.... Thus, trademark parodies raise a legal tension not unlike that addressed by the fair use doctrine of copyright law; a tension between the legitimate property rights of the trademark owner and the rights of the parodist to free expression"

While putting forward the above mentioned view, the Court considered the case Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591, 114 S.Ct. 1164, 1178 (1994) and concluded that the opinion of U.S. Supreme Court in the copyright case was an important guide for cases related to trademark parody. The court further stated that for a trademark parody to be successful, it must call up the original. "A parody must convey two simultaneous--and contradictory--messages: that it is the original, but also that it is not the original and is instead a parody" (Elvis Presley Enterprises v. Capece 1998, p. 199).

Furthermore, it is an established fact that "Trademark parodies, even when offensive, do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987) (per Bownes, J.).  For the purpose of good defense in a case alleging infringement, a trademark parody needs to be used properly.

In re Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591, 114 S.Ct. 1164, 1178 (1994) (Souter, J.) court stated as follows: "We do not, of course, suggest that a parody may not harm the market at all, but when a parody, like a scathing theater review, kills demand for the original, it does not produce a harm cognizable under the Copyright Act. Because 'parody may quite legitimately aim at garroting the original, destroying it commercially as well as artistically,' the role of the courts is to distinguish between 'biting criticism that merely suppresses demand and copyright infringement, which usurps it.' "

Court had opined that trademark parodies convey a message even when they are offensive. It may remind us that trade and artifact metaphors are not required to be taken critically; for that matter a trademark parody remind us of the fact that “we are free to laugh at the images and associations linked with the mark."  L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987) (per Bownes, J.).

Parody and commercial speech:

While considering issues related to commercial speech, the courts had developed a four-part analysis. To start with, one must resolve whether the parodist’s expression gain protection under the First Amendment. To constitute commercial speech in that provision, the expression must not be misleading and it must relate to a lawful activity. Then, one must consider whether the declared interest of the government is substantial. When both these above mentioned aspects give affirmative answers, one must decide whether the law directly advances the declared interest of the government, and whether it is not more far-reaching than is required to provide that interest. 447 U.S. 557 100 S.Ct. 2343 65 L.Ed.2d 341 Central Hudson Gas & Electric Corporation, Appellant, v. Public Service Commission of New York.

Infringement criteria:

Both federal and state laws clearly establish the fundamentals for a successful trademark infringement claim. To sum up, when contesting a trademark case, a plaintiff has the burden to prove that the defendant’s act of using its mark has brought up a likelihood of confusion with regard to the In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created a likelihood-of-confusion about the source of the defendant's goods or services.

To prove the above aspect, a plaintiff must initially establish that its trademark is protectable. Further, the plaintiff will have to show that the defendant’s use of the trademark is confusingly similar and creates likelihood of confusion, among public. In the case of parody, the parody and the original work have to have that distinction and the public has to distinguish between the original and the parodic element the parodist intend to convey. When there is confusion, it can make the public believe that the defendant’s artifacts are somehow associated, connected, approved or authorized with the plaintiff or it is the same as that of the plaintiff.

Likelihood of confusion:

The courts have put forward eight factors to determine the elements of likelihood of confusion. This aspect is applicable in the case of parody also. In order to analyze whether a certain incident constitute the indispensable elements of "likelihood of confusion," courts usually look into eight factors as described below:

1.      The resemblance or similarity created by two marks when taken as a whole. (this aspects include the look of the marks, phonetic similarities, and fundamental meanings);

2.      The goods and services involved and their similarities (this include a review of the advertising channels for the goods);

3.      The potential strength of the plaintiff's mark;

4.      Evidence of actual confusion by the consumers, if any;

5.      The defendant’s intent in adopting its mark;

6.      The goods and its physical proximity in the retail marketplace;

7.      The likelihood of the consumer in exercising a degree of care; and

8.      The possibility of growth of the product lines.

The courts usually examine the above mentioned first five aspects when considering a trademark infringement case. The last three factors are, for the most part, additional general factors that courts can be consider.

To conclude, there is "a need to evoke the original work being parodied.[7]" Nonetheless, a good parody clearly stay away from causing likelihood of confusion as its intent is to highlight the difference between the host work and it’s parody. If the parodist fails to establish a clear distinction as mentioned above, the parody is no more a parody and it miserably fails.

 

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                 Bernard Berenson quotes (American art critic, 1865-1959)

                 Satire has been defined as a work “in which prevalent follies or vices are assailed with ridicule” 14, supra at 500 Oxford English Dictionary

                 972. F. 2d, at 1440, quoting 7 Encyclopedia Britannica 768 (15th ed. 1975).

                 11 Oxford English Dictionary 247 (2d ed. 1989)

                 Harper & Row, 471 U. S., at 561

                 Ibid

                 Campbell v. Acuff-Rose, Inc. 1994

ADVERTISEMENT LAWS OF INDIA- ITS TIME FOR A UNIFORM LEGISLATION

“Advertising is the foot on the accelerator, the hand on the throttle, the spur on the flank that keeps our economy surging forward”

Robert W. Sarnoff

            We live in the era of globalization where new products are being marketed within a splash of time. So in this competitive environment, every representation of a product or service is unique and is all about what ‘others are not’. These practices indeed raise questions about truthfulness and fairness of representation of products and services. If a person is about to start a business, even it’s a product or service or magazine or newspaper, the first thing he look into it is how he can market it. The basic idea behind advertising is that it is just a presentation, which may be oral or written, to induce consumption to make people buy things which they actually do not want. When it comes to India, advertising has a profound impact on how people understand life, the world and themselves, especially with regard to their values, choices and behavior.

            It is a naked truth that advertising is a business strategy which is in fact a powerful tool for enhancing, maintaining and developing brand equity. Therefore, it is crucial enough for companies to protect the content of an advertisement and to ensure that it is in line with the applicable laws. Even now many won’t realize the fact that which are the applicable laws governing advertising in India. At this point of time, it is pertinent to note that as far as India is concerned there is no as such law is there for regulating advertisement in any media. All one has to look into is a series of legislations and regulations relating to advertisements. But the fact is a common man should show pretty good amount of patience by going through all these rules and regulations as these will not as such constitute a complete structure on what one has to abide on the matter of advertisements.

ADVERTISING LAWS OF INDIA

As mentioned earlier the Government of India has not set up a regulatory body in India to regulate advertisements. But as in due course depending on the nature of the grievances, the power to regulate advertisements may be exercised by a vast variety of authorities, including the courts, Central and State Governments, tribunals or the police authorities. In addition to that numerous legislations also deal with advertisement provisions in part not in toto unfortunately. The rules, regulations and legislations include the following:-

1.      Advertising Standards Council of India (ASCI)

2.      Constitution of India

3.      Consumer Protection Act, 1986

4.      Information Technology Act, 2000

5.      Indian Penal Code, 1860

6.      The Young Persons (Harmful Publications) Act, 1956

7.      Indecent Representation of Women (Prohibition) Act, 1986 

8.      The Cigarettes and other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003

9.      The Cigarettes (Regulation of Production, Supply and Distribution) Act, 1975

10.  The Drugs and Magic Remedies (Objectionable Advertisements) Act, 1955

11.  The Drugs and Cosmetics Act, 1940

12.  The Emblems and Names (Prevention of Improper Use) Act, 1950

13.  Securities and Exchange Board of India (SEBI) (Stock-brokers and Sub-brokers) Rules, 1992 - Code of Conduct for Stock-brokers

14.  Securities and Exchange Board of India (SEBI) (Prohibition of Fraudulent and Unfair Trade Practices relating to Securities Market) Regulations, 1995

15.  Securities and Exchange Board of India (SEBI) (Mutual Funds Regulation), 1996: SEBI Guidelines for Advertisements by Mutual Funds

16.  Securities and Exchange Board of India (SEBI) (Disclosure and Investor Protection Guidelines), 2000

17.  The Prenatal Diagnostic Techniques (Regulation and Prevention of Misuse) Act, 1994

18.  The Transplantation of Human Organs Act, 1994

19.  The Representation of the People (Amendment) Act, 1996

20.  The Lotteries (Regulation) Act, 1998

21.  The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992

22.  The Competition Act, 2002

23.  The Contract Act, 1872

24.  The Civil Defense Act, 1968

To scrutinize certain principles and fairness in the sphere of advertising, Advertising Standards Council of India was established in India in 1985. ASCI deal with complaints received from consumers and industry against such advertisements which are false, misleading, indecent, illegal, leading to unsafe practices or unfair to competition and are in contravention to the advertising code[1]. Even though there is no as such provision for regulating advertisement policy in the Constitution of India, which should be adopted by press or media, the Supreme Court has given guidelines for the same through a series of decisions[2].

Consumer Protection Act, 1986 provides better protection of the interests of consumers and to make provision for the establishment of consumer councils and other authorities for the settlement of consum­ers' disputes and for matters connected to it, including protection against unfair trade practices.[3]

             India is one of the very few countries in the world besides Singapore to have legislated Cyber laws.[4] The IT Act specifically empowers that anyone who publishes in the electronic form, any material which is lascivious or which  tends to degrade persons who are likely to read, see or hear the matter contained or embodied in it, shall be punishable with imprisonment and fine[5]. Even there is a provision in the IT Act, which applies to any offence by which any person shall be punished irrespective of his/her nationality if the act constituting the offence involves a computer, computer system or computer network located in India[6].

As per the provisions of Indian Penal Code, 1860 certain advertisements are considered as criminal offences. It is dealt under different provisions of the Code[7]. The Young Persons (Harmful Publications) Act, 1956 prevents the dissemination of certain publications harmful to young persons. To be more précised harmful publication indicates such publications which would tend to corrupt a young person whether by inciting or encouraging him to commit offences. The Act also proclaims that whoever advertises or makes known by any means that any harmful publication can be procured from or through any person, then he shall be punished with imprisonment or with fine, or with both[8].

Indecent Representation of Women (Prohibition) Act, 1986 prohibits indecent representation of women through advertisements[9] or in publications, writings, paintings, figures or in any other manner and for matters connected therewith or incidental thereto. The Cigarettes and other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 and the Cigarettes (Regulation of Production, Supply and Distribution) Act, 1975, states that no person shall advertise for the distribution, sale or supply of cigarettes, and also shall not take part in the publication of such advertisement, unless the specified warning is included in such advertisement[10]. The Drugs and Magic Remedies (Objectionable Advertisements) Act, 1954 (DMRA) controls the advertisement[11] of such drugs which is said to provide magical remedies and to deal with other matters relating to it.

             As per the Drugs and Cosmetics Act, 1940 (DCA), no person shall himself or by any other person on his behalf offer for sale[12] any drug or cosmetic which is not of a standard quality, or is misbranded, adulterated or spurious. The Act gives similar restrictions to advertisements for traditional drugs such as Ayurvedic, Siddha and Unani. The Emblems and Names (Prevention of Improper Use) Act, 1950 is enacted to prevent the improper use of certain emblems[13] and names, for professional and commercial purposes[14].

            In the exercise of the powers conferred by section 30 of the Securities and Exchange Board of India (SEBI) Act[15], 1992, the Board makes the regulations on the code of conduct for Stock-brokers to be known as SEBI Stock-brokers and Sub-brokers Rules in 1992. The provisions of the Rules specified that a stock-broker or sub-broker is prohibited from advertising his business publicly unless permitted by the stock exchange, including in their internet sites, by its subsidiaries, group companies etc. The Prenatal Diagnostic Techniques (Regulation and Prevention of Misuse) Act, 1994, contains provision[16] which prohibits advertisements relating to predetermination of sex. The Act provides for the prohibition of advertisements of any kind for any body or person pertaining to facilities for pre-natal diagnosis of sex available at any centre or place.

The Transplantation of Human Organs Act, 1994 provides for the regulation of removal, storage and transplantation of human organs for therapeutic purposes and for the prevention of commercial dealings in human organs and for matters relating to it[17] and provisions are there for the punishment for commercial dealings in human organs.[18] While detailing the provisions of the Representation of the People (Amendment) Act, 1951 (RPA)[19], it is observed that during the period of forty-eight hours before the conclusion of the poll for any elections in that polling area, a person shall not display to the public any election matter by means of cinematograph, television or other similar apparatus[20]. The statute even provides penalty for anyone including the advertisers who contravene the above provision with imprisonment or fine or with both.

Now when we analyze the Lotteries (Regulation) Act, 1998, it is seen that a State Government has the discretionary powers to organize, conduct or promote a lottery, including advertising thereof subject to some conditions[21] specified in the Statute. It is also provided that the State Government may prohibit within itself the sale of tickets of a lottery organized, conducted or promoted by every other state[22]; if any contravention on the above the Central Government may, by order published in the Official Gazette, prohibit a lottery organized, conducted or promoted thereof[23]. The penalty[24] clause of the Act is such that if any person acts as an agent or promoter or trader in any lottery organized, conducted or promoted in contravention of the provisions of the Act or sells, distributes or purchases the ticket of such lottery, he shall be punishable with imprisonment or with fine or with both.

In online advertising scenario, the law related to gambling is applicable to online gambling. The online lottery is the most popular form of internet gambling in India. Most companies who markets/distributes/conducts the state government-sponsored lotteries through the internet are restricted from selling their services in the states that banned lotteries. So it is advised that the companies (as a safeguard) seek an undertaking from their consumers relating to their residence under which the advertisers who publishes the same should also make a note of it.

The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992[25] as Amended in 2003 regulates the production, supply and distribution of infant milk substitutes, feeding bottles and infant foods with a view for protecting and promoting breastfeeding and for the matters relating to it including advertisement[26] of the same[27].  The Competition Act, 2002 provides prohibition of certain agreements in respect of production, supply, distribution, storage, acquisition or control of goods or provision of services, which causes or is likely to cause an appreciable adverse effect on competition within India[28].

The provisions of Trademarks Act, 1999 clearly emphasize that the following are considered as trademark infringement if it is advertised in such a way as to[29]:-

a)               takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

b)               is detrimental to its distinctive character; or

c)               is against the reputation of the trade mark.

Thus if used properly and without any malafide intention, then comparative advertisement can prove beneficial otherwise that may mislead consumers resulting into irreparable loss as well as legal battles[30].

As per the Contract Act, 1872, the advertisements for gambling, lottery and prize games have held to be wagering contracts and thus void and unenforceable[31], are prohibited in India. While reading the provisions of the Act along with the ASCI guidelines it is understood that even the incorporation of a visual representation of such gaming room or table could be construed as indirect advertisement.[32]

The Civil Defence Act, 1968 gives power to the Central Government to make rules for securing civil defence[33] for prohibiting the printing and publication of any book or other document containing matters prejudicial to civil defence[34]. Rules could also be made for demanding security from any press used for the purpose of printing/publishing of any book or other document containing matters prejudicial to civil defence[35].

ITS TIME FOR A UNIFORM LEGISLATION!!!!

It is an undisputed fact that advertisement plays a vital role in building up any business. The aim of advertisement is to attract the sales and enhance the visibility of the products and services of the company among the consumers. Through an advertisement, a company can build an image which it wants to make in the minds of the people. Therefore, nowadays, companies spend a huge amount of their resources on advertising and promotional strategies. Now there is even a new medium for advertisers to explore, the Internet!!!

           Thus it is evident from this blog that there are no specific legislations governing advertising in India, other than ASCI even which is not up to the mark to govern advertising spectrum. The changing context of liberalization and globalization required better regulation and strengthening of the institutional support. Even the IT Act is currently under severe scrutiny, as its scope leaves a lot to be desired. The fast growing internet transactions has unnerved evils, including those relating to online advertising. It is evident that all that is needed a codified uniform legislation for Advertising Laws and its time for India to lead the road ahead!!!!!!

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[1]See  http://www.ascionline.org/ for Advertising Code. The ASCI Code is a self-regulatory code which is not legally binding on parties. However, in practice ASCI members include various media, publishers etc. who normally abide by decisions of the Complaint Complaints Council set up by ASCI. The ASCI Code covers all media including the online media. Please also refer to the section on General Requirements. Disobedience of ASCI’s decision does not lead to any civil or criminal consequences. Its enforcement mechanism is through non-publication of the contravening advertising by its media members.

[2] Hamdard Dawakhana v. Union of India AIR 1960 SC 552; Tata Press Ltd. v. Mahanagar Telephone Nigam Ltd (1995) 5 SCC 139.

[3] As the Monopolistic and Restrictive Trade Practices Act, 1984 is repealed after the coming into force of Competition Act, 2002 the unfair trade practices provisions of the MRTP Act will be enforced under the Consumer Protection Act.

[4] Guide to Cyber Laws (Information Technology Act, 2000, E-commerce, Data Protection & the Internet, Rodney D. Ryder, 2^nd Edn. Reprint 2005, p.399.

[5] Section 67 of the IT Act, 2000

[6] Section 75 of the IT Act, 2000

[7] Section 292 (1) of Indian Penal Code, 1860; Section 292(2)(d) of Indian Penal Code, 1860; Section 292 (2)(e) of the Indian Penal Code, 1860; Indian Penal Code, 1860, Section 292- Exceptions, Section 292 A of Indian Penal Code, 1860; Section 292 A (e), (d) of Indian Penal Code, 1860; Section 293 of IPC, 1860; Section 294 A of IPC, 1860, Section 153 A of IPC, 1860, Section 153 B of IPC, 1860

[8] Section 3 of the Harmful Publications Act, 1956

[9] Section 2(a) of the Indecent Representation of Women (Prohibition) Act, 1986 defines advertisement- "Advertisement" includes any notice, circular, label, wrapper or other document and also includes any visible representation made by means of any light, sound, smoke or gas.

[10] Section 5 (1), the Cigarettes and other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 (CTPA)

[11] Section 2(a) of the Drugs and Magical Remedies (Objectionable Advertisements Act), 1954 defines " advertisement " includes any notice, circular, label, wrapper, or other document, and any announcement made orally or by any means of producing or transmitting light, sound or smoke;

[12] Section 18 of the Drugs and Cosmetics Act, 1940

[13] Section 2(a) of the Emblems and Names (Prevention of Improper Use) Act, 1950 defines emblem as any emblem, seal, flag, insignia, coat-of-arms or pictorial representation specified in the Schedule.

[14] Schedule of the Emblems and Names (Prevention of Improper Use) Act, 1950 enumerates the list of emblems and names which are prohibited from improper use in professional and commercial purposes.

[15] Visit http://www.sebi.gov.in/acts/act15ac.html

[16] Chapter VII Prenatal Diagnostic Techniques (Regulation and Prevention of Misuse) Act, 1994

[17] Preamble of The Transplantation of Human Organs Act, 1994

[18] Chapter VI, Section 19 of The Transplantation of Human Organs Act, 1994

[19] Section 126 of The Representation of the People (Amendment) Act, 1951 (RPA)

[20] Section 126 A is inserted in THE REPRESENTATION OF THE PEOPLE (SECOND AMENDMENT)

BILL, 2008 which provides a person shall not conduct any exit poll and publish or publicise by means of the print or electronic media or disseminate in any other manner, whatsoever, the result of any exit poll during such period, as may be notified by the Election Commission in this regard. For the purpose of this section, ‘‘electronic media’’ includes internet, radio and television including Internet Protocol Television, satellite, terrestrial or cable channels, mobile and such other media either owned by the Government or private person or by both;

[21] Section 4 of the Lotteries (Regulation) Act, 1998, the conditions includes the following:-

a)         Prizes shall not be offered on any pre-announced number or on the basis of a single digit;

b)       The State Government shall print the lottery tickets bearing the imprint and logo of the State in such manner that the authenticity of the lottery ticket is ensured;

c)        The State Government shall sell the tickets either itself or through distributors or selling agents;

d)       The proceeds of the sale of lottery tickets shall be credited into the public account of the State.

e)        The State Government itself shall conduct the draws of all the lotteries;

f)        The prize money unclaimed within such time as may be prescribed by the State Government or not otherwise distributed, shall become the property of that Government;

g)       The place of draw shall be located within the State concerned;

h)       No lottery shall have more than one draw in a week;

i)         The draws of all kinds of lotteries shall be conducted between such periods of the day as may be prescribed by the State Government.

j)         The number of bumper draws of a lottery shall not be more than six in a calendar year;

k)       Such other conditions as may be prescribed by the Central Government.

[22] Section 5 of the Lotteries (Regulation) Act, 1998

[23] Section 6 of the Lotteries (Regulation) Act, 1998

[24] Section 7(3) of the Lotteries (Regulation) Act, 1998

[25] The Act is named as The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992 as Amended in 2003 (IMS Act) visit http://www.bpni.org/docments/IMS-act.pdf

[26] Section 2(a) of The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992 as Amended in 2003 (IMS Act): “advertisement” includes any notice, circular, label, wrapper or any other document or visible representation or announcement made by means of any light, sound, smoke or gas or by means of electronic transmission or by audio or visual transmission;

[27] Preamble of The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992.

[28] Chapter II of the Competition Act, 2002

[29] Section 29(8) of Trademarks Act, 1999.

[30] Reckitt Benckiser v Hindustan Lever 2008 (38) PTC 139; Pepsi Co Inc v Hindustan Coca Cola Ltd 2003 (27) PTC 305 (Del)

[31] Section 24 to 30 of the Indian Contract Act, 1872.

[32] Chapter III, Clause 6(d) and (e) of the ASCI Code.

[33] Chapter II of the Civil Defence Act, 1968

[34] Chapter II, Section 3(1)(w) of the Civil Defence Act, 1968

[35] Ibid, n.122