Ideas for Advertisement can be Protected

By Titiksha Sinha and Tanvi Bhatnagar

Bright Lifecare Pvt. Ltd (“Plaintiff”) filed a suit alleging infringement of their rights in the trade marks “ZIDD/ZIDDI” and copyright in their cinematograph works by two commercials launched by Vini Cosmetics Pvt. Ltd (“Defendant”) on online streaming platforms. The Hon’ble Delhi High Court gave a ruling on the issue of whether an advertising campaign and its various elements can be protected under the Intellectual Property law, and in which manner.¹

The Plaintiff

Bright Lifecare Pvt. Ltd is a company engaged in the business of manufacturing and trading of health and nutritional supplements and products under the trade mark MuscleBlaze (MB). Bright Lifecare via “HealthKart” also offers a comprehensive range of products, through both online and offline channels.

The Defendant

Vini Cosmetics Pvt. Ltd is a company involved in the business of manufacturing and merchandising cosmetics (such as deodorant, perfumes etc.), ayurvedic and pharmaceuticals products under the trade mark VINI. Some of its other known brand names are FOGG, WHITETONE etc.

Facts of the Case:

The Plaintiff’s advertising campaign started in March, 2018 in the form of a video by the name “ZIDDI HOON MAIN” which was followed by other videos in April, May and November, 2018. All the videos used various forms/slogans of the words “ZIDD” and “ZIDDI” to describe persons who refuse to give up such as ZIDDIS DON’T WANT, NAAM HAI ZIDDI etc. The said videos have attracted millions of views.

In January, 2022, the Plaintiff came across advertisements of the Defendant for the product “REALMAN” with the tagline/mark “ZIDDI PERFUME” which were conceptually and visually similar to the Plaintiff’s aforementioned advertisements launched in 2018.

ISSUES

Whether the elements of the Plaintiff’s campaign merely constitute an idea or do they constitute expression of an idea?
Whether there is substantial similarity between the respective works of the Plaintiff and Defendant?
Whether an advertising campaign and its various elements can be protected under the law and in which manner?

Comparison of the Commercials

The Plaintiff’s commercials have the following elements:

The protagonist lifting and working out in the gym and are shown as to how by their sheer ‘ZIDD’ they are able to make themselves stronger and fitter. Therefore, ‘ZIDD’ depicts the quality of resilience and perseverance.
The words/slogans such as ‘PHIRSEZIDDKAR’, ‘enhances absorption formula’, ‘Muscle Blaze MB Biozym Whey’ etc., written in yellow & white colour combination on a black background.
The setting of the commercials are in a dark setting with very few lights.

The Defendant’s commercials have the following elements:

The product “REAL MEN MANLY FRAGNANCE” deodorant is described as “ZIDDI PERFUME” in the commercials. The words are written in yellow colour with black background.
The protagonists are in a gym, working out with a yellow rope & yellow boxing bag, in a dark setting with few lights

SUBMISSIONS OF THE PARTIES

The Submissions on behalf of the Plaintiff:

The Plaintiff’s products have been endorsed by various celebrities such as Tiger Shroff, Neeraj Chopra, Jasprit Bumrah, Shikhar Dhawan etc., which has created a niche for the Plaintiff’s ZIDDI campaign and its slogans such as ZIDDI DON’T WANT, NAAM HAI ZIDDI etc. In view thereof, the ZIDDI campaign is associated exclusively with the Plaintiff, and has been a huge success.
The entire concept, look and feel of the expression ZIDDI including the yellow & black colour combination and the dark atmosphere of a gym in the Plaintiff’s advertisements have been copied by the Defendant. Further, the use of the tagline ZIDDI PERFUME by the Defendant would create a connection between the Defendant and Plaintiff in the minds of the consumers. Therefore, not just the idea but even the expression has been copied by the Defendant.
Copyright exists in the script, screenplay, sound track, etc., of the film. Therefore, even if some portion of the film or the idea behind it is lifted, there would be infringement of the copyright in the cinematograph film. The Defendant has lifted various ideas and expressions from the Plaintiff’s commercials to promote their product by calling it ZIDDI PERFUME.
The Plaintiff also has the trade mark ZIDD and variations thereof such as ZIDDI HOON MAIN registered in various classes including 38 and 44. Therefore, ZIDDI forms the prominent part of the Plaintiff’s trade mark and slogans which are entitled to protection.

The Submissions on behalf of the Defendant:

The Plaintiff cannot claim monopoly over the use of the words ZIDD or ZIDDI as the same has been used in earlier campaigns and films such as in the song ‘Ziddi Dil’ of the movie Mary Kom, an advertisement of Parle-G products titled ‘Ziddi Choriya’ etc.
No monopoly can be claimed over the activities such as gyming, boxing etc., since such scenes are common to various advertisements. In the Plaintiff’s commercial, the feature of being ZIDDI is attributable to the protagonist whereas in Defendant’s commercial, the quality is attributed to the product i.e., the deodorant being long-lasting. Therefore, the Plaintiff is trying to claim monopoly in the idea of exercising in the gym which shall not be recognized.
There is no copyright in an idea and, unless and until, there is lifting of frames or specific images which form part of the film, there cannot be any violation of the copyright in a cinematograph film.
The Plaintiff does not have any registration in respect of perfumes and deodorants in Class 03.

COURT’S OBSERVATIONS

The agencies which created the Plaintiff’s advertisements were given the mandate to make ‘ZIDDI’ a strong brand that connects with the consumers and help Plaintiff build a distinctive brand. Parties which manufacture and sell products expend enormous time, effort, energy and investment in creation of advertising campaigns. Thus, these campaigns and commercials are extremely thought out and involved enormous creativity and originality. Therefore, an advertising campaign including commercial is undoubtedly protectable under the intellectual property law.
To determine whether there has been infringement or not, it has to be seen whether there is any substantial similarity between the respective works from the perspective or an ordinary observer or not. It must be shown that the Defendant has taken a substantial portion of the matter from the original and have made unfair use. In view thereof, the Hon’ble court observed:
The Hon’ble Court relied upon the case of Cadbury-Schweppes v. The Pub Squash Co. Ltd² wherein it was held that “confusion and deception arising from descriptive material such as slogans and visual images in an advertising campaign can amount to passing off”. Therefore, distinctive elements in an advertising campaign can be protected by the court. However, the threshold for establishing ‘distinctiveness’ of such elements is quite high. The Court observed that the Plaintiff has chosen a very unique way of using the ordinary words ZIDD and ZIDDI to portray that people who consume Plaintiff’s products are able to face life challenges. The Plaintiff has also used catchy expressions and slogans such as ZIDDI DON’T WANT, NAAM HAI ZIDDI etc., which in fact, denote the Plaintiff’s business itself. Therefore, the Plaintiff’s campaign is extremely distinctive of the Plaintiff’s products and business.
The Court held that on viewing the competing commercials, the same give an ordinary viewer the impression that the two are connected or have the same source. This is because, the overall theme of both the commercials i.e., dark setting, yellow and black colour theme, persons working out, use of the terms ZIDD/ZIDDI is highly similar. Although no monopoly can be granted over the concept or idea of ZIDD/ZIDDI, the portrayal of the same by picking identical elements cannot be ignored. Therefore, the expression of the idea has to be different. In view thereof, the Defendant has imitated the Plaintiff’s creative expressions and the Defendant’s commercials are colorable imitations of the Plaintiff’s commercial.
The Hon’ble Court was also of the view that if a person has seen the Plaintiff’s commercials earlier and then gets a glimpse of the Defendant’s impugned advertisement then an impression can clearly be created that Defendant’s product is an extension of Plaintiff’s range of products.
The Court was also stated that no one can monopolize the use of the word ‘ZIDD’ and ‘ZIDDI’ as an idea to show perseverance. However, the expression and portrayal of idea has to be different. While referring to the instant case, the Court was of the view that the impugned commercials were a colourable imitation of the Plaintiff’s advertising commercial.

CONCLUSION

The Hon’ble Court directed the Defendant to pull down the two commercials from all platforms where they are available for public viewing. However, the Hon’ble Court allowed the Defendant to modify and re-launch the said commercials after removing the objectionable frames. Further, the Hon’ble Court clarified that there is no restraint upon the Defendant to use the terms ZIDD/ZIDDI as long as they are not similar to that of the Plaintiff.

[1] Bright Lifecare Pvt Ltd. vs Vini Cosmetics Pvt. Ltd [CS(COMM) 144/2022]
[2] [1981] RPC 429

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