Earlier this year, two franchisees of the blockbuster cricket tournament, i.e. the Indian Premier League (IPL), fielded their contest before an unlikely forum – the Delhi High Court. The Royal Challengers Bengaluru (RCB) challenged an advertisement by Uber India titled “Baddies in Bengaluru ft. Travis Head.” which had allegedly disparaged their trade mark–‘Royal Challengers Bengaluru’.

The advertisement featured the Australian cricketer Travis Head fielded by Sunrisers Hyderabad (SRH) in the IPL, taking a dig at RCB by depicting a “deprecatory” variant of their trade mark as ‘ROYALLY CHALLENGED BENGALURU’. The advertisement also mentions Uber India to be “Official Ride Partner of the Hyderbaddies”, seemingly a reference to SRH. Claiming that SRH was the hidden second advertiser, RCB’s primary contention was that an advertisement by a commercial rival is an act of disparagement, particularly since the purpose of use of the trade mark was to depict RCB in a derogatory light. Anticipating a possible claim of ‘fair use’ by the Defendants, RCB argued that “poking fun” at the plaintiff, would not merit such an exemption.

On the other hand, Uber India defended the advertisement claiming that it was in the spirit of a comical tease or a parody and to stifle such light-hearted banter, would be rather unsportsmanlike. With a rich history of parodical advertisements in field of cricket, including the Cola ad wars, to cite in support, Uber India pegged the instance as an exercise of constitutionally guaranteed freedom of speech and expression.

RCB’s impassioned appeal did not find sway the Ld. Single Judge, who concluded that the advertisement, in the context of the IPL and the spirit of sportsmanship, did not constitute disparagement or trademark infringement that warranted judicial intervention.

The Ld. Judge held that Uber India’s word play “Royally Challenged” as a pun on RCB’s name, in the absence of “demeaning, criticism, ridiculing or falsity” could not be deemed as disparagement. The advertisement, being in the context of a sporting rivalry, where such banter is taken to be fundamental and rooted in sporting customs, was a crucial consideration which divorced the present case from other exchanges, which were featured in more commercial backdrops. Sans any evidence of commercial exploitation or dilution of the RCB brand, Uber India’s use of the mark was seen as a playful twist rather than a deceptive or harmful use of the trademark.

At a time when humour and comedy has become a subject of national attention, the present judgment takes a considerably tolerant view. The Ld. Judge’s emphasis on the context in which the advertisement has been aired ought to be a factor in any trade mark disparagement claim. Trade mark rights ought not be used as a tool to curb freedom of speech or dictate what constitutes humour. This is not to say that disparagement must be condoned, rather the law must affix a higher bar for the same, requiring more than just a negative or comparative statement. The object must be one intended to denigrate and potentially cause harm to the rival’s reputation through false or malicious claims.

The same questions, in a commercial setup or an advertisement motivated to gain a commercial advantage at the expense of a rival’s reputation, would certainly evoke a different response. The Court noted that for the determination, it was crucial to assess the content on three counts:

1. The intent of the advertisement,
2. The manner of representation of the trade mark and
3. The message sought to be conveyed in the advertisement.

The court’s conclusions are influenced by the rivalry between sports fans. In the case at hand, the Court concludes that intent of the advertisement was not to malign/disparage RCB’s trade mark, rather to evoke light-hearted humour. For disparagement to be made out, it was required that the advertisement has elements which are “demeaning/ criticism/ condemning/ ridiculing/ denigrating/ defaming/ disgracing/ belittling/ scorning/ mocking/ falsity with a view to cause injury and/ or harm”.

The representation, the Court concludes, does not have any element of comparative advertising. Accordingly, it could not be said that the advertisement had element(s) of (un)fair and/or (in)accurate comparison of any kind to show commercial exploitation by the defendants. A contrary view is certainly tenable. RCB’s grievance may be legitimised if one considers that Uber India is neither a competitor of RCB (which SRH may be) nor can the advertisement be regarded as one which is not aimed towards a commercial advantage. Any advertisement is aimed at gathering interest in consumers, therefore, any promotional activity, like the one under scrutiny, cannot possibly be distanced from an intent to commercialize and generate goodwill/ reputation. However, in the present case, the overall theme of banter and light-hearted rivalry, which is common to any sport, finds persuasion with the Court and crucially swings the determination.

Only time will tell if RCB’s anticipated Decision Review System—sorry—an Appeal will find favour of the Division Bench of the Delhi High Court and overrule the on-field decision/judgment.