'Moment marketing' violations: No trademark Act protection against brands

Sporting celebrities in India do not patent or register personal nuances that would allow them to gain relief under Act

Indian sports stars might find it difficult to get recourse under the Trade Marks Act against ‘moment marketing’ violations, that is when brands insert celebrities into trending moments which are already generating a lot of conversations.

The reason is that sporting celebrities in India, unlike global players, do not patent or register their personal or unique nuances which would allow them to gain relief under the act.    

The issue shot into the public arena after badminton star P V Sindhu’s agency, Baseline Ventures, said they were planning to sue brands who inserted her picture on social media along with their brands and logos, while congratulating her for winning two medals in the Tokyo Olympics. The brands include Apollo Hospitals, the Aditya Birla group, Happydent, and Vicks.

Advertising experts say that Baseline Ventures had taken legal action earlier too during a similar incident involving cricketer Prithvi Shaw after he scored his first Test hundred in October 2019. Several brands such as Swiggy, e-commerce website FreeCharge, and Yashodhara Hospital, sent congratulatory messages.

Baseline Ventures invoked Section 27 of the Trade Marks Act for the ‘cease and desist' notice which it sent to protest against brands for ‘encashing’ on Shaw’s name and fame without his authorisation. It also invoked other sections of the act to allege that Swiggy was using a false property mark.

Experts say that Baseline Ventures could also have taken legal action under the Indian penal code over alleged violations of counterfeiting a property mark. Baseline Venture’s managing director Tuhin Mishra did not respond to queries on the issue. 

“A trademark infringement can only happen if a trademark of, say, Sindhu or a certain gesture of hers, is already patented or is registered. Clearly it is not the case here and nor was in the Shaw case,” said Sandeep Goyal, managing director, Rediffusion.

Globally, celebrities protect their own brand. Usain Bolt, for instance, registered his signature ‘lightning bolt’ celebratory pose. New York Yankees star Alex Rodriguez trademarked his nickname ‘A-Rod’ and Michael Jordan has a patent of his name in Chinese characters.

 

Sindhu could also have resorted to the Advertising Standards Council of India (ASCI). Its secretary general Manisha Kapoor secretary said: “The ASCI’s code already has provisions for such violations. If there are complaints, we will surely investigate,” said Kapoor.

She points out that the code states that ‘advertisements shall not, without permission from the person, firm or institution under reference, contain any reference to such person, firm or institution which confers an unjustified advantage on the product advertised or tends to bring the person, firm or institution into ridicule or disrepute’.

If and when required to do so by the ASCI, the advertiser and the advertising agency must produce explicit permission from the person, firm or institution to which reference is made in the advertisement.

The ASCI can take action on its own only when it is very evident that there has been a violation, even if no one has complained. Otherwise, it has to wait for a complaint.

Since Sindhu is the aggrieved party, she has the right to decide in which forum she wants to take up the issue and it seems she has opted for legal recourse, in which case the ASCI has no role to play, adds Kapoor. 

Kapoor says that the ASCI has taken successful action on similar usage against White Hat Junior which was using ads with pictures of Google Chief Executive Sundar Pichai and Apple Inc founder Steve Jobs urging young children to take up their coding classes for a great future. White Hat Junior withdrew the ads.   

If Indian sports personalities want to protect themselves, Goyal says they will have to register their personal and unique nuances. Until they do that, they can also file civil suits against advertisers who exploit their name for commercial gain.