By Srishti Sneha
Recently, a trademark infringement suit was filed by Petunia Products, Inc., against Molly Sims, an American model and actress, over its trademark “BROW BOOST”.
The corporation alleged that the actress had used the term “Brow Defining Boost” in her blog post while advertising the product by Rodan and Field under the aforesaid term. Thereafter, the actress filed a motion to dismiss claiming that the liability for trademark infringement does not extend to third parties.[i] Further, it was argued that the sponsoring of the product does not constitute infringement, since it does not come within the ambit of commercial use of the mark. She claimed that she was merely advertising it.
However, the court refused to entertain the plea. The court observed that she may have some degree of liability for participating in the alleged trademark infringement. It reasoned that her act of thanking “Rodan & Fields” for sponsoring the post and including the link to the site for purchase of the product appeared to indicate a paid advertisement which did not come within the ambit of consumer commentary to commercial use. It further observed that she had advertised a product that competes with that of the plaintiff, sounds like that of the plaintiff and was also advertised through similar channels. While the case is still pending, it has given rise to a perplexing yet interesting question, can third party influencers/advertisers be liable for trademark infringement by the brands they promote? This piece shall try and ascertain the same in the Indian context.
Trademark infringement is of two kinds – direct and indirect. Direct infringement refers to the contravention of the Trademark statute whereas indirect infringement also takes into account the inducement of trademark infringement. Indirect or secondary infringement has further been classified into vicarious liability and contributory infringement. In the Indian context, vicarious liability has been incorporated under Section 114 of the Trade Marks Act.[ii]
Contributory infringement has not been mentioned anywhere, however, in Inwood Laboratories Inc. v. Ives Laboratories, Inc.,[iii] the Supreme Court of the United States elaborated on what constitutes a contributory infringement. In order to constitute a contributory infringement, it must be proved that the defendant (a) intentionally induced another person to infringe his or her trademark, or (b) has continued to supply its product to the party where he knows or has a reason to know he was engaging in a trademark infringement.
Contributory infringement in Lockheed Martin Corp. v. Network Solutions Inc.,[iv] was expanded to the online realm. It was observed that the direct control and monitoring of instrumentality used by the third-party to infringe on a trademark would allow the court to expand the term “supplies a product” in case of contributory infringement.
From the grounds laid down in the Inwood Laboratories and Lockheed Martin Corporation cases, it can be ascertained that in order to constitute contributory infringement, it is essential to prove inducement. Thus, in the case of a trademark infringement, influencers cannot be held to be liable for contributory infringement as there is no inducement.
Trademark Infringement and Intention to defraud
Section 29 of the Trade Marks Act, 1999, deals with trademark infringement.[v] On perusal of the aforementioned section, it can be ascertained that any unauthorized use of a registered trademark shall be considered to be a trademark infringement. Thus, from the language of the section, it is quite evident that intention to defraud or deceive is not essential in a case for trademark infringement.
Further, in S.M. Dyechem Ltd. v. Cadbury,[vi] the court referred to Roche vs. Geoffrey Manners,[vii] and held that if in a case, essential features have been copied, then in such cases, the intention to deceive or cause confusion shall not be considered to be relevant for action for trademark infringement. Thus, once a false representation has been made, then in such cases even if there is no intention to deceive, a case can be made out. The court further observed that in certain cases, confusion may be created unintentionally, however, the consumers of such goods may not have the requisite facts that can prevent such confusion.
Thus, from the aforementioned section and case law, it is quite evident that once there has been unauthorized use of a trademark and such use causes confusion among the public, despite the fact that the same is unintentional, such person may be liable for trademark infringement.
From the advent of the internet, particularly the rising use of social media and the consequent rise in the number of influencers, the legislature and other regulatory authorities have introduced laws and guidelines to ensure the protection of the consumers from any misrepresentation and deception.
For instance, Section 21 of the Consumer Protection Act, 2019 holds an endorser liable for false or misleading advertisements.[viii] Nevertheless, such an endorser cannot be held liable if he has exercised “due diligence”. However, the term has not been defined under the Consumer Protection Act, 2019.
The ASCI Guidelines for Influencer Advertising in Digital Media also provides for due diligence to be carried out by an influencer.[ix] The second clause that provides for “due diligence” stipulates that the influencers are required to review the claims made by the advertiser and ensure that they are in a position to substantiate such claims. So the question at this juncture is, should the influencers be obligated to ensure that the brand they are advertising does not infringe the trademark of another brand?
After taking into account the recent law on endorser liability, it is quite evident that the legislature intends to hold the influencers accountable for the claims they make. Further, on reading Section 29 of the Trade Marks Act, 1999 along with the S.M. Dyechem Ltd. v. Cadbury case, it can be ascertained that where essential features have been copied, then in such cases, the intention to deceive or cause confusion shall not be considered to be relevant for action for trademark infringement. Thus, on reading the laws and judicial precedents, it can be said that third party influencers can be liable for trademark infringement by the brands they promote under Indian law.
[i] Petunia Products, Inc. & Billion Dollar Brows v. Rodan & Fields, LLC & Molly Sims, SACV 21-00630-CJC (ADSx) (C.D.C., Jun 08, 2021).
[ii] The Trademarks Act, 1999, § 114, No. 47, Acts of Parliament, 1999 (India).
[iii] Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982).
[iv] Lockheed Martin Corp. v. Network Solutions Inc., 985 F. Supp. 949 (1997).
[v] The Trademarks Act, 1999, § 29.
[vi] S.M. Dyechem Ltd. v. Cadbury, (2000) 5 SCC 573.
[vii] Roche vs. Geoffrey Manners, AIR 1970 SC 2062.
[viii] The Consumer Protection Act, 2019, § 21, No. 35, Acts of Parliament, 2019 (India).
[ix] Press Release, The Advertising Standards Council of India, ASCI issues final Guidelines for Influencer Advertising on Digital media, launches ASCI (May 27, 2021), https://ascionline.in/images/pdf/press-release-influencer-guidelines-2021.pdf.