Calcutta High Court
Reckitt Benckiser (India) Ltd vs Hindustan Unilever Ltd on 14 March, 2014
Author: Ashim Kumar Banerjee
Bench: Ashim Kumar Banerjee
Form No. J.(2)
IN THE HIGH COURT AT CALCUTTA
Civil Appellate Jurisdiction
Original Side
Present :
The Hon'ble Mr. Justice Ashim Kumar Banerjee
And
The Hon'ble Mr. Justice Arijit Banerjee
A.P.O. No. 352 of 2013
C.S. No. 87 of 2013
And
A.P.O. No. 353 of 2013
C.S. No. 56 of 2013
Reckitt Benckiser (India) Ltd.
Vs.
Hindustan Unilever Ltd.
AND
A.P.O. No. 7 of 2014
C.S. No. 92 of 2013
AND
A.P.O. No. 8 of 2014
C.S. No. 90 of 2013
Hindustan Unilever Ltd.
Vs.
Reckitt Benckiser (India) Ltd.
For Reckitt Benckiser India Limited : Mr. C.M. Lal, Advocate
Ms. Nancy Roy, Advocate
Mr. Sayantan Bose, Advocate
Mr. Partha Basu, Advocate
Mr. Sudhakar Prasad, Advocate
For Hindustan Unilever Limited : Mr.Pratap Chatterjee, Senior Advocate
Mr. S.N. Mookherjee, Senior Advocate
Mr. Debnath Ghosh, Advocate
Ms. Anshumala Bansal, Advocate
Heard on : January 16, 30, 31, 2014 and
February 11, 13, 19, 2014
Judgment on : March 14, 2014
ASHIM KUMAR BANERJEE, J.
CAUSE THAT GAVE RISE TO THE CONTROVERSY:
The parties filed suits against each other objecting to the advertisement that according to them was an act of disparagement. There are altogether four suits being C.S. Nos. 56, 87, 90 and 92 of 2013. Hindustan Unilever Ltd. filed the first two suits whereas Reckitt Benckiser India Ltd. filed the other two. The products involved are Dettol antiseptic liquid, Lifebuoy bath soap, Vim cleansing liquid and Dettol cleansing liquid. Dettol antiseptic liquid was a drug within the meaning of Drug and Cosmetics Act and Lifebuoy soap would operate in the bathing field. The two liquids of the rival companies would, however, operate in the same field that is cleaning of the utensils. Four advertisements would be as under:
First one was an advertisement in a print media where we find, Dettol Healthy Kitchen Gel would claim 100 per cent more germ killing effect. Dettol is a product of Reckitt Benckiser India Ltd.. Hindustan Unilever Ltd. would object to the advertisement as it shows a white plate vertically divided into two halves, a magnifying glass would find lot of germs in a clean half where "leading dish wash" was used whereas the other half cleaned by Dettol liquid would have only one germ. Vim was not shown, however, Hindustan Unilever Ltd. would object to the word "leading dish wash".
Advertisement No. 2 would also relate to Dettol that would compare a new Dettol that improved its efficiency to kill germs that would be 100 per cent better. This advertisement would relate to C.S. No. 56, concerning a television advertisement almost similar to the first advertisement as above. The only difference would be a bottle of yellow liquid with the mark Vim was introduced to show the half part of the plate was cleaned that had the use of Dettol whereas the other part cleaned by Vim would have many black marks.
Reckitt Benckiser India Ltd. objected those two advertisements and filed two suits as above.
The third and fourth advertisement would relate to Lifebuoy soap and Vim, the third one would have a comparison between the Lifebuoy soap and the Dettol antiseptic liquid. On the left hand of the advertisement Lifebuoy soap was kept whereas on the right hand a bucket filled with water was shown where Dettol antiseptic liquid was poured. The advertisement claimed "it is proven!" Lifebuoy gives better germ protection than Dettol antiseptic liquid. However, in the smaller font, it is written "while bathing". They also draw circle where the part used by Dettol would show marks of germs whereas the other part did not have any germ that used Lifebuoy.
Advertisement No. 4, was a television advertisement that would show a bottle without having any label being removed from the place where it was kept with the voiceover, antiseptic liquid should be kept away from the children and the same could not be used for cleaning the utensils. Hence Vim is being used that would give more germ protection and cleanness having the ingredient of lemon.
The third and fourth suit were filed at the instance of Hindustan Unilever Ltd.. If we take the fight between the Dettol antiseptic liquid and Vim liquid/bar we would find, Dettol would claim, it would kill germs 100 times better whereas Vim would claim, antiseptic liquid could not be kept within the reach of the children, since they used to frequent in the kitchen antiseptic liquid cannot be used and Vim would give adequate cleanness and protection.
In the fight between the Lifebuoy soap and Dettol antiseptic liquid, we would find, the advertisement objected to by Dettol, would relate to a direct comparison between the Lifebuoy and Dettol Antiseptic liquid. Dettol would claim 100 per cent killing effect whereas Lifebuoy would claim 100 per cent germ protection.
LIS AND THE RESULT SO FAR:
The learned Judge considered the rival contentions. Before His Lordship, both of them claimed, the law would permit them to compare between the two products backed up by adequate justification. Taking the case of Dettol cleaning liquid Vs. Vim cleaning liquid, Hindustan Unilever Ltd. would say, assuming they were entitled to make comparison such comparison must not denigrate the rival product. The advertisement would suggest, half of the plate cleaned by Vim did have more germs than the other half that would have only one germ. Dettol would suggest, they would have killing effect whereas Vim would suggest, they are in the field of dish wash and considered to be a leading one, they would remove all dust that would include germs. The dish wash would have operation in the field of cleaning the utensils. The killing of germs would not have any role to play hence, the advertisement would be offensive as it would denigrate the other product.
The fight between the Lifebuoy and Dettol in the suit filed by Reckitt Benckiser India Ltd. against Hindustan Unilever Ltd., would also have almost similar plea. Lifebuoy would claim, they would be entitled to compare these two products as they had proper justification based on the report of the expert obtained by Reckitt Benckiser India Ltd. itself produced in a collateral proceeding before the Delhi High Court. The report would suggest, the Dettol antiseptic liquid on appropriate dilution, would lose its effect. Hence, they were entitled to show, the antiseptic liquid could at best kill the germs in the water. However, the diluted Dettol mixed with water would have no role to play in the matter of protection of the body from germs that lifebuoy would give. Hence the advertisement was not disparaging. Similarly, the other advertisement would amount to an unfair comparison between the Dettol liquid and Vim liquid where the lady was keeping Dettol away from the children and suggesting, Vim liquid would clean as well as protect against germs. Reckitt Benckiser India Ltd. would contend, Dettol liquid used for cleaning would not have the same damaging effect that raw antiseptic liquid might have.
Upon considering the rival contentions as well as the provisions of Sections 29 and 30 of the Trade Mark Act, the learned Judge held, law would prevent registered mark holder from advertising their mark taking unfair advantage contrary to the honest practice in industrial and commercial matter or detrimental to the distinctive character or against the reputation of the another mark that would amount to infringement.
His Lordship dealt with the cases cited at the bar including English cases. His lordship also considered the issue as to whether Article 19 (1) (a) of our Constitution would come into play in respect of comparative advertisement taking the plea of freedom of speech. His Lordship also considered as to whether any of the impugned advertisements would have the effect of puffery. His lordship restrained all the four advertisements hence, the above four appeals.
AS THEY JUSTIFY:
Mr. C.M. Lal, learned Counsel argued on behalf of Reckitt Benckiser India Ltd. whereas Mr. Pratap Chatterjee learned Senior Advocate advanced argument on behalf of Hindustan Unilever Ltd.. Mr. C.M. Lal contended, positive comparison between the two products was permissible in law provided it would not hit the provisions of Sections 29 and 30 of the Trade Mark Act. However, once the concerned advertisement would identify the other product and denigrate the same that would be objectionable. To support his proposition, comparison was permissible, he cited the following decisions:
1. Pepsi Co., Inc. and Ors. Vs. Hindustan Coca Cola Limited and Anr. reported in 2003 Patent and Trade Mark Cases Page-305.
2. Dabur India Limited, Delhi Vs. Colortek Meghalaya Private Limited and another reported in 2010 Patent and Trade Mark Cases Page-254.
3. Hindustan Unilever Limited Vs. Procter and Gamble Home Products Limited reported in 2010 Patent and Trade Mark Cases Page-460.
4. Eveready Industries Limited Vs. Gillette India Limited reported in 2012 Volume-III Calcutta Law Times Page-286.
He would, however, agree to remove the word "leading" and substitute the same by the word "other" that would not hurt Vim in any way. Per contra, Mr. Chatterjee contended, the Vim and Dettol would have different role to play. Dettol would operate in the sterilization field that may not be necessary in the daily household hence "the 100 per cent germ killing effect" would have hardly any role to play in cleaning dish. Once Dettol would compare their product with Vim showing Vim in the advertisement they must be fair and would demonstrate they have a better cleaning effect. Dettol antiseptic would be a product having registered under the Drug and Cosmetics Act as a drug. It could not have comparison with Vim that would only operate in the cleaning field. Hence two different products could not be brought for comparison. The people were thus misled by Reckitt Benckiser India Ltd.. Mr. Chatterjee would contend, few drops of Dettol as shown in the advertisement could not have any effect at all when poured in a bucket full of water. Hence the claim made by Dettol for having better protection while bathing would not be a just claim. He would rely upon the decision in the case of Reckit Benckiser India Limited Vs. Naga Limited & Ors. reported in 2003 Volume 26 Patent and Trade Mark Cases page- 535. He would refer to the expert report relied by Reckitt Benckiser India Ltd. before the Delhi High Court in support of his contention. To support Lifebuoy, Mr. Chatterjee would contend, 100 per cent germ protection claimed by Lifebuoy was based upon the proven test. Reckitt Benckiser India Ltd. tested Lifebouy bar by diluting the same that was not the proper mode. According to him, soap should be rubbed on the body to have cleaning effect hence, dilution of soap might not have the same effect, as Lifebuoy was never suggested to be used by dilution. The attempt by Dettol on that score was not proper. Lifebuoy claimed, it had 100 per cent germ protection, not killing. Even if the antiseptic liquid would kill germs that might not be necessary while bathing. Once the antiseptic liquid is diluted, even if that would kill germs within the water that would not have the cleaning effect on the body unless rubbing was done and that too, only possible by soap not by the diluted liquid. The Dettol was registered as a drug whereas Lifebuoy was a cosmetic. These were two unlike products and could not have any comparison. Any attempt to compare one with the other would amount to unfair trade practice. He relied upon the unreported decision of the Delhi High Court delivered by Kailash Gambhir J. on the similar issue. While replying, Mr. Lal would contend, there was no misrepresentation in any of the advertisements at the instance of Reckitt Benckiser India Ltd.. They would give better germ protection by killing that was proven. Unless such proven fact was rebutted any comparison with Dettol antiseptic liquid would be unfair. The learned Judge should not have passed an order of injunction. He relied on sections 2(b) and 2(aaa) of the Drug and Cosmetics Act. He would also refer to Magic Remedies Act as also the decision of the Advertising Council at South Africa where a similar advertisement was held to be unfair. He would submit, the decision in the case of Naga (supra) would be applicable whereas decision in the case of Lakhan Pal (Supra) would not have any role to play because of the distinctive difference of factual scenario. While giving the rejoinder Mr. Chatterjee reiterated what he had submitted earlier. Distinguishing the decision of Gambhir J., he would submit, the concerned advertisement involved in Delhi High Court would have no similarity in the present case, rather he distinguished the Division Bench decision of the Delhi High Court on the issue. Similarly, the Advertising Council decision in South Africa could not have any role to play as it was a different advertisement. He would lastly contend, neither Drug and Cosmetics Act nor the Magic Remedies Act would have any application at all in the facts involved herein. AS WE FEEL:
We have given a close look to the judgment and order impugned. His Lordship dealt with all the precedents cited at the bar and summarized the proposition of law very correctly, we would produce as hereunder:
" The principles of law governing disparagement of goods seem to be well entrenched and only need to be elucidated.
The law, in its most general terms, relating to disparagement of goods was laid down by the House of Lords in the above case. The House opined as follows:
a) A trader can laud his product.
b) He can even say that his product is the best in the world.
c) He can declare that his product is better than his rival's and in what respect it is better.
d) He cannot say that his rival's product is bad, injurious or deleterious or make an intentional misrepresentation to mislead customers. (Lord Shand at Page 171)
e) In order to succeed, the plaintiff has to prove special damages. To obtain an order of injunction he has to satisfy the Court that damages have been suffered or will be suffered in future. (Speech of Lord Waston)
f) Some speeches in White Vs. Mellins seem to suggest that in the case of downright disparagement of another's goods, without proof of actual or future damages, an action in disparagement will lie. A passage from the speech of Lord Shand suggests that in such a case even a pleading of special damage is not necessary."
His Lordship, after holding as above, observed as follows:
"But I find nothing in the existing law to permit, a serious comparison by a trader of his product with the product of another."
"In my judgment comparison should not be more than a "puff". Here we join issue. Trade Mark Act clearly prohibits, one registered mark holder to take unfair advantage of another mark holder by any advertisement detrimental to its distinctive character and reputation. Section 30 would make it clear, nothing in Section 29 would prevent identifying his own goods or service provided the use is in accordance with the honest practice and not take unfair advantage or detrimental to the distinctive character or repute of the other mark. In our considered view, if someone is in a position to justify the comparison even seriously that would not offend any statute. Be it puffery, be it serious. On other issues His Lordship's understanding of the law as quoted above, is accurate subject, to our view, being expressed herein before. With this mind set in the backdrop may we proceed to decide the subject controversy.
We have repeatedly watched all the four advertisements. We unhesitatingly say, there was an inbuilt attempt to denigrate the other product. The first advertisement would refer to leading dish wash, it is Hindustan Unilever Ltd. admittedly in the field of cleaning utensils had a lion's share hence, although the name of Vim or their bottle is not shown the word "leading" would have an adverse effect. Mr. Lal in course of his submission agreed to remove the word "leading". We can take it, the subject advertisement as it stands, would not be published any more. We thus do not wish to interfere.
The second advertisement would claim the killing efficiency of Dettol. Dettol would claim, they would effectively kill germs better than Vim. Hence, showing Vim in the advertisement was unfair. Dettol would claim, they would kill the germs whereas Vim would claim, they would remove it. If Dettol could positively show, they would remove germs better than Vim we would not have restrained them to continue with the advertisement. Dettol had a different effect as they claimed in the advertisement other than any dish wash. The comparison, the way it was made, is to denigrate Vim. We feel, learned Judge rightly passed an order of restraint that would deserve no interference. The third advertisement was published in the print media in such a fashion that a sentence was divided into two halves. Even if we take both parts together we would find, Lifebuoy would claim better germ protection than Dettol antiseptic liqued while bathing. However, when we see the Lifebuoy soap, it was claimed, Lifebuoy gives better germ protection than ordinary soap. Dettol and lifebuoy would have two different area having two different effect. Lifebuoy is a cosmetic whereas Dettol is an antiseptic liquid, Lifebuoy is used during bath that one would get the effect by rubbing it on the skin. Dettol might claim that one would get good protection in case they use diluted Dettol while bathing. We are not concerned with the advertisement of Dettol making such claim. When it would come before us we would definitely consider the same. These are two unlike products, the way it was compared was certainly an unfair attempt. Learned Judge restrained the advertisement, we do not find any scope to interfere. The fourth advertisement would relate to a television slot that would show a young girl sitting in the kitchen where Dettol cleaner was kept on the table. The lady comes and removes the bottle by making a caution, antiseptic liquid must be kept away from the children and Vim would be sufficient to clean the utensils having the effect of lemon. Vim could not effectively show us, Dettol cleansing liquid had ever claimed, they would give adequate protection like raw Dettol that would harm the children. They did not also show how it could affect the children if contacted with. We already supported the action against Dettol advertisement in print media on the identical logic. This advertisement should also go. Learned Judge restrained the advertisement, in our view, correctly.
AS WE ORDER:
The appeals fail and are hereby dismissed. There would be no order as to costs.
ARIJIT BANERJEE, J.
I agree [ASHIM KUMAR BANERJEE, J.] [ARIJIT BANERJEE, J.]