In Bright Lifecare Private Limited v. Vini Cosmetics Private Limited and Anr., the Delhi High Court (‘Court’), in a first of its kind decision, held that distinctive elements in an advertising campaign are independently protectable under intellectual property law.

Bright Lifecare Private Limited (‘Plaintiff’), which is in the business of manufacturing and trading of health supplements, nutraceuticals, and food products, began an advertising campaign for its protein supplement in March, 2018 titled ‘ZIDDI HOON MAIN’ and used various forms of Hindi language words “ZIDD” and “ZIDDI” to describe a quality of persons who do not give up despite various challenges (‘Plaintiff’s Advertisements’). The Plaintiff’s Advertisements centred around the theme of protagonists being depicted lifting heavy weights or working out in the gym and sweating profusely while working out. The Plaintiff’s Advertisement were shot in a dark setting with very few lights and towards the end prominently displayed taglines and words being written in white and yellow colour combination. The Plaintiff also obtained trademark registrations over the mark ‘ZIDD’ and marks comprising ‘ZIDDI’ across various classes (‘Plaintiff’s Marks’). In January 2022, the Plaintiff came across deodorant advertisements of Vini Cosmetics Private Limited (‘Defendant 1’) containing a similar theme, video images and which used the tagline ‘ZIDDI PERFUME’ (‘Defendant 1’s Advertisement’). The Plaintiff therefore initiated an action for trademark and copyright infringement alleging infringement of the Plaintiff’s Marks and infringement of copyright in the cinematographic work forming part of the Plaintiff’s Advertisements.

The thrust of the Defendant No. 1’s argument was that the Plaintiff cannot claim monopoly over words like ‘ZIDD’ or ‘ZIDDI’ which have been commonly used in many advertisements earlier and are laudatory in nature and similarly cannot claim monopoly over the idea or the themes depicted in the Plaintiff’s Advertisements.

The Court acknowledged that while the Defendant No. 1’s Advertisement was not a literal imitation of the Plaintiff’s Advertisements, the Court held that an ordinary viewer upon viewing these advertisements is likely to get an impression that these commercials are connected or emanating from the same source owing to the substantial similarities. The Court also held that Defendant No. 1 had imitated the creative expression of the Plaintiff’s Advertisements, keeping in mind the impact the Defendant No. 1’s commercial will create on an ordinary viewer in a fleeting moment. However, the Court permitted Defendant No. 1 to use the Plaintiff’s Marks so as to signify the long-lasting nature of the deodorants or perfumes and so long as it is not used as a trademark.