BACKGROUND

Cricket in India is not merely a sport but a cultural phenomenon, deeply rooted in rivalry and competitive spirit. Against this backdrop, advertisements often employ humour, exaggeration, or playful banter to engage fans of competing franchises. The question, however, is whether such advertising crosses the threshold into disparagement or trademark infringement. In the matter of Royal Challengers Sports Pvt. Ltd. v. Uber India Systems Pvt. Ltd. & Ors¹, the Hon’ble Delhi High Court examined the issue of disparagement in advertisements, while addressing the Plaintiff’s plea for interim relief and takedown of the impugned advertisement from social media platforms. The Plaintiff had filed the present suit alleging that the advertisements posted by the Defendants amounted to disparagement and unauthorised use of Plaintiff’s registered trademark ‘Royal Challengers Bengaluru’ (“RCB”) under Section 29 (4) of the Trade Marks Act, 1999.

FACTS OF THE CASE

The dispute arose from an advertisement, ‘Uber Moto Official ride of the Hyderabaddies’, posted on social media platforms. The advertisement featured Australian cricketer, ‘Travis Head’, who plays for the IPL team Sunrisers Hyderabad (“SRH”). The cricketer was shown defacing the poster of ‘Bengaluru v. Hyderabad’ by adding the phrase ‘royally challenged’ above Bengaluru. Subsequently, both got away using the Uber Moto ride, which arrived within 3 minutes. The Plaintiff had filed the suit for infringement, seeking interim relief and takedown of the advertisements posted on the social media platforms, arguing that the ad was defamatory and disparaged their brand’s reputation.

ISSUES FRAMED BY THE HON’BLE DELHI HIGH COURT

1. Whether the advertisement amounted to disparagement of the Plaintiff’s trademark RCB?
2. Whether the Defendants were liable for infringement under Section 29(4) of the Trade Marks Act, 1999?
3. Whether the advertisement were protected under the principle of fair use as guaranteed by Article 19 (1) (a) of the Constitution of India?

ARGUMENTS ON BEHALF OF THE PLAINTIFF

It was contended that the Defendants had intentionally added a deprecatory remark by changing to ‘Royally Challenged Bengaluru’, which is deceptively similar to the Plaintiff’s trademark RCB.

It was submitted that the advertisement posted created confusion and dilution of the Brand’s goodwill and was misused by the Defendants using the slogan ‘Ee Sala Cup namde’, which is famously associated with the RCB cricket team.

Further, the Plaintiff’s contended that the advertisement was an act of disparagement and was created with the intent to portray that the SRH team was superior to the RCB cricket team by showing an SRH player defacing the RCB name by altering the poster to be read as ‘Royally Challenged Bengaluru’.

ARGUMENTS ON BEHALF OF THE DEFENDANTS

The Defendant’s submitted that the advertisement in question was intended solely to convey that the motorbike services provided by Uber are both efficient and reliable, as depicted through the instance where the ride booked in the advertisement arrived within three minutes and thereby enabled the defendant to avoid interception by the security personnel. It was further contended that the expression “Royally challenged” had been employed only to signify the competitive nature existing between the teams. The reference to the cities Hyderabad and Bengaluru had been used merely as a light-hearted pun, and such usage cannot be construed as an act of disparagement.

FINDINGS AND ANALYSIS

1. On the issue of Disparagement

The Hon’ble Delhi High Court observed that the act of disparagement constitutes tortious liability; over the years, the judiciary has progressively broadened the scope of disparagement. In Gillette India Ltd. v. Reckitt Benckiser², the Hon’ble Madras High Court defined the expression “disparagement” to mean dishonouring, derogating, denigrating, defaming, or disgracing another person’s property, business, or product. [Para 36]

Subsequently, in Pepsi Co. Inc. v. Hindustan Coca Cola Ltd.³, the Hon’ble Division Bench of the Delhi High Court examined the issue of disparagement in advertisements and laid down three essential parameters [Para 37]:

1. the intent of the commercial,
2. the manner in which it is presented,
3. the message conveyed by the advertisement to the public. [Para 37]

Relying upon the above judicial precedents, the Hon’ble High Court observed that where an advertisement is confined to projecting the merits of one’s own product and does not overtly derogate or disparage the product or business of others, it would not fall within the ambit of disparagement. It is further observed that an advertisement must be assessed in its entirety and not dissected into parts. [Para 39]

The Hon’ble Delhi High Court has settled that for an advertisement to constitute disparagement, it must convey something expressly negative message attributable to the rival’s product or brand. The law requires that disparagement must necessarily have a clear element of demeaning, criticism, or falsity attributable to the rival’s product or brand with the intention to cause harm. Unless the advertisement contains such an element of denigration apparent per se, no case of actionable disparagement arises. Thus, at a prima facie stage, a plaintiff seeking a temporary injunction must at least demonstrate the presence of these essential elements in the disputed content. [Para 40]

2. Applicability of Section 29 (4) of the TM Act, 1999.

The Hon’ble Delhi High Court read into the provisions of Section 29(4) of the Trade Marks Act and observed that according to Section 29(4) it was incumbent upon the Plaintiff to establish that the Defendants were in use of the registered trademark “RCB” in the course of trade, and that such use amounted to infringement. The Plaintiff must further demonstrate that the use of the impugned mark is in relation to goods or services in a manner which takes unfair advantage of, or is detrimental to, the reputation of the Plaintiff’s registered trademark, and that the impugned mark is identical with or similar to the Plaintiff’s mark. [Para 42]

In this context, court relied upon the decision of the coordinate Bench of the Delhi High Court in ITC Ltd. v. Philip Morris⁴, wherein it was clarified that the threshold of proof under Section 29(4) is considerably higher than Sections 29(1), 29(2), and 29(3) of the TM Act, as it deals with dilution rather than traditional confusion-based infringement. [Para 43]

The Hon’ble Delhi High Court therein ruled that the mere adoption or use of an identical or similar mark by the Defendant, in and of itself, does not ipso facto give rise to a presumption of infringement under Section 29(4). Although there may be apparent similarity in trademarks, no presumption of infringement arises if the use pertains to different kinds of goods or services. [Para 44]

3. Article 19 (1) (a) of the Constitution of India

Article 19 (1)(a) of the Constitution guarantees the fundamental right to freedom of speech and expression, including the freedom to advertise. While advertisers under Article 19 (1) (a) can freely advertise, such freedom is circumscribed by the reasonable restrictions and cannot extend to defamation.

In Tata Press Ltd. v. MTNL,⁵ the Apex court recognised that Article 19 (1) (a) of the Constitution protects commercial speeches. Further, this court relied upon the decision of the Hon’ble Division Bench in the case of Reckitt Benckiser Ltd. v. Wipro Enterprises Ltd.,⁶ wherein the court ruled that in cases where there exists the question of disparagement in advertisement, the right to free speech and to promote one’s product is the essential facet of the right to trade and business. However, this right is not unfettered, and the competitor enjoys protection under the principle of fair use as long as the advertisement does not denigrate or diminish the reputation of the rival’s product. [Para 47]

DECISION

Accordingly, the Hon’ble Delhi High Court has rejected the Plaintiff’s application for an interim injunction on the ground that the advertisement in question is, at the highest, intended to evoke humour amongst viewers. The Hon’ble Delhi High Court ruled that a certain degree of exaggeration in the realm of advertising is legally permissible, provided that such exaggeration does not transgress the limits by making serious qualitative or quantitative misrepresentations.

Applying the parameters introduced by the coordinate bench in Pepsi Co. Inc. v. Hindustan Coca Cola Ltd., the Hon’ble Delhi High Court in the present dispute decided that the impugned advertisement neither discloses nor contains any elements of disparagement nor does it constitute infringement within the meaning of Section 29(4) of the Trade Marks Act, 1999. The Hon’ble Delhi High Court accordingly affirmed the principle that while the statutory scheme affords robust protection to trademarks, it simultaneously safeguards legitimate creativity, humour, and the permissible range of competitive expression in commercial advertising.

Written By: Shubhangi Dengre (Associate)

1 Royal Challengers Sports Pvt. Ltd. v. Uber India Systems Pvt. Ltd. & Ors. [2025 SCC OnLine Del 2860]

2 Gillette India Ltd. v. Reckitt Benckiser (India) (P) Ltd. [2018 SCC OnLine Mad 1126]

3 Pepsi Co. Inc. v. Hindustan Coca Cola Ltd., 2003 [SCC OnLine Del 802]

4 ITC Ltd. v. Philip Morris Products SA [2010 SCC OnLine Del 27]

5 Tata Press Ltd. v. MTNL [(1995) 5 SCC 139]

6 Reckitt Benckiser (India) (P) Ltd. v. Wipro Enterprises (P) Ltd., [2023 SCC OnLine Del 2958]