The rapid boom in cleaning products suggested that this could be a sector where the first coronavirus-related IP disputes might arise. And so it has proved.
Recently, Hindustan Unilever, the Indian producer of Lifebuoy bar soap (its shape is also a three-dimensional trademark registered in India), sued Reckitt Benckiser (India) in Mumbai over the advertising of Dettol liquid soap. From the appearance of the products and their packaging, it may be hard to see what the dispute could be about (the pictures below are for illustrative purposes only).
There were several points of contention, but we will focus here on one of them. The disputed advertisement promoted the use of Dettol liquid soap (right), emphasising the importance of handwashing in the fight against COVID-19. If that was all the ad did, there would be nothing controversial about it. The problem is that the ad also claimed that washing hands with bar soap is ineffective. The ad showed a red bar soap in a shape and appearance almost identical to the Lifebuoy bar soap (left), pointing to germs accumulating on it, and, by implication, to the coronavirus.
It is no longer possible to accurately reproduce the advertisement and its details, as Reckitt Benckiser (India) has suspended its transmission for a month (22 March – 21 April 2020). So we have to rely on the available press releases (among others from the Spicy IP and Indian Express websites). Even with such limited knowledge of the advertising message in question, it is worth considering how it could have been assessed under Polish law. Could such advertising be regarded as contrary to principles of fair competition within the meaning of the Unfair Competition Act, or trademark infringement under the Industrial Property Law?
First of all, a question arises whether the ad constitutes unlawful comparative advertising (Art. 16(3) of the Unfair Competition Act). The starting point for findings in this respect would have to be an examination of whether the ad enables direct or indirect identification of a competitor or its goods. In practice, this means that the recipient would have to identify the Lifebuoy product from the appearance, shape and colour of the soap bar presented in the ad. Thus, recognition is crucial, and this would have to be proved by Unilever.
But let’s assume that this basic condition is met. Then the next step would be to investigate whether the advertisement is contrary to fair practice. Only then could it be considered illegal. The Polish legal system allows for comparative advertising, provided that it meets all conditions set out in Art. 16(3)(1)–(8) of the Unfair Competition Act, including that it does not disparage the competitor’s goods or trademarks, compares the goods in an accurate and verifiable manner, and is not misleading.
So let’s check how the disputed ad comes out against this background and what hypothetical arguments the claimant might have raised under the Polish regulations. First, it could argue that the ad disparages the Lifebuoy bar soap (and the corresponding three-dimensional trademark) by presenting it as ineffective for preventing COVID-19. Second, it could argue that the ad misleads consumers about the properties of the Lifebuoy soap, e.g. its quality, antibacterial properties, and usefulness during the ongoing pandemic. Third, it could show that the ad influences consumers’ decisions on purchasing Lifebuoy soap, discouraging them from buying it. Fourth, it could argue that such advertising during a coronavirus pandemic attempts to stir fear in society by suggesting that bar soaps are useless.
It seems that it could also be argued that it is misleading to direct this kind of message to the public at a time when the world is struggling with the pandemic and the guidelines of governments, doctors and the World Health Organization, among others, recommend that people wash their hands thoroughly and frequently with soap and water (regardless of the form of soap—liquid or bar). Therefore, based on limited information about the advertising message in question, it can be assumed that Unilever would have arguments that the Reckitt Benckiser advertising constitutes unlawful comparative advertising.
Irrespective of the above, the claimant could also argue that the defendant’s action constitutes another act of unfair competition with respect to advertising (Art. 16(1) of the Unfair Competition Act), or allege that the advertising constitutes an act of unfair competition consisting in disseminating false information about the competitor’s product, i.e. about the properties and effectiveness of Lifebuoy bar soap (Art. 14).
If such a case were pursued in Poland, the defendant would bear the burden of proof of the truthfulness of the information in the disputed advertisement (Art. 18a of the Unfair Competition Act). Therefore, it would be up to Reckitt Benckiser to prove, for example, that Lifebuoy bar soap is ineffective in removing bacteria and germs, including coronavirus. In addition, the advertising agency that prepared the disputed ad could have been sued by Unilever (Art. 17).
The advertising message could also be considered to be in breach of the general clause of fair practice (Art. 3 of the Unfair Competition Act), as an act threatening or infringing Unilever’s interests. Let’s assume that Lifebuoy soap is the market leader, its appearance is highly recognisable, and the bar soap presented in the disputed ad evokes an immediate association with Lifebuoy soap. The burden of proof of these facts would obviously have to lie with the claimant. If Unilever were to meet this burden, it could be inferred that the advertising harms the distinctive character of the Lifebuoy soap and discredits it in the eyes of the audience. Therefore, the infringement of Unilever’s interest would amount to disparagement of a market-leading product, tarnishing its aura of effectiveness and quality. Using similar arguments, Unilever could also try to raise claims for infringement of a renowned trademark (Art. 296(2)(3) of the Industrial Property Law), claiming that the advertising damages the mark’s reputation. The success of this claim would depend, among other things, on demonstrating the reputation of the three-dimensional trademark representing a bar of soap. As the current case law tends to narrow the scope of protection, it would be challenging but not impossible to protect the shape of the product as a trademark.
What is more, a business disseminating such an ad in Poland should take into account possible proceedings before the Advertising Ethics Commission at the Polish Advertising Council.
Regardless of the fate of this ad in India, at this difficult time everywhere it is worth exercising particular care in framing advertising messages. Some businesses, especially those in now highly competitive industries, are taking advantage of the situation to build advertising alluding to the pandemic. By contrast, others have completely suspended their ad campaigns, shifting funds from the advertising budgets to fight the pandemic. The long-term impact on the advertiser’s image should also be considered when adopting an advertising model at this time. Certainly, if the methods or content used by a business oversteps the bounds of fair competition, it must take into account the risk of liability.
Lena Marcinoska, attorney-at-law, Intellectual Property practice, Wardyński & Partners