Representing oneself as No.1- Unfair trade Practice or not?

As my tryst with the much loved world of audio-visual communication world continues, there is a thought that resonates every once in a while- The world of advertising and trademarks share a symbiotic sort of relationship, feeding on each other - While advertising facilitates the use of trademarks, it is the viable and undefied use in the course of trade and marketing that urges the registration of marks.

To me this seems like a vicious cycle, which shall only expand with the world of communication and electronics.

I recently saw an advertisement, claiming its product to be No.1. Obviously, the product wasn’t a leader in its segment, yet the confidence in the eyes of its models was worth appreciation. Not to blame them, they were playing their part, and in a commendable fashion.

As this stuck in my head, I skimmed through the Trademarks Act, 1999 to see if there was any recourse to such a representation. The Trade Marks Act, under S. 2 (1)(i) describes false trade description as:

“(I) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied, or…”

From a further reading of the Act,S. 2(1) (za) defines “trade description means any description, statement or other indication, direct or indirect,-…

… (ii) as to the standard of quality of any goods or services according to a classification commonly used or recognised in the trade; or…”

What I am unable to comprehend is, whether the representation of a brand or product as something as staunch as No. 1, without being backed by proper statistical verification by a government body, is in fact “material” or not?

Further on, the Consumer Protection Act of 1986 defines unfair trade practice as

(q)“unfair trade practice" means a trade practice which, for the purpose of promoting the sale, use or supply of any goods or for the provision of any service, adopts any unfair method or unfair or deceptive practice including any of the following practices, namely;—

(1)the practice of making any statement, whether orally or in writing or by visible representation which,—

(i)falsely represents that the goods are of a particular standard, quality, quantity, grade, composition, style or model;…

However, in the light of the fact that one is allowed to puff and use superlatives to describe one’s products, does expressing oneself as No.1 really attract a cause of action?

I am not sure. While there are multiple facets on which a brand may “consider” itself as the leader, the fact is that such representation, without proper corroboration as to the source, aspect etc., to my mind is indeed misleading. In fact to my eyes, this does not qualify as puffing or even misleading, but in fact can be termed as literal falsehood.

Another facet that seems interesting to me is that while unfair trade practices are barred by legislation, the Act is carefully worded to use the phrase “promoting the sale, use or supply of any goods or for the provision of any service”. Obviously, advertising does fall in this ambit, although not having been expressly included.

This makes me eager to find out, if in fact, any action for such representation has been taken, or has scope to face issues in court. Would Courts consider a proposition similar to that of comparative advertising cases? My guess would be not, since the question of disparagement of another may be absent, at least in a direct fashion. To me, the Courts should consider flagarant misrepresentation as an unfair trade practice.

While my research on case law is pending, a cursory view of the Trademarks Act, 1999 brings to notice Chapter XII which deals in penalties for false trade descriptions. Section 103 under the same imposes penalties for “applying false trademarks, trade descriptions, etc.”. The provision talks about false application, but there seems to be no false representation of the quality, status etc. of a mark.

However, a flip side to such an argument would be that rankings and claims so being made, is also a manner of self-appreciation! To my mind, however, the use of rankings should be differentiated from the use superlatives to describe oneself, sheerly to give consumers the opportunity to statistically verify the claim.

As I say this, the irony is that hardly ever do the large brand owners portray themselves as No.1. Perhaps, they never need to.

That having been said, would a large brand owner move against a smaller player for such a representation, or would they consider such a move a wasteful exercise? Would it be more fruitful to invest the time and money in more aggressive marketing, especially when there is no direct reference or disparagement of the product?

This I guess is an answer for marketing strategists to consider.. Perhaps, we will hear from one of you here..

The Tacking Doctrine- The Stitch in time that may Save a Brand!!!

Logos, Brands and advertisements often stay in our memory like superglue. Interestingly, some of the best ones are those, whose products’ popularity although may have declined over time, yet the advertising and branding are so strong, that they continue to build an instant connection with the consumer.

Such a strategy in the world of advertising related trademark law is often known as Tacking. Literally, like the stitch, the doctrine deals in relatability to a previous advertisement an continuing a similar train of thought, even as the product, brand et al evolve. 

Typically used in the context of logos, the doctrine mandates that when updating a logo (or mark), a company must “walk the line” between the need to teach the consuming public that the new logo is a continuation of the old logo, and the need to reinforce the new logo in the public’s consciousness.

While tacking back may be done in various ways, the crux is to maintain a connection with the receiving audience, while still reminding them of the history, quality and age of a product.

Betty Crocker, in my opinion, the maker of one of the finest cake mixes (I know this cause I am disastrous at baking!) has over time changed the face of the lady portraying the image of Betty Crocker. As the image depicts, with time, she has changed her skin colour, hair colour, hair style, but continues to sport a red cardigan, a white shirt and many a time a string of pearls. To my knowledge, Betty has undergone nine makeovers, from 1927 to 1996.

For those of us who are familiar with the salt brand Morton, the little girl with an umbrella and salt flowing out on a rainy day, (to depict that deliquescence has been eliminated), the logo is another classic example of a print advertisement/ logo evolving over time. In the Indian context, it is soap brands like Lifebuoy and Lux come to my mind that have subtly changed their logo over time.

Extrapolating this doctrine further, I would say that tacking could somewhat be used onto the audio visual medium as well. The best example that comes to my mind is that of Nirma. As far as the washing powder goes, while the ladies have evolved and become modern, the colours on the packaging becoming brighter, the singer’s voice becoming somewhat shriller, the lyrics and music interestingly still strike a chord and associate back to the yesteryears of television and cloth washing. 

Similarly, Liril soap has also had its share of Liril girls, yet the jingle, jungle, waterfall et al in the advertisements continue to be maintained.

This concept in the context of trademarks to my mind can have a major impact. Although registration of a trademark is prima facie evidence of its existence, in my view, the use and manner of use can also be of significant consequence.

A theory such as tacking back, whether accompanied by registration of subsequent marks or not, can come to good use, especially when moving an action of dilution and passing off. Dilution, as we know it, consists of blurring and tarnishment as its subsets.

While an infringer may be tempted to use a mark similar to an older mark, such that the infringing mark merely blurs a previously used mark, the use of a tacking back argument can perhaps help further a brand association and consumer confusion argument in Courts.

On the other hand, if one were to tarnish an older mark, the tacking back doctrine may again come to good use. To cite an example, although Coca Cola no longer uses Enjoy Coke as much or as prominently as it used to, if one were to reintroduce the once popular Enjoy Cocaine poster, Coca Cola would still, in my humble opinion, have a viable case.

Although tacking may appear to be a concept relevant only to people from the marketing and advertising arena, its prominence as a trademark related aspect ought not to be ignored. Pertinently in jurisdictions where “use” is a ground to grant trademark rights, it is common that trademark attorneys for litigation as well as PTO related proceedings use advertising as a piece of evidence.

Even though a jurisdiction such as ours grants presumption of validity upon registration, in order to assert common law rights, a party that has wisely used its trademark in a continual fashion, may be able to assert a better case.

To my eyes, the doctrine of tacking is truly a stitch in time saves nine scenario. The downside however to practicing this form of branding, is that its true result and impact can only be observed when a product is guaranteed to maintain a really long market presence.

This having been said, we cannot ignore the fact that we still have brands like Amul and Parle-G, surviving just as vivaciously as years back, that haven’t made any changes whatsoever to their brand ambassadors!!!