Transcript No Slide Title

WIPO-NIFT
“TRAINING THE TRAINERS” WORKSHOP
ON INTELLECTUAL PROPERTY RIGHTS
New Delhi, June 20 to 24, 2005
Intellectual Property
and
Advertising
Lien Verbauwhede
Consultant, 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
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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
Cfr presentation
Website
•Freeware
•Material in public domain
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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 privacy
Person has right to
protect image form
certain uses by others
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
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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
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If it contains graphic elements (logo, label,
design, 3D figure) → authorization
→ copyright
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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
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Ficticious example:
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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
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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:
• Forbidden for
certain products
Some countries:
• Only allowed if specific
requirements fulfilled
Some countries:
• Forbidden
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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/
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