Firefighters and antacids: An off-beat trade mark dispute
The Delhi High Court rendered its preliminary opinion on 31st October, 2014 on a rather unique trademark and copyright dispute. The dispute surrounds the use of animated firefighters in a television advertisement for an antacid to extinguish a ‘fire’ in the actor’s stomach (the fire being symbolic of heartburn caused by acid reflux which antacids cure).
Reckitt Benckiser (India) Limited (“Reckitt”), owner of a trade mark registration of the FIREMAN (Device) (depicted below), devised an advertising campaign for its antacid branded GAVISCON which includes a television commercial which portrays the fire fighter from the trade mark registration entering a person’s stomach and treating heartburn and other gastro-oesophageal reflux diseases by sprinkling GAVISCON on the oesophagus and the stomach walls. For a frame-by-frame depiction of the advertisement, please see page 4 of the original judgment here.
Reckitt sued Dabur India Limited (“Dabur”) for trademark infringement, copyright infringement and passing off on the basis that Dabur is airing a television commercial for its product PUDIN HARA FIZZ which has copied (allegedly) the original script of Reckitt’s television commercial, has used a virtually identical FIREMAN (Device) and has used the term ‘FIRE BRIGADE’ in its television commercial. For a frame-by-frame comparison of both advertisements, please see page 29 of the original judgment.
The Delhi High Court ruled that a claim for trademark infringement cannot be sustained as Dabur was not using the FIREMAN (Device) on its products and was merely using it as part of its TV advertisements. In addition, the Court essentially found Reckitt’s FIREMAN (DEVICE) to be different in appearance to the depiction of firemen being used by Dabur in its TV advertisements. The Delhi High Court also ruled that a case for passing off is not made out as Dabur’s product was available in the Indian market since before Reckitt’s product was launched in India. Reckitt did attempt to establish that its product and the advertising campaign had spilled over into India long before the launched of the product by pointing to the advertisements being available on Youtube but the Judge was not convinced. The Delhi High Court also rejected the claim for copyright infringement since it considered the depiction of firemen extinguishing fire inside a human stomach, a concept or an idea and it is a well-settled principle of copyright law that a mere idea is not protectable.
While the Court out rightly denied all of Reckitt’s plea. It did order Dabur to only make changes to the TV advertisement after seeking prior approval from Court. This judgment reinforces the fact that mere ideas are not protectable and that to establish trademark infringement, it is important to establish use of the mark in question on actual goods.