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Cites 11 docs - [View All]
Reckitt & Colman Of India Ltd. vs Kiwi T.T.K. Ltd. on 1 January, 1800
Reckitt & Colman Of India Ltd vs M.P.Ramchandran & Anr on 22 June, 2010
Section 29(8) in The Trade Marks Act, 1999
Dabur India Limited vs Emami Limited on 28 May, 2004
Hindustan Lever Ltd vs Colgate Palmolive (I) Ltd. & Anr on 17 December, 1997
Citedby 14 docs - [View All]
Karamchand Appliances Pvt. Ltd. vs Sh. Adhikari Brothers And Ors. on 23 May, 2005
Hindustan Unilever Limited vs Cavincare Private Limited on 9 August, 2010
Godrej Consumer Products Limited vs Initiative Media Advertising And ... on 19 July, 2012
Godrej Sara Lee Ltd. vs Reckitt Benckiser (I) Ltd. on 15 February, 2006
Hindustan Unilever Limited vs Procter & Gamble Home Products ... on 20 May, 2010

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Delhi High Court
Dabur India Limited vs Colgate Palmolive India Ltd. on 9 September, 2004
Equivalent citations: AIR 2005 Delhi 102, 114 (2004) DLT 373, 2004 (77) DRJ 415, 2004 (29) PTC 401 Del
Author: M Mudgal
Bench: M Mudgal

JUDGMENT Mukul Mudgal, J.

1. Trade rivalries which lead to advertisements in which the product of an advertiser is extolled and the rival product deprecated have led to this suit by the plaintiff Dabur India Ltd. who makes Dabur Lal Dant Manjan Powder, against the defendant Colgate Palmolive India Ltd. who manufacture Colgate tooth powder. This suit and this application for interim injunction is occasioned by an advertisement aired on the visual media by the defendant. The sum and substance of the TV advertisement complained of is that a Cinestar Sunil Shetty is seen stopping the purchasers of Lal Dant Manjan powders. He further inform them of the ill effects of such Lal Dant Manjan by rubbing it on the purchaser's spectacles which leave marks which are termed by Sunil Shetty as being akin to sandpapering. He also endorses the defendant Colgate's tooth powder as being 16 times less abrasive and non damaging to the spectacles. He is heard telling the purchaser that it is easy to change spectacles but not the teeth.

2. The plaintiff's claim as per the pleas of Shri Arun Jaitley, Senior Advocate is that :-

(a) The impugned advertisement runs down all Lal Dant Manjan tooth powders as severely detrimental to dental health and in particular damaging the tooth enamel.

(b) The plaintiff has the lion's share 80% of the Ayurvedic tooth powder trade and is directly hit by this advertisement as the principal producer, by the denigration of the generic product Lal Dant Manjan. It has a turnover of about Rs. 150 cores for the Lal Dant Manjan tooth powder and its advertising budget for the said product is about Rs. 4 crores. In any event the defendants' advertisement affect the plaintiff the most and hence it is entitled to ventilate its grievances. While the advertisement does not directly refer to Dabur Dant Manjan, i.e. the plaintiff's product, the visual representation in the offending advertisement leaves no manner of doubt as the product being referred to being, Lal Dant Manjan manufactured and marketed by the plaintiff's.

(c) The position of law in respect of disparaging advertisements of rival products is well settled by two judgments of the learned Single Judges of this Court reported in 1996 PTC (16) 393 Reckitt & Coleman v. Kiwi T.T.K. Ltd. and in IA No. 2124/2004 in CS(OS) 453 of 2004 dated 28th May, 2004 in Dabur India v. Emami. The said position of law is as under:-

I. A tradesman is entitled to declare his goods to be best in the words even though the declaration is untrue.

II. He can also say that my goods are better than his competitors, even though such statement is untrue.

III. For the purpose of saying that his goods are the best in the world of his goods are better than his competitors he can even compare the advantages of his goods over the goods of the others.

IV. He, however, cannot while saying his goods are better than his competitors, say that his competitors, goods are bad. If he says so, he really slanders the goods of his competitors. In other words he defames his competitors and their goods, which is not permissible.

V. If there is no defamation, to the goods or to the manufacturer of such goods no action lies, but if there is such defamation, an action lies and if an action lies for recovery of damages for defamation, then the court is also competent to grant an order of injunction restraining repetition of such defamation.

(d) The use generally/specifically of the plaintiff's product for a comparison with the rival product of the plaintiff amounts to violation of the Intellectual Property Rights of the plaintiff.

(c) In any event Section 29(8)(a) & (c) of the Trade Marks Act, 1999 (hereinafter referred to as the Act) does not permit the infringement of a registered trade mark such as the plaintiff by the defendant by an advertisement contrary to honest practices in industrial or commercial matters and is also against the reputation of the registered trade mark of the plaintiff. section 29(8)(a)&(c) of the act read as follows:-

"29. Infringement of registered trade marks--

....

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) ....

(c) is against the reputation of the trade mark.

Such violation of Section 28(a) & (c) tantamounts to infringement of a registered trade mark.

(f) Even Colgate Palmolive, the defendant had secured an interim injunction in respect of an advertisement which was detrimental to the reputation of their product in the MRTP Commission and such injunction was upheld by the Supreme Court by a judgment reported as

(g) The DB judgment in appeal against the order passed in IA No. 996/96 in Suit No. 292/96, titled Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd., which had prima facie held that even the right to freedom of speech which included commercial work also as per the law laid down by the Supreme Court judgment in Tata Press also could be restricted reasonably under Article 19(2).

3. Mr. Rohtagi, the learned senior counsel for the defendant has contended that:

(a) The advertisement does not identify and refer to the plaintiff's product

(b) It is open to the defendant while praising its own product to point out the defects/deficiencies in the rival product.

(c) The defendant justifies such criticism as it is based on studies conducted in the United States of America which found such Lal Dant Manjan tooth powder to damage tooth enamel which were affirmed by two dentists of repute. Reliance was placed on a study comprising the particle sizes of white and red tooth powder

(d) Section 36(A)(i)(x) of the MRTP Act which deals with unfair practice is the appropriate enactment to deal with the complaint of the plaintiff

(e) The mark of the plaintiff is not registered and therefore it cannot claim benefit of Section 29(8) which only provides the protection to a registered trade mark

(f) In any case the defendant is prepared to drop the red container/bottle which according to the plaintiff identifies its product.

(g) Since the defendant was ready to back up their claim made in the advertisement by the virtue of studies got done by it, the only remedy left to the plaintiff was to claim damages as there is neither prima facie case nor balance of convenience in its favor nor irreparable injury likely to be caused to the plaintiff.

(h) He has further relied upon the judgment of Supreme Court in Cadila case reported as 2001 (5) SCC 74 @ para 17 and 87 to contend that the burden of proof is higher in trade mark cases and there has to be very strong case in comparative strength evaluation justifying an injunction.

(i) In so far as the balance of convenience is concerned, it is in favor of the defendant as it has the right to disclose to the public the injury being caused by deleterious products

(j) As far as prima facie case is concerned he submitted that the comparative strength of the two versions does not justify the grant of an injunction particularly when there is no denial in the plaint that the assertions in the advertisement are wrong.

(k) Mr. Rohtagi further submitted that since the plaintiff has not doubted the authenticity of the studies and not denied the result of the studies, it cannot claim injunction particularly when the plaintiff is prepared to withdraw the red bottle from its campaign. He further submitted that in any event the generic description cannot give rise to a cause of action to one of the identified producers to complain. For this purposes, he has further relied upon the meaning of the word 'disparage' from Black's Law Dictionary which reads as follows:-

"disparage (di-spar-ij), vb. L. Hist. To connect unequally (e.g., to marry below one's status). 2. To dishonor (something or someone) by comparison. 3. To unjustly discredit or detract from the reputation of (another's property, product or business).

Disparagement (di-spar-ij-ment), n. A false and injurious statement that discredits or detracts from the reputation of another's property, product, or business."

(l) He has highlighted the fact that the statement made by him was not false. He has also relied on the following observation from Salmond on torts (20th Edition) "The tort requires the making of a false statement, with "malice," to some person other than the plaintiff, as a result of which the plaintiff suffers damage."

.....

"A statement by one trader that his goods are superior to those of a rival (mere "puffing"), even if it is false and known to be so and causes damage to the other is not actionable, for courts of law cannot be converted into advertising agencies for trying the relative merits of rival productions. However, this "privilege" is confined to those imprecise commendations which are a common part of advertising and to which a reasonable person does not attach very much importance. Accordingly, if the defendant chooses to frame his comparison in the form of scientific tests or other statements of ascertainable fact, he will be liable if they are proved untrue."

(m) Reliance has also been placed on observations of Carter-Ruck on Libel and Slander in the following passages:-

"In an action for slander of goods the false statement must disparage the goods of the plaintiff. It is important to distinguish in this class of case between a statement which merely disparages goods and a statement which disparages a trader as well as his goods and therefore really constitutes a libel. If the disparagement is directed to the plaintiff's good only, no action for libel will lie. In Griffiths v. Benn, Cozens Hardy MR said:

"To disparage a trader's goods which is often (though inaccurately) spoken of as a trade libel, does not give grounds for an action of libel, although, if special damage is proved, the plaintiff may recover in an action on the case. On the other hand, the words used, though directly disparaging goods, may also impute such carelessness, misconduct, or want of skill, in the conduct of his business by the trader as to justify an action of libel."

In considering any statement alleged to amount to a slander of goods it is necessary to distinguish what may constitute a false statement about another's goods and that which may merely amount to what is generally referred to as a 'trader's puff, that is mere exaggeration about the qualities of one's own goods."

(n) Reliance has also been placed on the English judgment in Eastwood v. Holmes, where it has been held as follows:-

"Willes, J. - The action cannot be maintained. Assuming the article to be libellous, it is not a libel on the plaintiff: it only reflects on a class of persons dealing in such objects; and it is immaterial in this view whether they are genuine or not. If a man wrote that all lawyers were thieves, no particular lawyer could sue him unless there is something to point to the particular individual, which [350] there is not there. There is nothing to show that the article was inserted with any special reference to the plaintiff. It does not appear that the defendant knew of his existence.

But further, I am of opinion that this is no libel, for that it is protected by the privilege of fair discussion on a matter of public interest, it is not appearing that it was malicious."

(o) Reliance has also been placed on the English judgment in Bastobell Paints Limited v. BIGG, where it has been held as follows:-

"Held, refusing the injunction, (1) in the interests of freedom of speech, the courts will not restrain the publication of a defamatory statement, whether a trade libel or a personal one, where the defendant says he is going to justify it at the trial of the action, except in cases where the statement is obviously untruthful and libellous."

(p) He has also relied on the judgment of a learned Single Judge in Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd., 1996 PTC 393, to contend that once identity of the plaintiff's goods were not to be traced, then no complaint could be made by the plaintiff and an injunction could not be granted.

4. In my view the following facts are not in dispute.

(a) That the advertisement of the defendant does run down Lal Dant Manjan Powder as damaging to the tooth enamel and indeed in the reply it is stated that the advertisement is directed against the Lal Dant Manjan Powder.

(b) The plaintiff has the larger share of 80% of the Ayurvedic tooth powder market (excluding white tooth powders) of this product countrywide

5. In so far as the plea relating to Section 29(8) is concerned. Mr. Jaitely has not pressed it in view of the fact that he was not able to show that the mark is registered.

6. In the rejoinder, the plaintiff also filed studies to support its case. Both the parties are thus seeking to rely upon studies in their favor to bolster the cases in their favor. For the purposes of this application, I am disregarding the studies/reports of experts sought to be relied upon by either counsel.

7. In my view, as far as the first plea of Shri Rohtagi appearing for the defendant is concerned about there being no assertion in the plaint that the claims in the advertisement are false, the averments in paras 5, 10 and 12 and particular paras 15 & 16 of the plaint are sufficient to demonstrate that the plaintiff has termed the advertisement campaign of the defendant as dubious and deceptive and indeed without any logical or rational basis besides being factually incorrect. It is true that the study relied upon by the defendant has not been adversely commented upon in the plaint but there was no occasion to do so as the advertisement complained of does not refer to the study relied upon. Thus the plea of Shri Rohtagi that the plaintiff has not disputed the contents of the advertisement cannot be sustained.

8. Mr. Jaitely has dealt jointly with the second contention of the defendant relating to truth being a defense in an action for disparagement/slander and the third plea that general criticism of product cannot give rise to a cause of action to the plaintiff, whose product is not identified, particularly when the red container depicted in the advertisement has been offered to be dropped. He has submitted that the legal position is well settled in respect of generic disparagement. The following passages relied by him in Reckitt & Colman of India Ltd. v. M.P. Ramachandran and Anr., 1999 PTC (19) 741, a judgment of the learned Single Judge of this Court, are relevant:

"Therefore, in a suit of this nature one has to look at whether the advertisement merely puffed the product of the advertisement advertiser or in the garb of doing the same directly or indirectly contended that the product of the other trader is inferior. There cannot be any dispute that in the concerned advertisements blue was stated to be of inferior quality. Although, for having depicted the container and the price in the advertisement together it is difficult to proceed on the basis that the defendant No. 1 was not referring to Robin Blue, but assuming in the advertisement insinuations are not made against Robin Blue and the same were directed to all blues as has been stated is no uncertain terms in the affidavits, can it be said that it was not made against Robin Blue. The answer is a definite 'no', because Robin Blue is also blue.

It was sought to be contended that insinuations against all are permissible though the same may not be permissible against one particular individual. I do not accept the same for he simple reason that while saying all are bad it was being said all and everyone is made and anyone titting the description of everyone is affected thereby."

The judgment of a Single Judge of this Court in Dabur India Limited v. Emami Limited in IA No. 2124/2004 in CS(OS) No. 433/2004 has also been relied upon. The following passages are relevant:

"In my considered opinion, even if there be no direct reference to the product of the Plaintiff and only a reference is made to the entire class of Chayawanprash in its generic sense, even in those circumstances disparagement is possible. There is insinuation against user of chayawanprash during the summer months, in the advertisement in question, for Dabur Chayawanprash is also a Chayawanprash as against which disparagement is made. To the same effect is the judgment of Calcutta High Court in RECKITT & COLMAN OF INDIA LIMITED v. M.P. RAMACHANDRAN AND ANR. (supra)."

.....

9. In my considered opinion, when the Defendant is propagating in the advertisement that there should be no consumption of Chayawanprash during the summer months, it is also propagating that the Plaintiff's Chayawanprash should not also be taken during the summer months as it is not good for health and instead Amritprash, which is the Defendant's product, should be taken. Such an advertisement is clearly disparaging to the product of the Plaintiff as there is an element of insinuation present in the said advertisement."

Reliance has also been placed on judgment in Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr., 2003 (27) PTC 305 (Del)(DB) . The following passages are relevant:

"16. After analysing the submissions made by the counsel for the parties, the picture which emerges can be summed up thus; it is now a settled law that mere puffing of goods is not actionable. Tradesman can say his goods are best or better. But by comparison the tradesman cannot slander nor defame the goods of the competitor nor can call it bad or inferior. It has been so held in the following cases:

(i) Hindustan Lever v. Colgate Palmolive (I) Ltd., .

(ii) Reckitt & Colman of India Ltd. v. M.P. Ramachandran and Anr., 1999 PTC (19) 741.

(iii) Reckitt & colman of India v. Kiwi TTK Ltd., 1996 PTC (16) 393.

17. By calling the Cola drink of the appellants "Yeh Bachhon Wali Hai, Bachon Ko Yeh Pasand Aayegi". "Wrong Choice Baby", the respondents depicted the commercial in a derogatory and mocking manner. It can't be called puffing up. Repeatedly telecasting this commercial will leave an impression on the mind of the viewers that product of the appellant i.e. "PEPSI" is simply a sweet thing nor meant for grown up or growing children. If they choose PEPSI, it would be a wrong choice. The message is that kids who want to grow should not drink "PEPSI". They should grow up with "Thums UP". The manner in which this message is conveyed does show disparagement of the appellant's product."

Reliance was also placed upon paragraph 16 of Wander Ltd. and Anr. v. Antox India P. Ltd., reported as 1990, SUPP. SCC 727 which reads as under:-

"16. An infringement action is available where there is violation of specific product right acquired under and recognised by the statute. In a passing-off action, however, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves in misrepresentation made by a trader to his prospective customs calculated to injure, as a reasonably forseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader. Speaking of the legal clarification of this form of action, Lord Diplock said:

"Unfair trading as a wrong actionable at the suit of other traders who thereby suffer loss of business or goodwill may take a variety of forms, to some of which separate labels have become attached in English law. Conspiracy to injured a person in his trade or business is one, slander of goods another, but most protean is that which is generally and nowadays, perhaps misleadingly, described as "passing-off". The form that unfair trading takes will alter with the ways in which trade is carried on and business reputation and goodwill acquired. Emerson's maker of the better mousetrap if secluded in his house built in the woods would today be unlikely to find a path beaten to his door in the absence of a costly advertising campaign to acquaint the public with the excellence of his wares."

9. Without at this stage going into the controversy whether Lal Dant Manjan referred to in the advertisement is that of the plaintiff, the plaintiff is certainly entitled to complain as it is one of the largest producers of such tooth powder. Furthermore, the plea of Mr. Rohtagi that in order to praise its product it can describe as inferior and damaging the generic Lal Dant Manjan is not acceptable as it runs counter to the principles of law laid down in two judgments of learned Single Judges of this Court in Reckitt Coleman (supra) and Dabur India (supra).

10. Prima facie, I am of the view that the offending advertisement is clearly covered by the fourth principle set out in the two judgments of Single Judges of this Court noted above. Slandering of a rival product as bad is not permissible. I respectfully agree with the views of the two Single Judges and indeed am bound by such decisions.

11. According to the counsel for the plaintiff, a learned Single Judge in Dabur India (supra) has followed the Calcutta High Court judgment in Reckitt Coleman (supra) and specifically held that a generic disparagement would entitle even a plaintiff with 12% market share to complain and the present plaintiff with 80% share of the market of the decried generic product is thus entitle to impugn advertisements which disparage the generic product.

12. In my view the law relating to generic disparagement of a specified commodity and the entitlement of one of such unidentified manufacture of such decried product is settled by Dabur's judgment following the Reckitt Coleman judgment. The Dabur's judgment (supra) indeed in paragraph 9 refers specifically to and prescribes generic disparagement.

13. While Mr. Rohtagi is right in submitting that the generic disparagement was not to be found in the judgment of the learned Single Judge in Reckitt & Coleman's case (supra) which was followed in Dabur's case, yet I am of the view that the position of law about generic disparagement in Dabur's case was not only justified but also warranted. Even if the ratio of the two learned Single Judge's judgments of this Court is considered to be only in respect of an identified product, in principle there is no reason why the manufacturer of a disparaged product, which though not identified by name, cannot complain of and seek to injunct such disparagement.

14. The meaning in Black's Law dictionary which defines disparagement as a false and injurious statement damaging the other parties' reputation does not help the defendant. The statement of law in Salmond on torts extracted above also does not come to the aid of the defendant as it permits puffing up. Similarly Carter Ruck on Libel and Slander is a statement of law differentiating the scope of slander and libel in English la.w Even if the statement in Carter Ruck is accepted it permits trade libel though even there on special damages being proved damages are payable. Similarly the position of law in Bestobell paints may support the defendant's plea prima facie, but even in the said decision injunction could be granted for an obviously untruthful and a libelious statement.

15. However, rather than analyzing the effect of material relied upon as extracted in the above paragraph, my task is much simpler as the judgment of Dabur India in my view clearly covers the issue of generic disparagement of a rival trade product and applies to the present case.

16. Mr. Rohtagi had also referred to the defendant's additional affidavit an earlier and similar advertisement campaign by it which led to correspondence between the parties in 1998 when upon the defendant asserting that there was no disparagement of the Dabur Lal Dant Manjan powder, the plaintiff abandoned its stance. It was submitted that since similar issues inter alia involving reliance on the study now relied by the plaintiff in the rejoinder were raised in 1998, the plaintiff cannot now raise such issues again by relying upon such studies.

17. I am of the view that the 1998 advertisement campaign and the correspondence then exchanged does not have any material bearing on the present issue, because the complaint in the plaint is about a recent campaign run on the visual media and there cannot be estoppel or laches derivable from correspondence of the previous campaign of 1998.

18. I am also not dealing with the plea of the defendant that the action at best ought to have been taken under the MRTP Act by the defendant, in similar situation of disparaging advertisements about rival products this Court has already laid down the law in Reckitt Coleman and Dabur India Ltd. (supra).

19. I am further of the view that generic disparagement of a rival product without specifically identifying or pin pointing the rival product is equally objectionable. Clever advertising can indeed hit a rival product without specifically referring to it. No one can disparage a class or genere of a product within which a complaining plaintiff falls and raise a defense that the plaintiff has not been specifically identified. In this context the plaintiff has rightly rejected the offer of the defendant to drop the container from its advertisement so as to avoid the averred identification of the plaintiff's product. I must also deal with a English judgment of Willes J relied upon the counsel for the defendant (for which no citation is indicated), the entire reasoning of which reads as under:-

"Willes, J. - The action cannot be maintained. Assuming the article to be libellous, it is not a libel on the plaintiff; it only reflects on a class of persons dealing in such objects; and it is immaterial in this view whether they are genuine or not. If a man wrote that all lawyers were thieves, no particular lawyer could sue him unless there is something to point to the particular individual, which [350] there is not there. There is nothing to show that the article was inserted with any special reference to the plaintiff. It does not appear that the defendant knew of his existence.

But further, I am of opinion that this is no libel, for that it is protected by the privilege of fair discussion on a matter of public interest, it is not appearing that it was malicious."

With the greatest respect to the reasons said to be contained in the above English judgment, I totally disagree with the view of Willes J. for the following reasons:

(a) It deals with libel and not a commercial advertisement.

(b) It contains no worthwhile reasons.

(c) English Judgments are not binding on me particularly when Dabur India's judgment (supra) of a learned Single Judge covers the issue.

(d) It proceeds on the footing that the defendant was not aware of the plaintiff's existence.

20. The practice of undue obcisance to English jurisprudence without any thought to the merit and reasoning of such judicial wisdom should also be discouraged. When there is a judgment of Hon'ble Justice Dr. M.K. Sharma directly on the point of generic disparagement, I see no reason why one should travel westwards for seeking enlightenment. Similarly on the question of rival product disparagement the Division Bench of this Court in Pepsi Co. (supra) has also held that defamation of the product of a rival manufacturer can not be done. Undeniably it is not the puffing up of the defendant's product i.e. the Colgate Tooth powder which can be found objectionable but the running down of a rival product which is the situation in the present case.

21. The advertisement campaign on the visual media has an immediate impact on the viewers and possible purchaser's mind particularly when a well known cinestar is endorsing it. The plaintiff has thus made out a prima facie case of comparative strength particularly when the defendant does not deny that its campaign points out the deleterious effect of Lal Dant Manjan powder. The balance of convenience is also in the favor of the plaintiff as the effect of the advertisement aired cannot be repaired readily and easily. The averred right of the defendant to inform the purchasing public of the ill effects of the Lal Dant Manjan powder based on its commissioned study cannot tilt the balance of convenience in the favor of the defendant particularly when the plaintiff also seeks to rely upon studies commissioned by it to back up the merits of its product. Consequently, the non grant of an interim injunction would cause irreparable injury to the plaintiff not compensable in damages.

22. Consequently, the plaintiff is entitled to an injunction and accordingly the defendants are restrained from telecasting the TV commercial "Colgate Tooth Powder" as depicted in Annexure 'A' to the plaint.

23. The interim relief application stands disposed of accordingly.