Jun 2024

India

Law Over Borders Comparative Guide:

Luxury Law

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1 . Trademark

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1.1. Sources of law

The principal sources of law relating to trademarks are the Trade Marks Act, 1999 (TMA) and the Trade Marks Rules 2017. Apart from these sources, law relating to trademarks in India has also evolved through judicial decisions. 

India is also a signatory to the Madrid Protocol since July 8, 2013, which was designed to build efficiency and ease the process of application and registration of trademarks across various jurisdictions. India is also a member of the TRIPS Agreement since it came into effect on January 1, 1995.

In India, use is recognised as a source of trademark rights. However, in the case of a non-registered trademark, the remedy to the proprietor of the mark lies in the common law tort of passing off. This remedy has been recognised under the TMA under section 27(2). For a registered mark, in the case of infringement, the statutory remedy under section 29(1) of the TMA as well as passing off is available (section 135 TMA). The relief provided for both is the same and includes an injunction, damages/rendition of accounts, and delivery. A prior user of a trademark can restrain even a registered proprietor of the same or deceptively similar mark (section 34 TMA). Use therefore trumps registration. Moreover, “use” is very broadly defined under sections 2(2)(b), 2(2)(c) and 29(9) of the TMA.

India as a common law country recognises non-registered trademarks and an action for passing off can be initiated against violation of trademark rights under section 27(2) read with section 135 of the TMA. Registration of a mark is not mandatory under the TMA for protection in India. As stated above, “use” of a mark trumps registration of a mark.

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1.2. Substantive law

India defines a “well-known trademark” as a specific category. A “well-known trademark” is defined under section 2(zg).

Section 29(4)(c) also makes reference to a “trademark with a reputation” in the context of dilution. 

Section 11(6) lays down certain factors which the Registrar shall take into account for determining whether the mark is well-known. 

Well-known trademarks are also mentioned in section 11(2) as a relative ground for refusal of registration of marks.

Trademarks belonging to the “luxury industry” do not enjoy a broader range of protection. The TMA does not confer special protection on any particular industry.

In practice, however, infringement in the luxury space involves counterfeiting, which courts are particularly intolerant towards, and most cases result in immediate injunctions and appointment of local commissioners to seize the infringing stock of goods. 

Moreover, trademarks which have been declared as well-known by the Court or by the Registrar of Trademarks enjoy a special and enhanced degree of protection cutting across all classifications of goods and services. Thus, well-known trademarks, including those belonging to the luxury industry, enjoy wide protection. A few notable examples of trademarks in the luxury industry which have been declared well-known are Cartier, Louis Vuitton, Revlon, etc.

A trademark can be recognised as a well-known mark either by a declaration by a judge in a court proceeding or by the Registrar of Trademarks pursuant to an application under section 124 of the Trademark Rules, 2017, filed before the Registrar for declaring a said mark as “well-known”.

Section 30(3) of the TMA empowers the trademark owner to overcome a defence of lawful acquisition/exhaustion by proving that legitimate reasons exist for the proprietor to oppose further dealings in goods whose condition of sale has been changed or impaired (material alteration which courts have also interpreted as including non-physical attributes of the product such as warranties, after-sale services, etc). Legitimate reasons can be many and when it comes to luxury goods, the nature of these goods is such that when they are not sold in the manner in which they are usually sold, the same will qualify as a legitimate reason. 

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1.3. Enforcement

In order to qualify as a well-known trademark, the following documents could be filed, showing:

  • that the mark is known and recognised by the relevant section of the public;
  • the duration, extent and geographical area of any use of that trademark;
  • the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
  • the duration and the geographical area covered by any trademark registration which shows the use or recognition of the trademark; or
  • a list of successful enforcement actions on behalf of the trademark in question and any order/judgment in which the court has held the mark to be well-known.

Testimony is given in the form of affidavits and the adverse party has the right to cross-examine the deponent/witness based on their testimony.

Affidavits from leading individuals or editors of fashion magazines attesting to the quality of the product sold under the trademark would bolster the case for the mark to be granted broader protection after being declared a well-known mark.

Expert evidence is particularly helpful in non-traditional trademark cases to prove distinctiveness of a mark and consumer perception.

A trademark can be enforced against a domain name, trade name and its use as a metatag. In the matter of Kapil Wadhwa & Ors v. Samsung Electronics Co. Ltd. & Anr. 194 (2012) DLT 23, the use of a trademark as a metatag was held to be illegal. There have been various cases that have discussed the possibility of enhanced confusion if a mark is used as a domain name without the proprietor’s consent due to the ease of diversion of customers on the internet. (Yahoo v. Akash Arora, 78 (1999) DLT 285; Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145).

Trademarks can be enforced against unauthorised use on social media by way of filing a civil suit seeking an injunction to restrain them from using the trademark. 

For an infringement or a passing off action, what must be shown is “use in the course of trade”. Use over social media when shown to be in the course of trade, and in a trademark sense, can be stopped.

The owner of a trademark can enforce rights against its unauthorised use and sue the user of the mark for infringement if the advertising is not in accordance with honest practices or is detrimental to the distinctive character and repute of the mark under sections 29(8) and 30(1) of the TMA.

Parody is not an absolute defence to infringement and passing off. The court may take into consideration various factors to determine whether a defendant is entitled to the defence of parody. If the use of the trademark by the other party is non-commercial, and for the purposes of criticism and fair comment, such use of the trademark would not amount to infringement. See Tata Sons Ltd. v. Greenpeace International (178 (2011) DLT 705.

However, there have been many cases where the defendant has crossed the line and disparaged the mark in a distasteful manner, either by way of a dialogue in a film (Hamdard National Foundation & Anr. v. Hussain Dalal & Ors. 2013 (55) PTC 216 (Delhi)) or on social media (Anhueser Busch LLC v. Rishav Sharma & Ors., 2020 (83) PTC 217).

A trademark owner can file a single suit claiming both trademark infringement and unfair competition against an infringing party for the same set of facts. Therefore, there is no necessity for filing separate actions.

One of the current issues that luxury brands face in expanding and protecting their trademark rights is the availability of cheap replicas and counterfeit products bearing the trademarks on e-commerce sites, which leads to dilution. In such situations, it often becomes difficult to identify the seller and gauge where the seller is sourcing the counterfeits from. 

Another challenge faced by luxury brands are fake websites which entirely mimic the look and feel of authentic websites. 

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2 . Copyright

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2.1. Sources of law

The main source of law relating to copyright in India is the Copyright Act, 1957, and the Copyright (Amendment) Rules 2021. The law also evolves from judicial decisions from the High Courts and the Supreme Court, as well as decisions of the Intellectual Property Appellate Board (IPAB, which now stands abolished as of March 4, 2021, with the coming into effect of the Tribunals Reforms Act, 2021). 

India has also been a member of the Berne Convention since April 28, 1928, and thereafter the Universal Copyright Convention and Rome Convention since 1951 and 1961, respectively. India has also acceded to the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty (the internet treaties) which came into force in India on December 25, 2018. The provisions contained therein extend protection for copyright into the digital environment. India is also a member of the TRIPS Agreement since it came into effect on January 1, 1995.

When a conflict arises the law with respect to copyright as codified by the statute takes precedence. There is no common law copyright and section 16 of the Act embodies this principle. The courts adopt principles of international conventions only in certain circumstances to fill in a lacuna (Entertainment Network (India) Ltd v. Super Cassette Industries Ltd. & Ors, 2008 (37) PTC 353) so long as the same is not in conflict with the municipal law of the country. Moreover, the rules are always subordinate to the Act and in case of conflict, the Act would supersede. 

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2.2. Substantive law

Under section 13(1) of the Copyright Act, 1957, copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings. Literary works are further defined in section 2(o), dramatic works are defined in section 2(h), musical works are defined in section 2(p) and artistic works is defined in section 2(c). Cinematographic films are defined in section 2(f) and sound recordings are defined under section 2(xx). The list of copyrightable works is therefore specifically enumerated and defined. 

Objects of industrial, fashion or accessory design are copyrightable, subject to section 15(1) and (2) of the Copyright Act, 1957. Under section 15(1), the copyright will not subsist in a design which has been registered under the Designs Act, 2000. Under section 15(2), copyright in any design which was not registered under the Designs Act shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright. 

The following rights are covered by copyright as outlined in section 14 of the Copyright Act, 1957:

  • the right of reproduction;
  • the right to issue copies of the work;
  • the right to perform/communicate it to the public;
  • the right to make a cinematograph film or sound recording;
  • the right to make any adaptation;
  • the right to make translations;
  • the right to sell or give on commercial rental (for computer programs and cinematographic films) a copy of the computer program; and
  • the right to store the work in any medium by electronic or other means. 

Moral rights (categorised as “special rights”) are covered under section 57 of the Copyright Act, 1957, and include the right to claim authorship of the work and a right against destruction, mutilation or modification of the work. These rights are independent of the author’s copyright.

A legal entity can acquire rights in the works created by its employees under a contract. This is necessary since, in the first instance, the author of a work is considered the first owner of copyright therein, under section 17 of the Act.

This, however, can also be subject to an agreement that can overcome this deeming provision.

Freelance artists, suppliers and consultants would generally retain copyright, being under a contract for service.

The requirements of a valid copyright assignment are outlined in section 19 of the Copyright Act, 1957, and are as follows:

  • that it is in writing and signed by the assignor;
  • that it identifies the work and specifies the rights assigned, duration and territorial extent of the assignment;
  • that it specifies the amount of royalty and consideration payable to the author; and
  • that the assignment of a work shall not be contrary to the terms and conditions of the rights already assigned to a copyright society of which the author is a member.

There is limited jurisprudence on this subject in India. However, it has been observed in Sartaj Singh Pannu v. Gurbani Media Pvt Ltd & AnR., 220 (2015) DLT 527, that as long as the waiver is voluntary, it cannot be opposed to public policy. However, strong evidence of such voluntariness must be present.

The inherent nature of the right itself indicates that it may not be assignable and is inalienable. The right can however be exercisable by the legal heirs of the author under section 57(2) of the Act.

The term of copyright is dependent upon the nature of the work. For literary, artistic, dramatic and musical works, copyright shall subsist during the lifetime of the author and for 60 years following the death of the author as outlined in section 22 of the Copyright Act, 1957. For cinematographic films, recordings and government works, copyright shall subsist until 60 years from the beginning of the calendar year following the year of its publication.

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2.3. Enforcement

Copyright registration is not required to enforce a copyright.

However, certificate of registration of copyright is often useful in that it serves as prima facie evidence of ownership in a court of law.

Industrial designs are protected in India under the Designs Act, 2000. Moreover, section 52(1)(w) states that the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device will not amount to infringement.

The test of copyright infringement has succinctly been laid down in R.G. Anand v. Deluxe Films (1978) 4 SCC 118, wherein the Supreme Court held that one of the surest tests to establish copyright infringement is to determine whether or not the reader, spectator, or viewer after having seen or read both works would be of the unmistakable opinion that the alleged infringing work is a copy of the first.

Actual copying is not necessary, and the courts can presume copying based on a showing of substantial similarity between the two works. This is however subject to the defence of independent creation.

The owner of a copyright can enforce their copyright against the proprietor of a trademark if any part of the trademark amounts to a reproduction of an original artistic work of the copyright holder in which copyright subsists. In fact, under section 11(3)(b) of the TMA, a trademark shall not be registered if its use in India is liable to be prevented by virtue of the law of copyright.

As regards other categories:

  • copyright can be enforced against a registered design;
  • copyright can be enforced against a registered patent, especially drawings in a specification; and
  • copyright cannot be enforced against a domain name or trading name or a pseudonym since courts have recognised that these categories do not merit copyright protection due to lack of originality which is a pre-requisite for copyright protection. A priori, copyright cannot be enforceable against these works.

Copyright can be enforced against its unauthorised use in social media if the substantial portion of the work has been reproduced and such use of the work does not amount to fair use or is not covered by the activities exempt from infringement under section 52 of the Copyright Act, 1957.

Copyright can be enforced against its unauthorised use in comparative advertising if a substantial portion of the protected elements of the original work have been used.

Generally, parodies come under the defence of fair use under section 52(1)(a)(ii) wherein it is said that fair dealing of a literary, dramatic, musical, or artistic work for the purposes of criticism and review would not amount to copyright infringement. Courts have also held that sometimes a parody becomes a completely new work with a transformative use, and therefore would not infringe the copyright of the owner of the work.

An exhaustive list of exceptions to copyright infringement (fair dealing) is outlined in section 52 of the Copyright Act, 1957. In addition to these, the courts have also developed some tests to determine if a particular activity qualifies as fair dealing. These are:

  • Amount and substantiality of dealing or reproduction (RG Anand v. Delux Films & Ors., AIR 1978 SC 1613).
  • Extent justified by the purpose of the reproduction (The Chancellor Masters & Scholars of the University of Oxford v. Rameshwari Photocopy Services, judgment dated September 16, 2016 in CS (OS) 2439 of 2012, The High Court of Delhi).
  • Intention to derive profits from unfair competition (Kartar Singh Giani v. Ladha Singh, AIR 1934 Lah 777).

Some of the grounds under which a copyright in a work can be challenged are as follows:

  • the work is not original;
  • the work covers an idea more than an expression; and
  • the term of copyright has expired or the copyright owner had formally renounced it.

The Limitation Act, 1963, prescribes a period of three years (Article 88) for filing a copyright infringement suit from the date of infringement. However, various judgments have held that each violation of copyright and trademarks gives rise to a recurring cause of action. Therefore, delay — if not inordinate or amounting to laches or acquiescence — is not problematic.

Current issues that luxury brands face in expanding and protecting their rights in copyright include:

  • Large-scale counterfeiting activities by entities which copy the protected elements of an original artistic work.
  • Section 15(2) of the Copyright Act which has the effect of extinguishing copyright in a work if the same is registrable as a design and has been applied on an article which has been multiplied more than 50 times.
  • Infringement of copyright has many exceptions which whittles down the exclusive nature of the right.
  • There is no regulatory framework, precedent or guidelines with respect to training datasets used for training generative artificial intelligence (AI) software. 
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3 . Design

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3.1. Sources of law

In India, the Designs Act, 2000, along with the Design Rules, 2001, lay down the statutory framework of design law. Judicial decisions also have a significant impact on the development of design law.

India is a member of the TRIPS Agreement which requires its members to provide protection for design. India is also a signatory of the Paris Convention and follows the Locarno classification of goods for industrial designs.

The Designs Act, 2000, is the primary source of law followed by the Design Rules, 2001, and judicial decisions.

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3.2. Substantive law

According to section 4 of the Designs Act, 2000, a product is eligible for registration if:

  • it is new or original (it was held in the case of Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd., 2008 (37) PTC 1 (SC) that “new or original” means that the design which has been registered has not been published anywhere or has been made known to the public);
  • it has not been disclosed by prior publication or use or in any other way;
  • it is sufficiently distinguishable from known designs or their combination; and
  • it contains no scandalous or obscene matter and is not contrary to public order or morality.

However, an unregistered design is not protected under Indian design law.

In order to obtain a valid registration, the following conditions must be satisfied, as provided under section 2(d) of the Designs Act, 2000:

  • The design should be new or original. The novelty may reside in the application of a known shape or pattern to new subject matter.
  • The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article.
  • The design should be applied or applicable to any article by any industrial process.
  • The features of the design in the finished article should appeal to and are judged solely by the eye. 
  • Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device would not be a registrable design. 
  • The design should not include any trademark or property mark or artistic works as defined under the Copyright Act, 1957.

Unregistered design rights are not protected under the Designs Act.

A legal entity could, through contractual clauses, acquire rights in the designs created by its employees, directors, suppliers, shareholders, and consultants.

In order to be valid and enforceable, the assignment agreement has to be in writing and should contain all details regarding the rights being transferred and the obligation being imposed. The assignment has to be duly signed by both the parties involved. An application for registration of the transfer is required to be made by the beneficiary to the Designs Office within six months from the date of execution of the agreement.

While drafting a design assignment agreement, it is necessary to ensure that the agreement includes provisions pertaining to terms of assignment which specify the time period for the assignment and specify the procedure of renewal, a representation and warranties clause and a confidentiality clause in order to prevent any disclosure of information.

In India, moral rights are inalienable rights. A designer cannot transfer or waive their moral rights. It has been held in the landmark case of Amar Nath Sehgal v. Union of India, 2005 (30) PTC 253 Del that moral rights cannot be negated or waived.

In India, a copyright upon a design is for a period of 10 years from the date of registration and can be extended to a maximum of 15 years (section 11 of Design Act, 2000).

Unregistered design has no statutory protection. Hence, there is no right in or remedy available for unregistered designs.

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3.3. New technologies

Non-fungible tokens (NFTs) have had an impact on the protection of the rights of luxury brands and goods. NFTs are being used to influence the luxury industry through the digital encoding mechanism. NFTs allow brands to certify the authenticity and origin of their products. This helps to deal with one of the major problems in the luxury sector, i.e. counterfeiting. This can be done through a traceability certificate and unique codes on a blockchain network.

The rise of sophisticated AI has certainly had an impact on the luxury market since AI is being used by business to analyse market trends and customer behaviour, and to study the latest trends. Some generative AI algorithms can also help curate personalised experiences for customers by not only predicting trends but also bringing to life/manifesting customer requirements.

The law in India is at a nascent stage when it comes to AI regulations. At the moment, India has no codified laws that regulate AI per se. The obligations on this subject are set out in the Information Technology Act 2000, and the rules and regulations framed thereunder.

The Indian Government’s policy think-tank, “NITI Aayog”, released the “National Strategy for Artificial Intelligence” in 2018. This outlines India’s vision for AI and includes recommendations for the development and adoption of AI technologies across various sectors, including healthcare, agriculture, and education. Further, in 2021 the Government of India released the “Approach Document”, proposing principles for “responsible AI development”.

More recently, keeping the well-being of customers in mind, a Consultative Draft titled “Dark Patterns” was published by the Ministry of Consumer Affairs and the Advertising Standards Council of India (ASCI) in September 2023 — to help identify, prohibit and sensitise consumers to the various malicious and fraudulent activities that can be detrimental to the interests of consumers on the internet. The same is yet to come into force and has been circulated only for public consultation.

The Telecom Regulatory Authority of India (TRAI) has also recently released recommendations on “Leveraging Artificial Intelligence and Big Data in the Telecommunication Sector” and has suggested that the Indian Government must adopt a regulatory framework for AI that applies across sectors.

The regulatory landscape in India on cryptocurrencies has seen some recent developments. India’s Taxation Rules and Regulations include provisions for cryptocurrencies. Further, in March this year, cryptocurrencies have also been included within the purview of the Anti-Money-Laundering Act. This has been done with the objective of holding instruments such as NFT marketplaces accountable for monitoring and reporting any suspicious financial activities.

Currently, India is in the process of creating a regulatory framework for cryptocurrencies which will be based on recommendations from the International Monetary Fund (IMF) and the Financial Stability Board (FSB).

The legislative outlook changing from banning cryptocurrencies to regulating cryptocurrencies in India has also given some encouragement to businesses in using cryptocurrencies.

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3.4. Enforcement

Under section 22(1) of the Designs Act, 2000, a fraudulent or obvious imitation of the design thereof, in respect of a similar article, for the purpose of sale or importation of such article, without the written consent of the registered proprietor, amounts to piracy of a registered design.

In Vega Auto Accessories (P) Ltd. v. S.K. Jain Bros. Helmet (I) Pvt, the Hon’ble Court opined that, while comparing two designs, the sameness of their features does not necessarily mean that the two designs must be identical in all aspects and should differ inone. Rather they can be substantially the same.

An unregistered design is not enforceable under the law, so a design must be registered in order to enjoy protection.

A design cannot be enforced against a trademark. 

If one does claim design as well as trademark rights on exactly the same features of a product, then design rights may be extinguished. However, trademark and related common law rights will continue to subsist.

A design can be enforced against a registered design/design patent. Section 22 of the Designs Act, 2000, provides that any fraudulent or obvious imitation of a registered design without the consent of the proprietor is unlawful and also prohibits the import of such material which closely resembles a registered design.

A design cannot be enforced against a patent. While a design is judged on aesthetics only and not the functionality/technicalities of the shape/pattern of an article, the patents on the other hand are judged solely on the functionality and not the aesthetics of the feature/shape.

A design cannot be enforced against a domain name. 

A design cannot be enforced against a trade name. The “trade name” is a trademark concept setting out the name under which an entity conducts or carries out trade.

Other IP rights such as Geographical Indications and circuit designs do not necessarily intersect within the ambit of the goods protected under the Designs Act.

A design may be enforced against its unauthorised use in social media; however, it would be applied on a case-by-case basis.

A design may be enforced against its unauthorised use in parody.

Acquiescence on the part of the owner may be a ground for courts to not grant an injunction against the infringer. After three years from the last act of infringement, a claim for design infringement becomes time barred.

As to whether a design holder can take action claiming both design infringement and copyright infringement and/or unfair competition for the same set of facts, if the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not been so registered, the design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonisthe Copyright and the Designs Act in accordance with the legislative intent.

The most pressing issue faced by luxury brands in India is counterfeiting and the copying of designs to produce replicas, primarily in the apparel industry.

One of the most complex issues (which is yet to be satisfactorily resolved) is the design/copyright overlap contained in section 15 of the Copyright Act, 1957. The Hon’ble Division Bench of the Delhi High Court in Mattel Inc. & Others v. Jayant Agarwalla & Others, RFA (OS) No. 25/2006 before the High Court of Delhi has held that the underlying artistic work does not get extinguished by its application to the surface of an article. What gets extinguished is only the protection qua the said article. However, in two other cases (Jagdamba Impex v. Tristar Products Pvt. Ltd, 2014 (59) PTC 149 [Del] and Ritika Pvt. Ltd. v. Biba Apparels Pvt. Ltd. Order dated March 23, 2016 in CS (OS) 182 of 2011) the Delhi High Court denied copyright protection invoking section 15(2) of the Copyright Act, 1957, to a manufacturer of machines which are utilised in the production of combs, and for a dress by a famous fashion designer. One such case is currently under appeal. The constitutional challenge to section 15(2) is being heard by the Delhi High Court in the case of Mukul Goyal v. Union of India and Ors. (W.P. 8356 of 2014). The petitioner, a well-known Indian designer who specialises in making decorative and functional items (ranging from office supplies to home décor items) out of metal. The petitioner — being aggrieved by the rampant copying of his artistic creations — has challenged the vires of section 15(2). The case is at the stage of final arguments.

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4 . Right of privacy, publicity and personal endorsement

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4.1. Sources of law

Right of publicity is not statutorily guaranteed in India. However, in cases such as Titan Industries v. Ramkumar Jewellers, 2012 (50) PTC 486 (Del) and D.M. Entertainment Pvt. Ltd v. Baby Gift House MANU/DE/2043/2010 the courts have taken cognisance of the same and protected the publicity rights of celebrities against commercial exploitation. The right is attributable to public figures by virtue of them having acquired a status and a personality which grants commercial value to an individual persona.

More recently, the Delhi High Court in the cases of Amitabh Bachchan v. Rajat Negi and Ors, 2022 SCC OnLine Del 4110 and Anil Kapoor v. Simply Life India & Ors., CS (COMM) 652 of 2023 has recognised publicity rights of two legendary Bollywood actors, namely Mr Amitabh Bachchan and Mr Anil Kapoor, and held that using their name, voice, images and other aspects of their personalities in an illegal manner and especially for commercial purposes cannot be permitted.

There is no express provision in any present statute that protects right of publicity. The said right is protected under common law. 

The privacy law of India has been strengthened over the years. After the Supreme Court of India in Justice K. S. Puttaswamy (Retd.) v. Union of India, reported in [(2017) 10 SCC 1], judicially recognised the Right to Privacy as a fundamental right, the Indian Legislature passed Personal Data Protection Bills in 2019 and 2022. These Bills were withdrawn after the recent passing of The Digital Personal Data Protection Act, 2023 (DPDP). Like the GDPR in the EU, the DPDP is a comprehensive privacy law aimed at enabling personal data processing while recognising the needs of individuals’ rights and the need for consent. The law is expected to come into force in June 2024.

The DPDP places greater compliance burdens as well as financial risks on organisations (including luxury brands) which are responsible for handling personal data. The Act is structured to mandate that (i) personal data only be processed for a lawful purpose; and (ii) upon obtaining the consent of an individual. In a nutshell, the compliance obligations and financial risks have increased since such organisations are required to develop a standard operating procedure as well as train their employees to oblige compliance requirements under the Act. It is pertinent that the Act has extraterritorial application inasmuch as if processing of personal data is in connection with any activity related to offering goods or services to Data Principals (an identifiable individual) within India, the Act would apply to them. All entities which oversee the information (including luxury brands) are obliged to maintain the accuracy of data, keep data secure, and delete data once its purpose has been met.

Entities that are found to misuse or fail to safeguard individuals’ digital data or notify the Data Protection Board (DPB) of a hack can face monetary fines of up to INR 250 crore (USD 30.1 million).

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4.2. Substantive law

To own a right of publicity, aside from being a living human, the individual must have attained fame and popularity among the public at large and must be a recognisable figure. 

Publicity rights being property rights have monetary value attached. The individual may assign their name or other indicia for commercial gain. The individual may restrict the manner or use of certain indicia in the agreement. 

The individual may grant permission to another person to use their name or other indicia for commercial gain through a licence.

There is no specific statutory provision governing this but the requirements would be the same as an agreement for licence of any property having an intrinsic monetary value. 

The agreement terminates upon the death of the licensor as the right to publicity being non-transferrable. 

The publicity rights of the licensor come to an end upon the death of the individual; publicity rights are non-transferrable. However, duration of protection of the right after death will depend much on the commercial value attached to the reputation of the deceased individual.

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4.3. Enforcement

The right of publicity can only be enforced against a commercial use of that individual’s name, image, likeness, or other unequivocal aspects of his/her identity.

In Titan Industries v. Ramkumar Jewellers, 2012 (50) PTC 486 (Del), the court stated that two elements must be proved for a finding of infringement of the right of publicity, which is namely validity and identifiability. Validity shows that an individual has enforceable rights in their personality/identity. Identifiability shows that an individual is famous and is recognised by the public in the infringing work. If these elements were proved, there would be no further need to prove confusion or deception.

Defences available to an alleged infringer include:

  • If considered as a property, the defences under trademark law and copyright law may be applied for the right of publicity as well. 
  • If considered as a constitutional right, the infringer is liable to use the defence of waiver, or, that celebrities are not entitled to any “right to privacy” as they give their implied consent to be in public view thereby waiving their right. 
  • Right to freedom of speech — overemphasis of publicity rights can be disastrous to such an invaluable right. 

The major challenges faced by celebrities are false endorsements and unauthorised use of personas which would lead to a lowering of their image in the eyes of the public at large. This is especially true if a celebrity has been associated with endorsing a harmful product or seen to be taking a stand which is antithetical to their principles.

There are new challenges in combatting anti-counterfeiting activities in the internet age. These challenges primarily arise in the following forms:

  • advanced security technologies that are used by counterfeiters to circumvent detection;
  • the increase in the use of AI-based tools to create near-identical replicas and circumvent detection used by counterfeiters;
  • low penetration of authentication and traceability solutions in India to distinguish fake goods from genuine goods;
  • lower than desired budgetary inputs by companies in adopting and implementing anti-counterfeiting initiatives; and
  • increase of illicit supply chains in the internet age with counterfeiters adapting to the digital trade environment.
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5 . Product placement

Product placement is permitted in India. There are two scenarios which can be envisaged:

  • if product placement happens pursuant to a legitimate contract between the proprietor of the brand and the producer of the audio-visual film; or
  • if products bearing a trademark or copyright are shown in an audio-visual work without the proprietor’s consent.

The facts of each case would have to be seen to determine whether it is actionable. There have been cases where products shown in a bad light have been blurred since the visual or aural depiction/rendition of a mark amounts to infringement without the proprietor’s consent. As regards copyright, if the artistic work is merely incidental or by way of background to the principal matters portrayed in the film, the same may not be actionable (section 52(1)(u) of the Copyright Act)

There are restrictions placed on advertising certain products as per the Code of Advertising Practice, also known as the ASCI code

Some of the products and services banned from advertising are:

  • tobacco products under the Tobacco Prohibition Act, 2003;
  • alcoholic beverages under the Cable Television Network (Regulation) Amendment Bill;
  • human organs under the Transplantation of Human Organs Act, 1994;
  • infant milk food under the Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992 which prohibits the advertising of infant milk substitutes or feeding bottles;
  • prize chits and money circulation schemes under the Prize Chits and Money Circulation Schemes (Banning) Act, 1978;
  • prenatal determination of sex under the Pre-Natal Diagnostic Techniques (Regulation and Prevention of Misuse) Act 1994;
  • physicians under the Indian Medical Council (Professional Conduct, Etiquette and Ethics) Regulations; and
  • legal services under the Bar Council of India Rules.

A party can file a suit for specific performance of a contract. Moreover, injunctive relief can also be sought seeking removal/blurring of the infringing content from the audio-visual work in addition to claiming damages.

The main challenges faced by luxury brands include the following:

  • There are instances when certain well-known brands have been shown in a disparaging manner in films/advertisements (the G4S case, where a premier security guard service was shown in a bad light, ICICI Bank Ltd. v. Ashok Thakeria & Ors., 2014 (58) PTC 258 (Delhi)).
  • Even if not shown in a disparaging manner, certain brands — due to their exclusivity — may not wish to be associated with certain works of art.
  • To be actionable, either the use must be tarnishing or likely to cause confusion as to the source of the goods/services. This may prove to be difficult since a film is considered an artistic work and does not easily fit as a competitor to the brand.
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6 . Protection of corporate image and reputation

The laws regarding right of publicity and/or privacy do not extend to legal entities/corporations; these rights are only applicable to natural persons.

However, clauses can be incorporated for the protection of corporate image as long as they are not in violation of any statutory laws. Liquidated damages are generally permitted and may be included through contract for protection against breach. To avoid unenforceability, parties must be able to show actual loss suffered.

Some of the challenges faced by luxury brands in the secondary market are as follows: 

  • In the absence of contract and due to the operation of the doctrine of exhaustion, a brand owner may have limited control on the downstream distribution of his products which may raise various concerns such as diluting the exclusivity of the brand.
  • The price of the original product may be affected by resellers offering the product to consumers.
  • Under section 30(2)(d) TMA, if a mark is used by a person in respect of goods forming part of or as an accessory to other goods for which the trademark has been used, there will be no infringement where the use of the mark is reasonably necessary to indicate that the goods are so adapted.

EXPERT ANALYSIS

Chapters

Australia

Belinda Breakspear
Harriet Young

China

Lina Li
Yunze Lian

Germany

Dr Wiebke Baars

Italy

Fabrizio Jacobacci

Japan

Masaki Mikami

Lebanon

Julien Khoury
Nisrine El Haddad
Patricia Seaiby
Rany Sader

Mexico

Ricardo R. Díaz Cisneros

Netherlands

Herwin Roerdink
Tjeerd Overdijk

South Korea

Clare Ryeojin Park
Dae Hyun Seo
Won Joong Kim

Spain

Eleonora Carrillo
Ignacio Martínez
Rafael Linage

Sweden

Helena Brännvall
Karin Crafoord
Magnus Henning

Thailand

Adele Marchal
Chanapa Thussanasumrit
Munif Chaipanya
Orranat Suvarnasuddhi
Pawat Varapirom

Ukraine

Dmytro Stefanovych
Ganna Prokhorova
Ilona Boliubash

United Kingdom

Simon Miles

United States

Alan Behr
Tod Melgar

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