SURROGATE ADVERTISMENT

SURROGATE ADVERTISMENT : IS IT A NEW INNOVATION OF PROHIBITED ADVERTISEMENTS?

"Let's gear our advertising to sell goods, but let's recognize also that advertising has a broad social responsibility." - Leo Burnett [1]

It is, indeed, an undisputed fact that advertisements play a very important role in today's modern life. They influence our day to day life in drastic ways. Today, people are keen to watch a new advertisement than before, as they provide awareness as well as information about new products that enter the markets. The significance of advertisements in the current corporate world cannot be underrated.  But as all of us can see, the amount of ads which tend to mislead the general public is increasing day by day.

As a matter of fact, the advertisements that fail to prove their message are often discarded by the public. Most of those advertisements are of cigarettes and alcoholic drinks. Advertisements of these products are not very much accepted by majority public. As a result of increasing opposition from the public, the government in 2002 had imposed a ban on advertisement of certain products through the media.

These regulations led to a new phenomenon where certain major tobacco and liquor companies started to advertise their products by adopting alternate ways to endorse their products overlooking the prohibition imposed by the government.  This alternate way of advertising will be continuously reminding the general public about their prohibited brands, eg: liquor or tobacco. The new products they advertise shall possess the same brand name as the prohibited products. These products easily remind us of the prohibited products. The technique of using common brand name for advertising products, which is otherwise known as "brand extension," are used for advertising related or unrelated products, for example, Tata Salt and Tata Coffee, or Tata Coffee and Tata Steel.

The main concern here is that they advertise these products in such a way that the customers will always remember those “prohibited products” irrespective of the fact that whether it is an advertisement of prohibited product or a useful commodity under the same brand. This is done with a single objective, i.e., to keep the public reminding their tobacco or liquor brands. This innovative method of advertising of prohibited product is termed as "Surrogate Advertisements."

Advertisements like Wills lifestyle, Kingfisher mineral water are examples of surrogate advertisements. This is a kind of escape mechanism adopted by the big brand companies. In fact, they are challenging the government regulations by a new method of prohibited advertisement.  As a result, surrogate advertisements have defeated the very purpose of banning advertisements of liquor or other items which are harmful to general public health.

Regulatory Measures:

The Cigarettes & Other Tobacco Products (Prohibition of advertisement and regulation of trade and commerce, production, supply and distribution) Act, 2003 reads as follows:

"An Act to prohibit the advertisement of, and to provide for the regulation of trade and commerce in, and production, supply and distribution of, cigarettes and other tobacco products and for matters connected therewith or incidental thereto."

The above Act was enacted to achieve better public health and to ensure that effectual methods are adopted to protect people from unintentional exposure to smoking and to safeguard children and youngsters from being obsessed to the use of tobacco.

Section 5 of the act read as follows:

(5) No person shall, directly or indirectly, produce, supply or distribute cigarettes or any other tobacco products unless every package of cigarettes or any other tobacco products produced, supplied or distributed by him indicates thereon, or on its lab l, the nicotine and tar contents on each cigarette or as the case may be on other tobacco products along with the maximum permissible limits thereof: Provided that the nicotine and tar contents shall not exceed the maximum permissible quantity thereof as may be prescribed by rules made under this Act.

Section 21 (2) An offense under this section shall be compoundable and shall be tried summarily in accordance with the procedure provided for summary trials in the Code of Criminal Procedure, 1973 (2 of 1974).

Punishment for advertisement of cigarettes and tobacco products

Section 22: Punishment for advertisement of cigarettes and tobacco products.-Whoever contravenes the provision of section 5 shall, on conviction, be punishable-

 (a) in the case of first conviction, with imprisonment for a term which may extend to two years or with fine which may extend to one thousand rupees or with both, and

 (b) in the case of second or subsequent conviction with imprisonment for a term which may extend to five years and with fine which may extend to five thousand rupees.

The section clearly prohibits such advertisements in India and had laid down the punishments imposed for infringing the same. Surrogate advertisements attained its present stimulus with the enactment of Cable TV Network Regulation Act. The Act prohibits liquor and tobacco advertisements through TV programs, which is one of the most influential media of advertisements today.   

The Act was amended in 2005 by The Ministry of Health and Family Welfare interpreting the word ‘indirect advertisement’ in Section 5(1) as follows:

   

·         The use of a name or brand of tobacco products for marketing, promotion or advertising other goods, services and events;

·         The marketing of tobacco products with the aid of a brand name or trademark which is known as, or in use as, a name or brand for other goods and service;

·         The use of particular colors and layout and/or presentation those are associated with particular tobacco products; and

·         The use of tobacco products and smoking situations when advertising other goods and services.[2]

By this amendment, the Act was more precise and clear about the regulatory intentions behind the whole subject matter. Furthermore, the Advertising Standard Council of India [ASCI] has a Code for Self Regulation in Advertising which covers the following principles:

·         To ensure the truthfulness and honesty of representations and claims made by advertisements and to safeguard against misleading advertisements.

·         To ensure that advertisements are not offensive to generally accepted standards of public decency.

·         To safeguard against the indiscriminate use of advertising for the promotion    of products which are regarded as hazardous to society or to individuals to a degree or of a type that is unacceptable to society at large.

·         To ensure that advertisements observe fairness in competition so that the consumer’s needs to be informed on choices in the market-place and the canons of generally accepted competitive behaviour in business are both served.[3]

The ASCI is not a body under the government. It is a voluntary, self regulatory organization and is represented in every committee that is working on advertising content in all Ministries under the Government of India. The Council receives and processes 120-140 complaints against advertisements, from a cross section of consumers and the general public, and this covers individuals, practitioners in advertising, advertiser firms, media, ad. agencies, and ancillary services connected with advertising.[4] The complaints are decided by their Consumer Complaints Council (CCC) and the ASCI reports on complaints are decided by the CCC.

The Prohibition of Publication or Telecast of Vulgar, Obscene and Surrogate Advertisements and Re-mix songs by Print and Electronic Media Bill, 2004 is a bill still waiting to see the light. The Bill was put forward to provide for complete prohibition on the publication of surrogate advertisements featuring equivalent products, especially liquor and tobacco through mass communications and media, in order to safeguard our country's cultures and values. A market survey in 2001 revealed that advertising has a direct influence on the consumption habits of 431 million people in India and an indirect impact on 275 million `aspirants' from the lower income group.[5]

In addition, the term "surrogate advertisements" has been given a legal definition in the Bill that goes as follows: "An advertisement which shows a substitute product in the guise of the real one which otherwise cannot be legally advertised through the print and electronic media." [6] The Bill also recommends prohibition of the publication by print media and telecasting of surrogate advertisements and provides that violators of the said provisions shall be punished accordingly.

Meanwhile, the Indian Broadcasting Foundation, whose main objective is to  promote, aid, help, encourage, develop protect and secure the interests of the Indian television industry and other related entities, took on the matter of surrogate advertisements and decided to impose approval of production of advertisements by liquor manufacturing units at the storyboard and post-production stage of an advertisement. IBF also restricts liquor companies promoting any products such as mineral water, juice, soda etc in an improper manner which projects them as clippings of liquor or any other prohibited category of advertisements.

Needless to say, these kinds of measures are appreciable, but the point lies in the enforcement of those steps. In our society, as producers have freedom to produce and market their products, as consumers, we have a legitimate right to get comprehensive information through advertisement regarding any new particular product launched in the market.

Surrogate advertisements are both misleading and dishonest in many ways. As this technique is pervasive with growing technology and media penetration, it is high time to take on the issue with due importance.  Unless rigorous regulatory measures are put in place to tackle the issue like implementation of laws which ban surrogate advertisements, granting additional authority to ASCI to take legal actions against infringements, regulating media to adhere to the code of advertising, creating public awareness programs etc, this revolutionary method of prohibited advertisements is going to create a big challenge to our media savvy society.

                                                                                                           Submitted by:

                                                                                                 Vinitha Prasannan
Senior Associate
Biz & Legis

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[1] an advertising executive famous for creating such icons as the Jolly Green Giant, the Marlboro Man, Toucan Sam, Charlie the Tuna, Morris the Cat, the Pillsbury Doughboy, the 7up "Spot", and Tony the Tiger

[2] http://peoples-post.com/nation/legal-notes/1312-surrogate-advertisements-a-new-judicial-concern.html

[3] http://www.ascionline.org/feedback/faqs.htm

[4] Ibid

[5] http://wikitp.blogspot.com/2009/11/surrogate-advertising-needed-spirited.html

[6] http://www.legalserviceindia.com/article/l346-Surrogate-Advertisements.html 

TRADEMARK

TRADEMARK REGISTRATION IN USPTO

Trademark is a distinct identity used by an individual or a business entity. It indicates the source and origin of goods. This distinct identity helps the consumers to identify that the products or services with which the trademark appears originate from an exclusive source, and to differentiate its products or services from those of other entities. The consumers today classify their tastes and preferences on the basis of brands and brand names. This brand name is what gives the manufacturers an edge over their competitors. It is thus very crucial for any entity today to register the brand name so that their unique identity is legally protected. It is for one of the main reasons for rise in the applications for trademark registrations as the people have accepted the fact that a registered trademark would ensure a greater protection.

Trademark Search

To adopt a trademark similar to another trademark would only give rise to claims for infringement and litigation[1]. It is for this very reason that the first step in trademark registration is to have a comprehensive trademark search. It is done to ensure that the same or similar mark is not already in use by a third party. USPTO is the federal agency entrusted with the task of Trademark and Service mark registration[2]. A thorough search of USPTO is not in itself sufficient to ensure and avoid opposition or future litigation. Before filing an application for trademark registration it is better to search the database of the agencies stated below:

1.      Search for federal trademarks at USPTO

2.      Common law search

3.      State search

There are enough precedents now which depict that whenever someone has avoided this essential step it has only caused legal trouble and nothing else. In International Star Class Yacht Racing Ass'n v. Tommy Hilfiger[3], Tommy Hilfiger had no other option but to fight a five year long court battle for the mark ‘Star Class’, as his “knock out” search for the mark in international class 25 for apparels, did not uncover the Yacht Association’s prior common law use of the same mark. The company had no other option but to face a long legal battle with the Association due to its failure to conduct a full trademark search. Given that lot of value is associated with trademark; it is prudent to get a thorough trademark search done prior to applying for a trademark.

Application[4]

Prior to preparing the application, the determination of trademark class under which the application is to be filed is another important aspect. The goods and services are classified into different classes. As trademark is not only a name but it also acts as a representative of what is being done with the mark. All goods or services are categorized within International Classes[5]; goods are classified from classes IC 1-34, while services are in IC 35-45. In 1973 USPTO adopted the international classification system as set forth by the Nice Agreement[6]. As the correct and apt inclusion of all the necessary trademark classes is an essential pre requisite for comprehensive protection of the trademark. The trademark applications are drafted and submitted to the Trademark Office, primarily to get the mark registered and to get the exclusive right to use the trademark for a particular period of time.

Examination[7]

When the application is submitted before USPTO a filing date will be assigned by the office. The filing date being the date the application was received. If the application has met with the entire filing requirements then a serial number is assigned to the application.  After some time the application is reviewed by an examiner at USPTO and determine with regard to whether the mark can be registered or not. If the examiner arrives at a finding that the mark cannot be registered, then a letter referred to as “Office Action” will be issued and the same would either state the grounds for refusal or would state the required corrections. The time within which a response is to be provided for the office action is within six months, if no response is given in that time period then the application would be abandoned. If the response does not adequately address all the issues raised in the office action then the Examiner will issue a final refusal in which case the only relief is to approach the Trademark Trial and Appeal Board for relief.

Publication of opposition[8]

After the application is cleared by the Examiner, the mark would be then sent to the official gazette of USPTO. USPTO will also provide a notice of publication which would indicate the date of publication. When the mark is published in the Official Gazette, any party who is of the belief that he would incur substantial damage by registration of such a mark has the right to file an opposition. Such an opposition to the registration of the mark can be filed 30 days from the date of publication to file an opposition to registration. If no opposition is filed within the time limit then the application is taken to the next stage.

Registration [9]

If the mark is being used in commerce before the application is filed then USPTO would issue a registration certificate 3 months after the mark was published provided there was no opposition for the same. If the application for trademark registration is intent to use application then USPTO will issue a Notice of Allowance about three months after the mark was published provided no opposition was filed in this regard. After the issuance of this notice within six months you have to either start using the mark and notify USPTO in this regard or request for a six-month extension or else the application would be abandoned. Only after USPTO has been notified with regard to the trademark being in use would the USPTO issue a registration certificate in this regard.

It is evident that trademark registration if done at the correct time would ensure greater protection for the mark.

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[1] Corsearch, Inc. v. Thomson & Thomson, 792 F. Supp. 305, 307 (S.D.N.Y. 1992)

[2] 35 U.S.C. § 1051

[3] 959 F. Supp. 623 (S.D.N.Y. 1997)

[4] http://www.uspto.gov/trademarks/index.jsp , www.uspto.gov/trademarks/law/tmlaw.pdf

[5] http://www.wipo.int/classifications/en/

[6] http://www.uspto.gov/trademarks/teas/reg_maintain.jsp

[7] Supra note 4

[8] Supra Note 4

[9] Supra Note 4

Foreclosure Issue in US

Link to ForeClosure Issue in US