The Complexities of Trademark Disparagement: A Jurisprudential Analysis

11th July, 2024 - 11:28 am Categories: Trademark 0 Comments

Introduction

Disparagement, a concept intrinsically linked to the act of denigrating a product or service through misleading or false remarks, has significant implications in the realm of commercial law. It not only affects the reputation and market position of businesses but also raises intricate legal questions about the boundaries of free speech and fair competition. A business may suffer real injury when either a competing or an impartial party derogates its solvency, its business methods, or the quality of the product it sells.[1] The jurisprudence around disparagement in India and globally has largely revolved around issues concerning advertisements where companies with competing interests via a comparative advertisement disparage the other. In the absence of such competing interests usually civil suits for defamation, trade libel and making false assertions among others. However, recent judicial interpretations in India have started to explore whether disparagement can exist outside the traditional confines of advertisements and direct product comparisons.

This article delves into the jurisprudential analysis of notable cases that have shaped the understanding of disparagement in India, focusing particularly on the evolving interpretations of Section 29(8) and Section 29(9) of the Trade Marks Act. These sections deal with the protection of trademarks from being unfairly tarnished or misrepresented, yet they have been predominantly applied in the context of comparative advertising. The Trade Marks Act does not explicitly provide a remedy for disparagement outside the context of advertisements. Section 29(8) focuses on preventing the misuse of trademarks in a manner that takes unfair advantage of or is detrimental to their distinctive character or repute. The cases of Winzo Games v. Google LLP and Dabur India Limited v. Dhruv Rathee provide compelling insights into how Indian courts are grappling with the nuances of disparagement and trademark use.

Jurisprudential analysis of selected significant cases in this context

In the case of Winzo games v. Google LLP, the warning sign displayed by Google reading “This type of file may harm your device. Do you want to keep WinZO.apk anyway?” was contested by Winzo as it tends to impute an impression that Winzo’s service could be harmful to its users. The warning was placed since the apk file to be downloaded was unverified by Google and there has been no indication or issue of Winzo causing any harm to its users.

While dealing with the argument of Winzo with regard to disparagement, the Court refused to grant remedy citing the lack of three conditions; the absence of comparison between the products and services of Winzo and Google, the absence of any advertisements by Google disparaging Winzo and the absence of any competing interests among the parties. The Trade Marks Act per se does not provide for a statutory provision expressly to remedy disparagement unless there via an advertisement. Section 29(8) protects marks whose use is “ not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.” Along with this the display of warning was held to be justified in public interest to warn public for their safety. This decision was supplemented by another argument suggesting that to constitute disparagement and infringement there first must be a ‘use’ of the trademark as recognised in the Trade Marks Act.

[Image Sources:Shutterstock]

What seems to have been left out is the use of marks in scenarios where a trademark although not ‘used’ as limited described in the Act, is still detrimental to its distinctive character or repute. This exclusion could potentially infringe the rights of trademark owners and cause to damage to their reputation. This interpretation of ‘use’ limits the scope and fails to address scenarios where a trademark, though not ‘used’ in the traditional sense, still harms its distinctive character or reputation. In the Winzo Games case, the application and interpretation of Section 29(8) only consider trademark use in advertisements, hindering the plaintiff’s ability to prove damage to its trademark’s reputation without advertisement.

However, the trade mark law, having been put in place only since 1940, mostly finds its roots in common law. Contrary to the view expressed in Winzo Games case, there however is a judicial approach were the presence of advertisements in the picture was not considered to be necessary element in establishing disparagement.

In Dabur India Limited v. Dhruv Rathee, Dhruv Rathee, Dhruv Rathee, a Youtuber set up himself in a court battle against Dabur India for censuring its “ Real ” packaged fruit juice in his videotape. Dabur approached the Calcutta High Court, alleging disparagement. The court reached the conclusion that any consumer would infer that the product shown in the video belongs to the petitioner and to remedy it ordered YouTube to take down the video entirely. The rationale for this order was that the video contravenes section 29(9) of the Trademarks Act. The Court also relied on this provision which talks about infringement of a mark by its spoken use or visual representation, to conclude that the unsanctioned use of logo, label or packaging of the product Real in the video violated the trademark and copyright protection. The section was made applicable regardless of the intention of the respondent.

The interpretation of the said section was done along a similar lines by the Delhi HC in the case of Hamdard National Foundation v. Hussain Dalal as well, wherein it has said that “ spoken words should be misstatement or causing confusion and deception which is the gist of the passing off action or in the volition, the said spoken words should beget violation by way of lacing the distinctive character and character of the trade mark which may either intention or unintentional. ” thus, while intent to defame or calumniate the character of the mark is a no consideration then, what needs to be seen is that the alleged conduct are misstatement, causing confusion and deception.

In both these cases we see that the section was made applicable regardless of considering the intention of the respondent and even if there is no advertisement, product comparisons and competing interests.

Conclusion

Ultimately, one crucial objective of trademark protection and against disparagement is to prevent the product from being falsely affiliated or associated with inferior quality or characteristics, thereby safeguarding the brand’s reputation and the market for its products/services.

Despite the above discussed set of precedents neither the Courts nor the legislature has concretely clarified the position of disparagement in the absence of advertisements explicitly.

We can however see a lineage towards the position of finding disparagement in cases that do not involve competing product/ service interests. In the subsequent orders in the Winzo Vs Google LLC case, we see that the Courts had suggested google to consider a less severe warning[2] considering that the warning message imputes potential harm to users’ devices, raising the question of whether such a message would reasonably lead an average man to believe that downloading the file could harm their device, thus dissuading them from downloading it. This argument was strengthened by the allegation that many WinZO users come from less technologically aware tier-2 and tier-3 cities,[3] who may interpret the warning literally. Furthermore, WinZO Games has contended that their download rates have significantly decreased due to the warning message. If WinZO can successfully prove these with evidence in subsequent hearings that this warning has indeed caused harm and resulted in losses, the Court may be inclined to agree that the message needs modification and maybe even set another precedent beyond mere statutory construct, and define and  disparagement outside the ambit of comparative advertisements.

Author: Aparna R Krishnan, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] Statements will be classified arbitrarily throughout this Comment as concerning (1) financial status, (2) business methods, and (3) products. Some statements, such as those alleging that a company has gone out of business, do not fit squarely within one

category. The status of such statements will be noted when each category is discussed.

[2] https://tennews.in/delhi-hc-asks-google-to-use-milder-warnings-for-the-winzo-app/; https://www.google.com/url?sa=t&source=web&rct=j&opi=89978449&url=https://inc42.com/buzz/delhi-hc-asks-google-to-consider-putting-milder-disclaimer-while-downloading-winzo-app/&ved=2ahUKEwiYve6zscOFAxV_m2MGHUanB6cQFnoECB0QAQ&usg=AOvVaw0njqRBIRkwvpFfZ3_roiA0; https://www.google.com/url?sa=t&source=web&rct=j&opi=89978449&url=https://m.economictimes.com/tech/technology/delhi-high-court-asks-google-to-consider-softer-warning-for-winzo-app-downloads/articleshow/98978672.cms&ved=2ahUKEwiYve6zscOFAxV_m2MGHUanB6cQFnoECBoQAQ&usg=AOvVaw19gn-rMjmlvuZpl1ewzRm0; The Court said “You can say it is unverified. Harm may be a harsh word….You can say it is unverified and download it at your own risk.”

[3] https://g2g.news/online-gaming-laws/cannot-dilute-download-warning-for-winzos-app-google-to-delhi-hc/