Distinctive elements in advertisements campaigns protected under IP laws: Delhi High Court

Distinctive elements in advertisements campaigns protected under IP laws: Delhi High Court

"The similarity in the theme and expression is quite prominent and palpable when one views Plaintiff's commercial and thereafter views Defendant No.1's commercial, especially owing to the overall look and feel of the two campaigns."

The Delhi High Court in its recent judgment held that distinctive elements in advertising campaigns can be protected by the courts under Intellectual Property Law.

The present suit was filed by Bright Lifecare Pvt Ltd (Plaintiff) – a company engaged in manufacturing and trading health supplements, nutraceuticals, and food products against Vini Cosmetics Pvt Ltd (Defendant) which manufactures and merchandises pharmaceuticals, ayurvedic and cosmetic products.

In 2018, Plaintiff started a video campaign titled 'Ziddi Soon Main' on several platforms. The words 'Zidd' and 'Ziddi' were used to describe a person who never gives up. However, in 2022 the Defendant came across two advertisements of the Plaintiff company using the word 'Realman' for their deodorants.

It was noted by the Court that the words 'Zidd' and 'Ziddi' were also used by the Plaintiff for several other slogans.

The Single judge bench of Justice Prathiba M Singh opined that the threshold for establishing distinctiveness would be quite high and unless and until there is enormous distinctiveness and the likelihood of confusion or deception, the court would not grant an injunction against a rival campaign because it may stultify creativity.

"Thus, in law, an advertising campaign, if it signifies the source and has become distinctive of the Plaintiff, can be granted protection," the Court held.

The Plaintiff argued that these advertisements were conceptually and visually similar to the Plaintiff's. It was also alleged that the Defendant has adopted the tagline 'Ziddi Perfume' which is deceptively similar to their mark and has therefore infringed the copyright involved in the cinematograph work.

Upon reviewing the submissions made by both the parties and considering the screenshots and viewing both the advertisements, the Court was of the opinion that the two commercials are likely to give an ordinary viewer the impression that they are connected or emanating from the same source.

It was stated by the Court that:

"The overall theme of dark setting, persons working out, use of 'ZIDDI' and 'ZIDD' and color of yellow and black is present in the Plaintiff's and Defendant No.1's campaign… There is no doubt that no monopoly can be granted over the concept and idea of 'ZIDD' and 'ZIDDI'. However, the portrayal of the same by picking almost identical elements, cannot be completely ignored by the Court"

The Court further held that while there can be no monopoly or exclusivity on the use of the word 'Zidd' and 'Ziddi' as an idea to show perseverance but the portrayal has to be different.

"There can also be no monopoly or exclusivity on showing a muscular person working out in a gym but the expression of the idea has to be different. Again, the portrayal of a person using a punching bag can also not be monopolized but the expression has to be different. In the impugned commercials, in the opinion of the Court, the expression is a colorable imitation of the Plaintiff's advertising commercial," the single-judge opined.

Therefore, the Court directed the Defendant to pull down the two commercials from YouTube and other platforms.

It, however, clarified that the Defendant cannot be refrained from using the words or expression 'Zidd' or 'Ziddi' in a manner that is not similar or identical to Plaintiff's and they are free to modify their ads to remove the objectionable frames and then re-launch them.