Calcutta High Court
Procter And Gamble Home Products ... vs Hindustan Unilever Limited on 5 March, 2010
Author: Patherya
Bench: Patherya
G.A. No. 614 of 2010
C.S.NO.43 OF 2010
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
PROCTER AND GAMBLE HOME PRODUCTS LIMITED & ANR.
Versus
HINDUSTAN UNILEVER LIMITED
BEFORE:
The Hon'ble JUSTICE PATHERYA
Date : 5th March, 2010.
For the Petitioner:
MR. S.K. KAPOOR, MR. RANJAN DEB, MR.
S.N.MOOKHERJEE, SENIOR ADVOCATES WITH
MR. RANJAN BACHWAT, MR. RAVI KAPOOR, ADVOCATES.
For the Respondent:
MR. ANINDYA MITRA, MR. S. MITRA, SENIOR ADVOCATES WITH MR. HIMANGSHU KANE, MR. ABHRAJIT MITRA, MR. ARIJIT BANERJEE, MR. DEBNATH GHOSH, MS. NEELINA CHATTERJEE, MR. D. BHATTACHARYA, MR. S. ROY CHOWDHURY, MR. S. GANGULI, ADVOCATES.
The Court : In a suit for malicious slander of goods, i.e., disparagement and infringement of the 1999 Act and Copyright Act, this application has been filed for interim reliefs. 2
The petitioner has been assigned the registered trademark in the label "Tide" along with the artistic works by the petitioner no.2. Therefore, it is entitled to and has the exclusive right to use the label "Tide" and the artistic works therein. The respondent by display of advertisement in television channels has disparaged its goods. The first of such advertisements appeared on 26th February, 2010 and the suit has been filed without any delay on 3rd March, 2010. Reliance has been placed on Sections 51 and 14(c)(ii) of the Copyright Act and Sections 29(6)(d), 7 and 8 of the 1999 Act. Reliance has also been placed on 24 PTC 1; 2007 (2) CHN 44 and 2009 (2) CHN 479.
The respondent by not only comparing the product of the petitioner with its own product has in effect projected that its goods are better than that of the petitioner no.1 and in doing so, has rubbished the goods of the petitioner. The comparison does not stop at puffing its products, but goes a step ahead and rubbishes the product of the petitioner no.1. Therefore, the case of disparagement has been made out and restraint order be passed.
Counsel for the respondent opposing the said petitioner submits that the case made out in the advertisement is one of more "safedi" (whiteness). In the petition filed in the Madras High Court by the respondent an interim order was passed on 25th February, 2010. In the 3 vacating application filed by the petitioner herein the story-board which is the subject-matter of the instant suit is a ground for vacating the interim order passed. In fact, in paragraph 5 of the petition in the Calcutta suit, it has been admitted that the impugned advertisement is the subject-matter of the Madras proceedings. Therefore, no order ought to be passed on this application as the same amounts to unfair practice and forum shopping. The matter has been fixed by the Madras High Court on 5th March, 2010 and there may be conflict of decision. As the option was exercised by the petitioner on 1st March, 2010 to have the matter heard by the Madras High Court, this application ought not to be entertained by this Court and no order passed. In fact, on the grounds of suppression the application is liable to be dismissed. For the said proposition reliance is placed on 2004 (1) CHN 448.
The complaint in the plaint is with regard to the quality of the petitioner's product, in particular "whiteness" thereof. That the "whiteness" provided by Rin is better, can be proved from the laboratory test not only of the respondent but also independent agencies. Therefore, the defence of truth is an absolute defence. The products of both the petitioner and the respondent are detergents. Both are intended to clean clothes. The comparison is restricted to the "whiteness" provided by the respondent's product due to the chemical fluoresces. This, therefore, is 4 comparative advertising and cannot tantamount to infringement of trademark. In fact, under the licence given to the petitioner no.1 by the petitioner no.2 the trademark is not covered. The pleading in respect of Copyright is also vague. The comparison is only for the information of Rin users. "Natural" is not a registered label mark. Therefore, Section 28 of the 1999 Act can have no application. It is the contents of the package which is identified and in respect of which comparison is drawn. As the certificate annexed to the pleadings has been issued in form 0.2 the said documents cannot be relied on in legal proceedings. The defence under Section 52(u)(ii) of the Copyright Act is available to the respondent, therefore, there is no infringement of the Copyright Act.
As three causes of action have been joined together the plaint suffers from mis-joinder of causes of action and the suit is liable to be dismissed.
Reliance has been placed on 1998 FSR 383. Out of the many tests that have been laid down comparative advertising is permitted. The "whiteness" claimed by the respondent can be substantiated and reliance has been placed on a comparative chart. In the event, it is held that Section 29 (8)(c) of the 1999 Act is applicable then the defence under Section 30(i)(a) of the 1999 Act will come to the aid of the respondent. 5
Reliance is placed on 2001 FSR 32; AIR 1928 Cal 1; 26 PTC 535; 1998 FSR 9 and 1989 (3) SCC 251 for the proposition that the falsity alleged must be malicious and truth is an absolute defence which justification will not entitle the petitioner to an interim order, as there has also been no violation of the 1999 Act. The cases cited by the petitioner are distinguishable as in 2007 (2) CHN 44 and 2009 (2) CHN 479, no defence of justification by adverting to truth was taken.
24 PTC 1 was a case of passing off and sets out the circumstance in which an interim order is to be granted.
In the unreported decision passed in G.A.No.243 of 2010 (Hindustan Uniliver Limited Vs. Procter & Gamble Home Products Limited & Anr.) no interim order was granted as no economic injury was alleged. In the instant proceeding also no economic injury has been alleged although a claim for Rs.100 crores has been made. Therefore, this application does not merit any order. The guidelines for self regulation in advertising is contained in a code of the Advertising Council of India which specifies the standards of conduct one of them being that the advertisement must be truthful and permits competitive advertising provided the comparison is factual, accurate and capable of substantiation. The advertisement of the respondent is one such advertisement. This is another factor for non grant of any interim order on this application.
6
Counsel for the petitioners, in reply, submits that disparagement is writ large in the advertisement right from the first to the last frame. It is "Tide" to which reference has been made not "Tide Naturals". In fact, the respondent has suppressed the proceedings pending before the Council. Justification is no defence in the case of disparagement. Justification can only be a defence in cases of infringement under the Trade Marks Act. All the cases of the United Kingdom relied on by the respondent involve brochure or newspaper but not the electronic media. Competitive advertising is permissible under the Trade Marks Act so also the defence of truth is justifiable. This cannot hold good in the instant case which is basically a case of disparagement. Although competitive data has been placed before court such data has not been shown in the advertisement. As the case of disparagement has not been met by the respondent restraint orders be passed.
Having considered the submissions of the parties, although the petitioners have sought for restraint orders on account of infringement of copyright and infringement of trademark but the relief, which requires to be addressed, is disparagement. Disparagement is not dependent on the trade marks act or on the copyright act but depends on whether the product of the competitor is being rubbished or proclaimed bad, vis-à-vis the product of the advertiser. Such disparagement is alleged in an 7 advertisement, whose storyboard has been annexed to the petition. Frame 2 of the storyboard shows two baskets. In each of the baskets there is a packet of "Rin" and "Tide Naturals". In Frame 4, the Tide woman is heard to say "Tide Hai" followed by Tide has not only "khushbu" (fragrance) but also "safedi" (whiteness). In Frame 7, a child is shown getting out of the bus, who after a few second is followed by another child, whose shirt is whiter than that of the first child. It is after this child alights from the bus that "Tide se kahi behtar safedi de Rin" is heard and along with this voice over two shirts are depicted side by side one of them with the packet of Tide of it and the other with Rin. It is depiction of the child in the dull shirt followed by the shirt kept side by side one of which is dull while the other shirt is sparkling white which is objectionable. This is further aggravated by the Tide packet being imposed on the said dull shirt as by the said it is depicted that shirts washed by Tide remain dull while those washed by Rin acquired sparkling whiteness. In the sequence of the frames the attribution of dullness to the Tide shirt becomes clear when the packet of "Tide" is put on the dull shirt.
The respondent through its council submitted that it was agreeable to highlight the whiteness of the dull shirt on which the packet Tide appeared. In fact, the dull shirt was sought to be improved with a brighter and whiter shirt and the same was placed before Court. The said 8 was not accepted as the degree of whiteness could always be questioned and could lead to multiplicity of proceedings. In order to avoid such multiplicity of proceedings a suggestion was made by court that the packet of the petitioners be removed from the dull shirt, which suggestion was accepted graciously by the respondent.
As the media chosen by the respondent is electronic by satellite channel which has a very strong impact because of it being visual and reaching out to millions of people in this modern age. This is not a case of mere puffing its products by the respondent. Both the advertiser and the competitor deal in detergents and while saying the goods of the advertiser are better than its competitors, the competitor's goods cannot be proclaimed bad or rubbished by the said advertisement. There is no bar to comparative advertising but when such comparative advertising tends to denigrate the product of the advertiser vis-a-vis the product of a competitor, this is where the element of disparagement enters.
Although in Frame 2 a packet of Tide Naturals has been shown but in the voice over the Tide lady speaks of only the product "Tide" and since then it is only in respect of such product that the advertisement continues. Even when the two shirts are put side by side both of them with their respective packets of detergent the voice over speaks only of "Tide" and does not speak of "Tide Naturals" although the packet of "Tide 9 Naturals" is depicted. Even if the dull shirt with the Tide packet is removed without the removal of the voice over - "Tide se kahi behtar safedi de Rin" - the advertisement visually will have a negative impact vis-a-vis the dull shirt which can be associated only with the Tide lady's child who is shown approaching his mother and not the Rin boy or his mother. Therefore, the connection between the Tide lady and the dull shirt child is evident.
In fact, at the time of hearing, by an affidavit affirmed by Gurpreet Kohli on 4th March, 2010 various laboratory tests have been disclosed. By a further affidavit of 5th March, 2010, certain documents were sought to be incorporated by another affidavit and on a reading of both the affidavits and the comparative charts disclosed therein it shows that samples not only of "Tide Naturals" was taken but also of "Tide" and comparison drawn. In argument it has been submitted on behalf of the respondent that the comparison is only being drawn with "Tide Naturals"
and not "Tide" but in the voice over the reference is only to "Tide". The comparative list is also not depicted in the advertisement and is another factor to entitle the petitioner to an order in terms of prayer (d) of the Notice of Motion till 12 weeks.
The cases cited by the respondent cannot be accepted at this stage as these are all cases of infringement of trademarks and not cases of disparagement. The said cases are based on the trade marks Act 10 of 1994 of the United Kingdom which permits comparative advertising. This issue is not being decided at this stage and the only issue on the basis of which the order has been passed this day is disparagement.
Although the issue of forum shopping and proceedings pending before the Madras High Court was argued, which proceeding has been initiated by the respondent in respect of the word "naturals" affixed to the word "Tide". Orders have been passed and varied. By its order dated 01-3-2010 the learned Judge of the Madras High Court has recorded that it will be open for the respondent therein to take necessary steps. Such steps has been taken by filing the instant proceeding before this court. The causes of action in both proceedings are distinct and separate and, therefore, does not disentitle this Court from entertaining the said proceeding.
The decision reported in 26 PTC 535 proceeds on the basis that the statements made were true and could be taken as a complete defence. The said finding was reached after filing of affidavits. Such is not the case here as affidavits are awaited.
Directions are given or filing affidavits. Affidavit in opposition within four weeks from date; reply thereto, if any, within two weeks thereafter. Matter to appear in the list eight weeks hence. 11
Formal service of Notice of Motion is waved as the respondent has been heard at length and affidavits have also been filed and kept on record.
The concession made by counsel for the respondent is without prejudice to its contentions recorded earlier and was only for the purposes of the interim order to be passed.
Prayer for stay made is considered and the order only for purposes of communicating this order passed this day is stayed till 8-3- 2010.
This, however, will not entitle the respondent to adopt a more aggressive method or increase of frequency of advertisement.
The Pen drive of the advertisement be kept on record in a sealed cover.
All parties concerned are to act on a photostat signed copy of this order on the usual undertakings.
( PATHERYA, J.) sb/pkd.
Assistant Registrar(C.R.)