Calcutta High Court
Unilever Industries Private Limited ... vs Naresh Gehani And Ors on 18 April, 2023
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OCD-10
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
[COMMERCIAL DIVISION]
IA NO. GA/1/2023
In CS/66/2023
UNILEVER INDUSTRIES PRIVATE LIMITED AND ORS.
Vs
NARESH GEHANI AND ORS.
BEFORE:
The Hon'ble JUSTICE RAVI KRISHAN KAPUR
Date : 18th April, 2023
Appearance:
Mr. S. N. Mookherjee, Sr. Adv.
Mr. Ratnanko Banerji, Sr. Adv.
Mr. Soumya Ray Chowdhury, Adv.
Mr. Arunabha Deb, Adv.
Ms. Ashika Daga, Adv.
Mr. Jishnujit Roy, Adv.
Ms. Deepti Pariya, Adv.
..for the petitioners.
The Court:-
1. This is a suit for protection of the intellectual property rights of the
petitioners.
2. The petitioners are one of the largest manufacturers and distributors of
Fast Moving Consumer Goods. The goods and products manufactured,
sold and distributed by the petitioners enjoy a high reputation and are
valued internationally by consumers.
3. The petitioner no.4 is a wholly owned subsidiary of the petitioner no.2. As
part of an internal re-organization, the intellectual property rights
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including trademarks in India relating to its nutrition and ice cream
business have been assigned by the petitioner no.2 to the petitioner no.4.
Moreover, the petitioner no.2 has also assigned the beneficial interest in
the corporate Unilever Logo to the petitioner no.4 for use in India. The
petitioner no.3 has also acquired both statutory and common law rights in
relation to the trading names "Hindustan Unilever", "Hindustan Unilever
Limited" and "HUL" and is entitled to exclusive use of the same in relation
to their goods.
4. The subject matter of the suit pertains to frozen desserts. The frozen
desserts sold, manufactured and distributed by the petitioner no.3 are
available in India under several popular brands namely "Cornetto" and
"Feast". Both these products are marketed under the umbrella trade mark
"Kwality Walls" belonging to the petitioners. Since March 1997, the
petitioner no.3 has been continuously and exclusively using the trademark
"Kwality Walls" as a composite mark logo with the registered trademarks
being the International Heart Logo and the Corporate Unilever Logo also in
respect of ice-creams and frozen desserts. The petitioner no.1 is also the
registered proprietor and subsequent assignee of the "Kwality" trademarks
which have been licensed to petitioner no.3 for use in India in relation to
ice-creams and frozen desserts. With the passage of time, the products of
the petitioner no.3 and their brands have and still enjoy immense
reputation and goodwill.
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5. Frozen desserts and ice-cream products in India are being sold by the
petitioners for more than twenty years in a number of flavours and
formats. The petitioners have also obtained registration pertaining to its
products and quality with the corporate Unilever Logo and variants of the
International Heart Logo. The particulars of the registration under the
Trademarks Act 1999 (the Act) which are valid and subsisting and have
been continuously and uninterruptedly enjoyed by the petitioners are
morefully enumerated in the petition. The petitioners not only have a
substantial turnover in selling the products under the name of "Kwality
Walls" but have also spent extensively in advertising their products.
6. It is contended that dairy based products are also classified under the
Food Safety & Standards (Food Products Standards and Food Additives)
Regulation, 2011. In fact, frozen desserts are now a category of food
products under the Food Safety and Standards (Food Product Standards
and Food Additives) Regulation, 2011 (FSSAI Regulations). In
manufacturing frozen desserts, the petitioner follows the highest
nutritional standards which are based on globally recognized dietary
guidelines namely World Health Organization (WHO) and Food and
Agriculture Organization of UN (FAO). It is further contended that all the
frozen desserts of the petitioners strictly comply with the provisions of the
FSSAI and Rules and Regulations framed thereunder and appropriate
recognition of such Guidelines is provided for in the packaging labels of
their products.
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7. The respondent nos.1 to 11 are social media influencers with huge public
following on their social media platforms such as Instagram (respondent no.12), Twitter (respondent no.13), You Tube (respondent no.14) owned and managed by the Respondent no.15), one Moj App (hosted, owned, managed and controlled by the respondent no.16) and Linkedln (respondent no.17, owned and managed by respondent no.18). The posts/videos by the respondent nos.1 to 11 are viewed globally. The respondent nos.12 to 14, 16 and 17 are the social media platforms on which the respondent nos.1 to 11 have posted/uploaded the impugned videos which from the subject matter of this suit.
8. For the sake of convenience, a chart summarizing the details of the impugned videos created and published by the respondent nos.1 to 11 alongwith the platforms wherein the same are published and broadcast set out hereinbelow:
SL NAME OF PLATFORM FOLLOWERS USER VIDEO VIEWS AND . THE (AS ON NAME, UPLOADED ON COMMENTS (AS No CREATOR APRIL 13, EMAIL ID ON APRIL 13, . 2023 (IF 2023) AVAILABL E) AND CONTACT NO. (IF AVAILABL E)
1. Naresh Gehani Instagram 24,600 @NareshG March 23 on 1,65,00,000 (Defendant (Defendant No. followers ehanil Instagram views and No. 1) 12), Twitter on contactn and YouTube 2441 (Defendant No. 13) Instagram, areshgeh comments on and YouTube 29 ani@gmai March 28, Instagram (Defendant No. 14 followers l.com 2023 on owned, managed and on Twitter Twitter controlled by and 451 Defendant No. 15) followers on YouTube 5
2. Simrun Chopra Instagram 6,79,000 @simrun. March 15, 1,05,00,000 (Defendant (Defendant No.12) followers chopra 2023 views and No.2) 1360 support@ comments simrunch opra.com
3. AdithyaNatara Instagram 3,05,000 @learnwi March 18, 1,86,00,000 j (Defendant (Defendant No.12) followers th 2023 views and No.3) adithya 3756 comments helloadi thy anataraj @gmail.c om
4. Jist News Instagram 5,10,000 @jist.ne April 2, 1,85,000 (Defedant No. (Defendant No.12) followers ws 2023 views and 55
4) through comments Rishi Pratim hello@ji Mukherjee, st.news CEO of Jist News (Defendant No. 5) GokulSoundara Instagram 7893 @gokulso March 30, 1,32,000
5. rajan (Defendant No.12) followers undarara 2023 views and 23 (Defendant jan comments No. 6) Email id could not be traced.
6. Rakesh Instagram 32,400 @foodie_ March 19, 63,500 views (Defendant (Defendant No.12) followers wala_ 2023 and 14 No.7) comments Email Id not traced
7. Name could Instagram 34,600 @foodtec March 18, 23,900 views not be traced (Defendant No. 12) followers hsociety 2023 and 10 (Defendant foodtech comments No. *) societyi nfo@gmai l.com
8. Name could Instagram 5436 @bright_ March 21, 13,00,000 not traced (Defendant No. 11) followers ups 2023 views and 63 (Defendant Brightup comments No. 9) s2023@gm ail.com 6
9. Akshay A Instagram 3,46,000 @imdicap March 22, 9,15,000 (Defendant (Defendant No.12), followers scoop 2023 views on No. 10) YouTube (Defendant on Instagram No.14 owned, Instagram Akshayno and 214 managed and ne999@gm comments controlled by 3,63,000 ail.com Defendant No.15) followers 4,65,000 and Moj App on YouTube views and (Defendant No.16) 239 comments 2,50,000 on YouTube followers on Moj App 78,000 views and 5 comments on Moj App 10 Pariksha Rao LinkedIn 6000 Care@nuw Sometime 57 comments (Defendant (Defendant No. 17) followers e.ai around N.B. the No.11) March, 2023 same has been re-
shared multiple times.
9. It is alleged that in or about end of March, 2023 the petitioners had come to learn that the respondent nos.1 to 11 have started a negative campaign which is being run against frozen desserts marketed and sold by the petitioners under the registered trademarks "Walls", "Hindustan Unilever"
and the multiple trademarks containing "Kwality" including the brands inter-alia such as "Cornetto", "So Alphanso Mango Frozen Dessert" and "Shameless Vanilla" which exclusively relate to and are easily identifiable with the petitioners.
10. It is further contended that each one of the impugned videos are false, misleading, malicious and rubbishes the petitioners' frozen desserts products directly and brazenly. The products of the petitioners in each of the impugned videos/posts are shown in bad light and the consumers are asked not to purchase the petitioners' frozen desserts. In particular, the 7 impugned videos not only differentiate between ice-cream and frozen desserts but also suggest and make direct references to the fact that frozen desserts sold by the petitioners are not good for health and contribute to heart diseases, auto immune diseases, neurodegenerative diseases and cancer. It is also contended that there is misleading information sought to be disseminated in respect of the ingredients for manufacturing frozen desserts. In particular, it is suggested that in garb of manufacturing frozen desserts the petitioners are actually selling palm oil and making consumers believe that the same is ice-cream. The underlying intent behind each of the impugned videos is directed against the frozen desserts manufactured by the petitioners. It is also alleged that the impugned videos/posts by the respondent nos.1 to 11 have deliberately, knowingly and with malicious intent generated a fear psychosis amongst consumers about the entire frozen desserts category and are trying to make viewers and consumers believe that the frozen desserts marketed and sold by the petitioners are unsafe, dangerous and unhealthy. It is also contended that in airing, publishing and broadcasting the impugned videos the respondent nos.1 to 11 have acted in an irresponsible manner. It is alleged that the respondent nos.1 to 11 are unqualified to make any such assertion which they seek to do by way of the impugned videos/posts. It is further contended that in airing and publishing/telecasting impugned videos the respondent nos.1 to 11 had 8 perpetrated fraud, tarnished and disparaged the frozen desserts marketed and sold by the petitioners.
11. For the sake of convenience, section 29(8) and (9) of the Act provides as follows:
(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) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
12. On a plain reading, sub-clause (8) of section 29 of the Act stipulates the circumstances when advertising of a registered trade mark would constitute infringement. Advertising of a trade mark to take unfair advantage of, or against the honest commercial practices or which is detrimental to the distinctive character or which is against the reputation of the trade mark shall constitute an infringement. Sub-clause (9) stipulates that where the distinctive element of a registered trade mark consists of words, the spoken use of such words as well as visual representation for promoting the sale of goods or promotion of service would constitute infringement.
13. Prima facie, the impugned videos/posts are detrimental to the distinctive character and reputation of the trademark belonging to the petitioners and impinge on their legitimate interests as owners of their trademark. Moreover, the impugned videos and posts involve unauthorized use of the 9 registered trademark of the petitioners thereby attracting infringement under section 29 of the Act.
14. I find that each of the impugned videos and/or broadcast, published and telecasted by the respondent nos.1 to 11 in the platform of the respondent nos.12 to 19 directly refer to the petitioners and the frozen desserts manufactured, sold and distributed by them. The unauthorized use of the packaging, label and logo of the petitioners' product in each of the impugned videos/posts violates the trade mark protection afforded and being enjoyed by the petitioners.
15. Health and Wellness influencers are a modern day reality. Article 19(1) of the Constitution guarantees freedom of speech and expression. The restriction to free speech, expression, views and opinion is only to the limited extent as enshrined in Article 19(2) of the Constitution. It is also well recognized that freedom of speech is not an absolute and unrestricted right. The rival balancing interests which have to be taken into account in matters such as this are the interests of the consumers and the public to be made aware against the right of the petitioners to seek protection of their intellectual property rights.
16. Prima facie at an ad interim stage even though the underlying intent of each of the impugned videos may or may not be objectionable, nevertheless in making a clear, direct and brazen reference to the petitioners and their product i.e frozen desserts, the Rubicon has been crossed. The products of the petitioners and the petitioners have been 10 identified, named and targeted directly. Undoubtedly, frozen desserts sold by the petitioners by name are shown in poor light and are also depicted to be harmful and dangerous to health. This is impermissible.
17. In such circumstances, the petitioners have been able to make out a strong prima facie case on merits. The balance of convenience and irreparable injury is also in favour of orders being passed as prayed for herein.
18. In view of the aforesaid, the respondent nos.1 to 11 are permitted to telecast, broadcast or disseminate the impugned videos only after removing the offending portion in each of the videos/posts which make any reference to the petitioners or the frozen desserts being manufactured, sold and distributed by them. The respondent nos.1 to 11 and each of them are also restrained from making use of the trademark, trade dress, packaging logo and lables of the petitioners or any of their products in any manner whatsoever. The respondent nos.1 to 11 are directed to carry out the aforesaid changes within a period of seven days from the date of communication of this order. In default, appropriate orders would be passed on the respondent nos.12 to 18 to block each of the impugned videos if necessary.
19. The petitioners are directed to forthwith effect service of this order and a copy of the petition including the Compilation filed in Court today on all the respondents by e-mail or otherwise and file an Affidavit of Service on the returnable date.
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20. In view of the urgency pleaded by the petitioners and the incalculable damage which is caused in such matters by the impugned videos/posts the petitioners were granted liberty to proceed ex parte.
21. Let this matter appear for further hearing on 26 April, 2023 under the heading "New Motion".
(RAVI KRISHAN KAPUR, J.) D.Ghosh