Delhi High Court orders for the protection of distinctive elements in an advertisement under IP laws

The High Court of Delhi recently pronounced a decision in Bright Lifecare Private Ltd v Vini Cosmetics Private Limited and Anr.[1] vide judgment dated July 7, 2022, on the aspect of protection of distinctive elements under intellectual property law.

The Bright Lifecare Private Ltd (“Plaintiff”), is a company engaged in the business of manufacturing and trading health supplements and Vini Cosmetics Private Limited (“Defendant No. 1”) is engaged in the business of manufacturing and merchandising pharmaceuticals. YouTube was made by Defendant No. 2, where Defendant No. 1’s advertisements were showcased.

In 2018, the plaintiff launched an advertisement campaign for its product ‘MuscleBlaze (MB)’, using slogans including but not limited to ‘Zidd Hoon Mein’; ‘Ziddis don’t wait’; ‘Naam Hai Ziddi’; and ‘Phir Se Zidd’. Furthermore, the plaintiff holds registered trademarks for the words “ZIDD” and “ZIDDI” as well as for the abovementioned slogans. In January 2022, the Plaintiff came across the Defendant’s advertisements which were allegedly visually and conceptually similar to that of the Plaintiff. Subsequently, the Plaintiff filed a suit claiming infringement of various intellectual property rights including trademark and copyright against the Defendant.

In particular, the Plaintiff filed a suit with respect to the imitation of advertisement by the defendant. The Plaintiff alleged that the defendant had adopted the mark “ZIDDI PERFUME” with the intent to use it in a similar manner as that of the Plaintiff (i.e. to describe the essence of the product). Further, the Plaintiff, in its advertisements used ‘yellow’ and ‘black’ as the colour theme to display the name of the product at the end of the advertisement. Additionally, it is interesting that the theme of the Plaintiff’s advertisement revolved around people exercising (depicted through using ropes and boxing) in the gym and the defendant imitated the Plaintiff’s advertisement by adopting the same exercises to be depicted in its respective commercial for its product.

The Court, in its elaborate judgment, primarily adjudged on the following issues as regards the similarities between the advertisements of the Plaintiff and the Defendant:

• Whether the concept and expression as adopted by Plaintiff has been imitated by the Defendant in advertising their product;
• Whether the spectator or viewer, on viewing both the works is of the opinion that the Defendant’s advertisement is a copy of the plaintiff’s advertisement.

In pursuance of deciding whether there was an infringement or not, the Court dwelled and explored ‘if there is any substantial similarity between the respective work of the Plaintiff and Defendant No.1 which would be apparent to any ordinary observer’.  

On reviewing the comparative characteristics of the respective advertisements, and from deriving precedented tests as laid down by various national and international judicial pronouncements, the court held that upon viewing the respective advertisements, a viewer would believe the advertisements to originate from the same source. Further, the court held that the creative expression adopted by the plaintiff to advertise its product had been replicated by the defendant. The Court held so on the grounds that ‘the impact of the Defendant’s commercial on a viewer is in a fleeting moment and not after a detailed microscopic analysis’. The honourable judge in furtherance of the above stance clarified that the ‘goodwill in an advertising campaign is protected’.

The Court pronounced that the advertisement belonging to the Plaintiff and the Defendant are very similar. Pursuant to this, the Court ordered the Defendants to pull down the advertisements from youtube.com and other websites. Further, the Defended was permitted to modify their advertisements in order to eradicate all similarities except the use of the term “ZIDDI” or “ZIDD” to the effect that such words only describe the long-lasting nature of the deodorant and are not used in a manner to draw any similarities or relation with the Plaintiff’s marks.

[1] CS(COMM) 144/2022 & I.A. 3585/2022