Why the Defense of Comparative Advertising against

Trademark Infringement Must Be Reviewed

Trademark is defined as any word, name symbol, emblem, sign or device or any combination
thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from
those manufactured, sold or dealt in by others. It is any visible sign capable of distinguishing goods. 1
The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is
affixed; to secure to him, who has been instrumental in bringing into the market a superior article of
merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine
article to prevent fraud and imposition, and to protect the manufacturer against substitution and sale of an
inferior different article as his product.2
In Smith v. Chanel (402 F.2d 562, 1968), a manufacturer who advertised a fragrance called TaRons
Second Chance as duplicate of Chanel No. 5 successfully used the defense of comparative advertising
against charges of trademark infringement and unfair competition. The Court held that the use of
anothers mark to identify the trademark owners product in comparative advertising is not prohibited by
either statutory or common law, absent misrepresentation regarding the products or confusion as to the
source. The only legal relevance of a trademark is to impart information as to the source or sponsorship of
the product for reasons grounded in the public policy favoring a free, competitive economy. Thus, absent
any misrepresentation or confusion as to source of sponsorship, a seller in promoting his own goods may
use the mark of another to identify the latters goods.
It is true that the perfume copied was unpatented and thus Smith has the right to copy it.
However, he should not be permitted to advertise that his perfume is a 100% perfect duplicate of Chanel
No. 5. It is my humble opinion that a comparative advertising defense is incompatible with the functions
of a trademark as laid down in jurisprudence.
As mentioned above, a trademark secures the producer of the goods, who has been instrumental
in bringing into market a superior article of merchandise, the fruit of his industry and skill. It also protects
the manufacturer against substitution and sale of an inferior different article as his product.
If Smith would be allowed to advertise that his perfumes are perfect duplicates of Chanel No. 5
and other worlds finest and expensive perfumes, Smith is indirectly using these brand names, profiting
from their goodwill, as baits to attract customers. The Court favors Smith by holding that his chief
weapon is his ability to represent his product as being equivalent and cheaper. However, the
advertisement clearly conveys that his perfumes are not merely equivalent but perfect duplicates of the
branded perfumes. Clearly, this confirms that Smith is taking a free ride on trademark owners widespread
goodwill and reputation.
As alternative, Smith should be ordered to advertise his product not as perfect duplicates but as
being better or simply being an equivalent of Chanels. In this way, there would be a doubt in the mind of
the potential customers as to the reliability and truthfulness of the advertisement creating a protection to
the registered trademarks. Therefore, I propose that the comparative advertising defense should be
1 Mirpuri v. CA, G.R. No. 114508, November 19, 1999.
2 Ibid.

reviewed because there is a question as to its consistency with the essence of having trademark as
protection.