Presentation on theme: "WIPO-NIFT TRAINING THE TRAINERS WORKSHOP ON INTELLECTUAL PROPERTY RIGHTS New Delhi, June 20 to 24, 2005."— Presentation transcript:
WIPO-NIFT TRAINING THE TRAINERS WORKSHOP ON INTELLECTUAL PROPERTY RIGHTS New Delhi, June 20 to 24, 2005
2 Intellectual Property and Advertising Lien Verbauwhede Consultant, SMEs Division World Intellectual Property Organization (WIPO)
3 1. INTRODUCTION THE GROWING ROLE OF ADVERTISING IN THE MARKET ECONOMY
4 Today: bussinesses beckon customers with all types of advertising tools –Business signs –Pamphlets, door drops –Brochures –Billboards –Radio & TV communications –Telephone solicitations –Commercial text messages – advertisements –Banners –Pop-ups –Rich media advertisements
5 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
6 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
7 This presentation IP issues in the process of advertising Protect your IPRs in your advertising Dangers in violating IPRs of others
8 2. HOW TO PROTECT YOUR IP RIGHTS IN ADVERTISING
9 (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
10 –Advertising techniques or means of doing business patent (not in India) –Website design copyright –Distinctive packaging trademark, industrial design, trade dress –Persons identity publicity or privacy rights –Databases copyright/sui generis –Unfair advertising methods unfair competition laws, tort
11 (b) How to protect your creative advertising? Cfr. presentation on Website
12 (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...
13 3. DANGERS IN VIOLATING THE IPRs OF OTHERS WHILE CREATING OR USING ADVERTISING CONTENT
14 (a) Can you use material owned by others in your advertising? Technocal tools and software Copyright works Photographs Freeware Material in public domain Cfr presentation Website
15 (b) Use of others likeness Tennis star Sania Mirza promoting Tata Indicom mobile phone Nicole Kidman is the new face of Chanel No 5
16 In many countries: name, face, image, voice, other likeness of individual protected by privacy and publicity rights Right of publicity -Persons image has economic value -Presumed to be result of persons own effort -Gives person right to exploit own image Right of privacy Person has right to protect image form certain uses by others
17 Fashion brewery sells calendar with unknown persons driving car with refreshing pint in their hands - without permission...
18 Textile company sells catalogue with Sania Mirza wearing its cloths - without permission... (ficticious example)
19 (c) Can you use a competitors 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
20 Therefore: Use of competitors 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
21 How to use competitors trademark in advertising? 1.Do not alter competitors trademark, especially if it is a logo (size, color, spelling) trademark dilution and infringement 2.If it contains graphic elements (logo, label, design, 3D figure) authorization copyright 3.Be careful when using competitors trademark in metatags, linking, framing, domain names trademark infringement, unfair competition
22 4.Key word triggering Ficticious example: -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
23 5.Primary meaning of your advertising should be to inform the consumer, not to discredit or unfairly attack competitors 6.Mark competitors trademark with trademark symbol 7.Avoid using competitors trademark in way that suggests competitor endorses or sponsors your advertising product E.g. Prominently featuring logo of competitor 8.Do not take unfair advantage of reputation of competitors to promote your own business
24 (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)
25 Can you compare qualities of your products with those of competitors? Some countries: Truthful comparisons are informational for competition Beneficial to competition Some countries: Only allowed if specific requirements fulfilled Some countries: Forbidden Some countries: Forbidden for certain products
26 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
27 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 plaintiffs Cherry Blossom. There is a red blob on Brand X which represents CHERRY and appears on plaintiffs product also.
28 Court: –Comparative advertisement permissible but should not to be intended to disparage or defame the competitors product. –Kiwi ad disparaging to Reckit & Colmans product and does not hinder freedom of speech –Kiwi restrained from advertising its products in a disparaging manner.
29 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.
30 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
31 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.
32 (e) Sensitive products Special controls or prohibitions on advertising Medicines Tobacco Food Toys Pornography Credits Slimming products Casino games
33 (f) Advertising and children E.g. Glamorize violence in advertising directed to children E.g. Use of children in advertising
34 (g) Marketing practices Direct marketing: via mail, fax, door-to-door, , sms, Unsolicited s (spam) Free gifts, discounts
35 4. CONCLUSIONS
36 Create yourself, rather than using others 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
37 Do not use competitors 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