Calcutta High Court (Appellete Side)
Hindustan Unilever Limited vs Emami Limited And Others on 2 July, 2018
Author: Sabyasachi Bhattacharyya
Bench: Sabyasachi Bhattacharyya
1 In the High Court at Calcutta Civil Revisional Jurisdiction Appellate Side The Hon'ble Justice Sabyasachi Bhattacharyya C.O. No. 1832 of 2018 HINDUSTAN UNILEVER LIMITED vs. EMAMI LIMITED and others For the petitioner : Mr. Anindya Kumar Mitra, Mr. Soumendra Nath Mukherjee, Mr. Ratnanko Banerjee, Mr. Probal Mukherjee, Mr. Saumabha Ghosh, Mr. Deepan Kumar Sarkar, Mr. Arunabha Deb.
For the opposite
party No. 1 : Mr. Ranjan Bachawat,
Mr. Jishnu Saha,
Mr. Debnath Ghosh,
Mr. Arindam Chandra,
Mr. Atish Ghosh,
Mr. Ishan Saha,
Mr. Souvik Ghosh,
Mr. Dipranjan Mukhopadhyay.
2
Hearing concluded on : 28.06.2018
Judgment on : 02.07.2018
Sabyasachi Bhattacharyya, J.:‐
The present application under Article 227 of the Constitution of India is directed against an order dated June 25, 2018 passed by the Additional District Judge, First Court at Serampore, District: Hooghly in Miscellaneous Appeal No. 40 of 2018, whereby the petitioner's prayer for ad interim stay of operation of an ad interim injunction order dated June 19, 2018, was refused.
The facts of the case, in a nutshell, are as follows:
The plaintiff/opposite party no. 1, EMAMI LIMITED, owns a product "FAIR AND HANDSOME" and has a trade mark in the same name, which was registered in the year 2005. On the other hand, the first defendant/petitioner, namely, HINDUSTAN UNILEVER LIMITED, owns a product by the name of "Men's Fair & Lovely". Apparently the opposite party no. 1 introduced a brand "Fair & Lovely"
many years back. The said product underwent several changes in name and look and ultimately was re‐launched in 2018 under the brand name "Men's Fair & Lovely". Both the products are fairness creams.3
Recently, the petitioner started advertising their product "Men's Fair & Lovely" through television channels belonging to opposite party nos. 2 to 8. Such advertisement was comprised of a television commercial where there were several scenes which, inter alia, showed that the aforesaid product of petitioner, being "Men's Fair & Lovely" was the original and the product of opposite party no. 1 "FAIR AND HANDSOME", was a "Doosra". Accordingly, it was shown that people often got confused between the two products. Thereafter, it was shown that by applying the product of petitioner, instant fairness could be acquired within ten seconds and that true brightness could be achieved by virtue of the original "Men's Fair & Lovely". The said advertisement was in Hindi vernacular.
Opposite party no. 1 instituted a suit, bearing Title Suit No. 254 of 2018 in the Second Court of Civil Judge (Junior Division) at Serampore, claiming the following reliefs:
"The plaintiff prays for leave under Order II Rule 2 and Order II Rule 3 of the Code of Civil Procedure, 1908 and claims the following:‐
(a) A decree of perpetual injunction restraining the defendant no. 1, its men, servants, agents and assigns and representatives and defendant nos. 2 to 8 and/or anyone claiming through the defendant nos. 2 to 8 from circulating and/or displaying in any manner whatsoever the impugned advertisement devolved by the defendant no. 1 for its product "Men's Fair & Lovely" which is more fully shown in annexure "H" 4
hereinabove and/or any other advertisement which purports to disparage and/or defame the plaintiff and/or its product "FAIR AND HANDSOME" or otherwise in any manner whatsoever;
(b) A decree of perpetual injunction restraining the defendant no. 1, its men, servants, agents and assigns and representatives and defendant nos. 2 to 8 and/or anyone claiming through the defendant nos. 2 to 8 from publishing by printing or by any other means the impugned advertisement as showing in annexure "H" hereinabove or any part thereof or by any other advertisement of similar nature which purports to demean, disparage and denigrate the plaintiff's product "FAIR AND HANDSOME"
in any manner whatsoever;
(c) A decree of perpetual injunction restraining the defendant no. 1, its men, servants, agents and assigns and representatives and defendant nos. 2 to 8 and/or anyone claiming through the defendant nos. 2 to 8 from either directly or indirectly disparaging the plaintiff or any of the plaintiff's product "FAIR AND HANDSOME" or the plaintiff's business in any manner whatsoever;
(d) Decree for delivery up and destruction of the master tape and/or any copy thereof of the impugned advertisement;
(e) An enquiry be made into loss of business and reputation caused to the plaintiff by the impugned advertisement of the defendant no. 1, and upon such inquiry having been 5 made a decree be passed against the defendant no. 1 for such sum as may be deemed due and payable on such inquiry;
(f) Decree for mandatory in junction directing the defendant no. 1, its men, servants, agents and assigns and representatives and defendant nos. 2 to 8 and/or anyone claiming through the defendant nos. 2 to 8 to withdraw the offending advertisement;
(g) Receiver;
(h) Injunction;
(i) Attachment before judgement;
(j) Costs;
(k) Further or other reliefs. "
It was alleged in the plaint that the aforesaid advertisement was a flagrant attempt on the part of the first defendant / petitioner to disparage and denigrate the product of the plaintiff/opposite party no. 1. It was also alleged that the advertisement would lead to dissemination of false and negative publicity of the plaintiff's product with the intention to convey that the plaintiff's product is inferior to that of the defendant no. 1 and that, by referring to its own product as the original product, the defendant no. 1 intentionally questioned the goodwill, reputation, quality and effectiveness of the plaintiff's product based on false and misleading 6 premises. It was further alleged that the impugned advertisement took unfair advantage and was contrary to honest practice in industrial and commercial matters and was detrimental to the distinctive character of the plaintiff's product and also amounted to tarnishing, infringement and passing off of the plaintiff's trade mark "FAIR AND HANDSOME". In the suit, it was also alleged that in issuing/publishing the said impugned advertisement, the defendant no. 1 infringed the vested rights of the plaintiff and more particularly under the provisions contained in the Trade Marks Act, 1999. It was alleged that the defendant no. 1, in further violation and infringement of the plaintiff's statutory and common law rights, continued to circulate the impugned advertisement. The plaint also contained an averment that, since adoption of the trade mark "FAIR AND HANDSOME" by it, the plaintiff had taken all steps to jealously protect the same and preserve its brand name, trade mark and trade dress associated with the plaintiff's product since long. It was also alleged that the comparison illustrated in the impugned judgment was infringing and violative of the plaintiff's exclusive right to use, enjoy and appropriate the trade mark "FAIR AND HANDSOME".
On such allegations, the plaintiff/opposite party no. 1 moved the Trial Court and the Trial Court vide order No. 2 dated June 9, 2018, passed an ad interim order of injunction restraining the defendant nos. 1 to 8, that is, the present petitioner and opposite party nos. 2 to 8, from circulating and/or displaying in any manner whatsoever the impugned video advertisement as developed by defendant no. 1 for 7 its product "Men's Fair & Lovely" in terms of annexure 'H' to the application for injunction and also from publishing through printing or by any other means the said impugned advertisement or any part thereof which purported to demean, disparage and denigrate the product of the plaintiff under the name and style "FAIR AND HANDSOME" and further restrained from engaging in any acts interfering with the direct goodwill and business loss of the plaintiff in any manner whatsoever in connection with the impugned video advertisement, till July 6, 2018.
However, it was made clear that the Trial Court had not restrained defendant no. 1 from promoting its aforesaid product and/or carrying its business activities in respect of its said product in any manner whatsoever in accordance with law.
Being thus aggrieved, the present petitioner preferred an application under Article 227 of the Constitution of India before this Court, giving rise to C.O. No. 1759 of 2018. This Court by its order dated June 22, 2018 disposed of the said application on the ground that it was appellable and granted liberty to the petitioner to move the appropriate forum with a proper challenge.
Accordingly, the petitioner preferred Miscellaneous Appeal No. 40 of 2018 challenging the ad interim injunction order passed by the Trial Court. In connection with the appeal, the petitioner filed an application for ad interim stay of operation of the order dated June 19, 2018 passed by the Trial Judge.
8
The Appellate Court, vide order dated June 25, 2018, even after hearing submissions of both sides, granted ten days' time to the opposite party no. 1 to file written objection against the stay application but did not pass any ad interim order of stay of operation of the ad interim injunction order passed by the Trial Court.
Being thus aggrieved by such deemed refusal of ad interim stay by the order of the Appellate Court dated June 25, 2018, the present revisional application has been preferred.
Learned senior counsel appearing for the petitioner submits at the outset that the Civil Judge (Junior Division) had no jurisdiction to entertain the suit in view of the specific stipulation in Section 134 (1) of the Trade Marks Act, 1999, that no suit for the infringement of a registered trade mark or relating to any right in a registered trade mark or for passing off arising out of use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.
Apart from such inherent lack of jurisdiction, it was submitted, the Civil Judge (Junior Division) was also incompetent to entertain the suit or pass the ad interim order of injunction, having no territorial jurisdiction to hear the matter, in view of Section 134 (2) of the said Act of 1999.
9
Section 134 of the Trade Marks Act, 1999, is set out below:
"134. Suit for infringement, etc., to be instituted before District Court.--(1) No suit--
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub‐section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.--For the purposes of sub‐section (2), "person" includes the registered proprietor and the registered user."
10
It is argued that the suit was predominantly one relating to a registered trade mark and as such, came within the ambit of Section 134 of the said Act of 1999. In this regard, learned senior counsel appearing for the petitioner placed reliance upon the paragraphs 13, 27, 40, 45 and 50 of the plaint in particular to impress upon this Court that the suit fall within the comprehension of Section 134 of the 1999 Act.
In this regard, learned senior counsel for the petitioner also relied upon Section 29(8) of the Trade Marks Act, 1999 and submitted that the present lis was squarely covered by the said provision. Section 29(8) of the 1999 Act reads as follows:
"Section 29(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."
It is also pointed out on behalf of the petitioner that Section 30 of the 1999 Act provided the limits on the effect of a registered trade mark. 11
It is further argued, by pointing out from the cause title as well as the averments in the plaint, that the plaintiff/opposite party no. 1‐company had its registered office at 687, Anandapur E.M. Bypass, Kolkata - 700 017. In view of such location, it was argued the suit had to be filed before the Alipore Judges' Court in terms of Section 134(2) of the 1999 Act and the Serampore Court had no jurisdiction to entertain the same.
In fact, the petitioner submits, the petitioner had lodged caveat in the District Court at Alipore and the suit was filed at a subordinate forum at Serampore to avoid such caveat. It was shown from the photocopy of the verification of the plaint, annexed to the present revisional application, that the word "Alipore" therein had been scored through and replaced by the word "Serampore", showing that initially the suit had been prepared to be filed at the proper forum, but at the last forum had been presented at Serampore to bypass any probable caveat and obtain an ad interim injunction order.
Hence, the petitioner submits that the order of ad interim injunction granted by the Trial Court was vitiated by lack of both inherent and territorial jurisdiction. As such, it is argued, the Appeal Court ought to have treated the same as a nullity and to have granted stay of operation of the same for the asking.
On merits, it is submitted by the petitioner, the audio‐visual advertisement under challenge sought to promote the petitioner's product only and not denigrate 12 or disparage the trade mark or product of opposite party no. 1 in any manner. It is argued that the meaning of "Doosra" in Hindi is only "another" or "different" and could not, by any stretch of imagination, be construed to be derogatory to the product of the opposite party no. 1. It is submitted that the advertisement only highlighted difference between the two products and sought to propagate the good features of the petitioner's own product. As such, the ad interim injunction passed by the Trial Court was not justified even on merits.
Moreover, petitioner argues, such injunction is affecting the petitioner adversely, causing huge loss of goodwill as well as financial loss to the petitioner since the audio‐visual clip was being televised during a prime international sporting event which is now going on, and could have fetched immense profit and enhancement of goodwill of the petitioner. This apart, the petitioner submits that the plaintiff/opposite party no. 1 at best could seek the relief of damages and not injunction, as claimed in the suit.
In support of his submission, learned senior counsel for the petitioner cites a judgment reported at (2015) 3 CHN 389 (Reckitt Benckiser Healthcare India Limited vs. Emami Limited & Anr.). In the said case, the dispute centered on the question, whether the suit fell within the four corners of Section 134 of the Act of 1999. The cause of action, in the said case, arose from the comparative advertisement aired, allegedly intended at advocating the superiority of the goods of one of the parties in preference to those of the competitor. It was held by a Division Bench of this Court 13 in the said case, that the plaintiff therein appeared to have claimed relief on the ground of infringement of its trade mark by airing the alleged disparaging advertisement. In such circumstances, it was held that the Civil Judge (Senior Division), did not have jurisdiction to entertain the suit in view of Section 134 of the Act of 1999.
In controverting the submissions of the petitioner, the opposite party no. 1 submits that the entire premise of the present suit was denigration and disparagement of the product belonging to the opposite party no. 1. Paragraphs 2 to 50 of the plaint, it is submitted, only highlight how the well‐established product of opposite party no. 1 was being denigrated and disparaged deliberately by dint of the disputed advertisement. The averments made in the plaint, it is submitted, primarily allege that the impugned advertisement seeks to deliberately and unfairly discredit, disparage, ridicule and derogate the plaintiff's product, "FAIR AND HANDSOME". As such, it is submitted that the suit is an action in Tort and falls within the domain of common law, and is not governed by the provisions of the Trade Marks Act, 1999. In view of the basis of the suit being tortious liability based on the principles of trade libel and slander, the same was governed by Section 20 of the Code of Civil Procedure and had to be filed before the lowest forum, that is the Civil Judge (Junior Division) and not before the District Judge as stipulated in Section 134 of the 1999 Act.
14
It is submitted that the premise of a suit for infringement under the Act of 1999 is completely different from one based on Tort, as in the present lis. Although certain ingredients of infringement of trade mark may be involved in the bundle of facts giving rise to the present suit, the essential cause of action for filing the present suit was disparagement and denigration of the product of the petitioner and not the infringement of the trade mark associated with the said product. As such, although there could be incidental infringement of trade mark, the frame of the present suit made it clear that the same was not filed under the provisions of the 1999 Act but entirely emanates from tortious violations.
On merits, learned senior counsel for the opposite party no. 1 argues that the injunction granted by the Trial Court was absolutely justified and was rightly not stayed by the Appellate Court. Learned counsel argues that electronic media have immediate and far‐reaching effect and the immense loss of goodwill and consequential financial loss which the opposite party no. 1 would suffer due to the advertisement would be of phenomenal effect. In view of the clear insinuation in the disputed advertisement that the product of opposite party no. 1 was of inferior quality than that of the petitioner, the said advertisement was nothing but a negative campaign designed at maligning and denigrating the product of opposite party no.1. As such, it is submitted that ad interim injunction granted by the Trial Court was fully justified.
15
That apart, it is submitted on behalf of opposite party no. 1 that the next date fixed before the Appellate Court is July 4, 2018 and as such, no stay order ought to have been granted by the Appellate Court in any event. The grant of stay at this stage would tantamount to allowing the appeal prematurely.
It is further pointed out by learned senior counsel appearing for opposite party no. 1, that opposite party no. 1 had, in its plaint, categorically prayed for leave under Order II Rule 2 and Order II Rule 3 of the Code of Civil Procedure, 1908 and subsequently also took out an independent application seeking such leave, since the plaintiff had not prayed for any relief for infringement of its registered trade mark in the present suit.
It is thus argued that seeking such leave is sufficient indicator of the fact that the present lis was instituted as an action in Tort and not on infringement as contemplated under the Trade Marks Act, 1999.
Upon considering the submissions of both sides and a perusal of the materials on record, it is evident that the plaint predominantly contemplates a disparagement suit. A plain and meaningful reading of the plaint unerringly indicates that the complexion (word‐choice influenced by nature of the products) of the suit, as framed, is essentially that of a disparagement suit. The build‐up of the cause of action and the bulwark of facts throughout the plaint, providing the plinth for the 16 reliefs, overwhelmingly revolve around allegations of denigration and disparagement of the plaintiff's product. At least paragraph no. 20 onwards, the center of gravity of the plaint revolves around disparagement and denigration of the plaintiff's product by the challenged audio‐visual clip, and not the violation of statutory rights, of infringement and the like, emanating from the Trade Marks Act, 1999.
Although stray references to the trademark of the plaintiff's product find place in paragraph nos. 13, 27, 40, 45 and 50 and in some other places of the plaint, such references do not provide the basis of the reliefs claimed in the instant suit, as framed. A mere look at the prayer portion of the plaint shows that the injunctions and other reliefs claimed are to prevent disparagement and defamation of the plaintiff and/or its product "FAIR AND HANDSOME" and not to protect rights arising from the trademark or to prevent infringement of the trademark.
Paragraph no. 50 of the plaint categorically pleads violation and infringement of the plaintiff's statutory and common law rights, which actually is the crux of the matter. It has never been the contention of the plaintiff/opposite party no. 1 that the disputed advertisement gave rise only to common law rights and that a disparagement suit was the only remedy available to it. On the contrary, it has been the consistent pleading in the plaint that the same set of facts gave rise to causes of action both for a disparagement suit based on trade libel and/or slander and an action for infringement of trade mark. This also explains the plaint prayer for leave 17 under Order II Rules 2 and 3 of the Code of Civil Procedure and a subsequent application to that effect. However, the present lis has disparagement and denigration of the plaintiff's product, rather than the infringement of the associated trademark, as its focal point. The alleged infringement of trademark and rights arising from such trademark is only a corollary and a collateral damage at best, as per the plaint allegations, for which leave has been sought to take out a separate action.
In a sense, it is doubtful whether the two sets of relief, on disparagement and on infringement of trade mark respectively, could be clubbed and instituted before the same forum. Section 134 of the Trade Marks Act, 1999 restricts the forum, for filing a suit for infringement of a right under the said Act, to one not inferior to the District Court in judicial hierarchy; whereas a common law suit based on disparagement has to be instituted, as per Section 15, read with Sections 19 and 20, of the Code of Civil Procedure, in the court of the lowest grade competent to try it. Hence, in the event the two sets of relief were clubbed, there would arise the issue of mutually exclusive legal provisions with respect to the forum for presentation of the plaint. As such, probably the best possible course open to the plaintiff was to institute a suit in the court of lowest grade competent to try it, that is, the court of Civil Judge (Junior Division), and to seek leave to present a plaint on infringement of trademark, if any, before the competent District Court. That is precisely what has 18 been done in the instant case and such modus operandi could not thus be faulted in law.
This apart, considering the merits, the plaintiff/opposite party no.1 has made out a sufficient prima facie case to go for trial, inasmuch as the successive slides of the disputed audio‐visual advertisement feed and grow upon the initial slides, which portray the petitioner's product as "original" and distinguish the product of the plaintiff/opposite party no. 1 from such "original product". Even on prima facie consideration of the time‐frame of launching the respective products, the product of the petitioner, "Men's Fair and Lovely", is much younger on point of commencement than that of the opposite party no. 1, "FAIR AND HANDSOME". Therefore the term "original" here could not mean earlier on point of genesis, but only that the petitioner's product was the real one and that of opposite party no. 1, being other than such "original", was a duplicate/fake. The terminology "Doosra", here, could be interpreted by the general public as something other than the original, that is, fake. Although the connotation of both the terms, "original" and "Doosra", are fluid, yet, taken in proper perspective, the advertisement undoubtedly contains an innuendo that, in comparison, the petitioner's product is the original and that of the opposite party no. 1 is an emulation. In view of such possible interpretation of the advertisement vis‐à‐vis public notion, it could very well be said that the opposite party no. 1 had a strong prima facie case to go for trial.
19
Moreover, there is justification in the argument of opposite party no. 1 that the disputed advertisement being shown on electronic media at prime time, during telecast of an internationally important sporting event, would entail immediate and far‐reaching dissemination of whatever information the advertisement had to propagate, thereby enhancing the effect of the same to a largely magnified scale than other media at other times. This would obviously lead to possible huge loss to the plaintiff/opposite party no. 1, justifying an ad interim injunction. In such circumstances, the Trial Court could not be said to have committed any grave error on such a scale so as to call for an ad interim order of stay of operation of such order by the Appellate Court.
On a different aspect, it is well‐settled that stay of operation of a prohibitory injunction is generally refused on the ground that grant of such stay would amount to allowing the appeal itself at a premature stage, thereby negating the effect of the impugned order itself. Such stay can be granted only in exceptional circumstances and in rare cases.
In the present case, no such exceptional circumstance has been made out by the petitioner. As such, the Appellate Court could not be faulted for having refused to grant ad interim stay of an ad interim injunction order. In view of both the Trial Court and the Appellate Court having passed orders which could have been plausible on the applicable law and facts, this Court is not inclined to interfere with such judicial exercise of discretion even if, in the opinion of this Court, any other 20 view was possible. The exercise of discretion by the Courts below was sound and do not call for any inference.
As far as the cited judgment is concerned, in the said case the cause of action specifically arose from the allegation as to infringement of a registered trade mark and disparagement was a mere side issue. But in the instant case, the frame of the suit suggests that the suit is one for disparagement of the product of the plaintiff/opposite party no. 1 and the action is in Tort, based on common law rights, and not under the Trade Marks Act, 1999.
In the present case, Section 16, read with Sections 19 and 20, of the Code of Civil Procedure, coupled with the provisions of the Bengal, Agra and Assam Civil Courts Act, 1887, would decide the territorial jurisdiction and hierarchy of forum for institution of the suit. Hence, prima facie the Civil Judge (Junior Division), had jurisdiction to entertain the suit and to pass an injunction order, in view of the situs of cause of action and hierarchical grade converging on such court.
As such, the cited judgment is distinguishable on facts and the proposition laid down therein is, thus, not applicable to the case at hand.
Accordingly, C.O. No. 1832 of 2018 is dismissed on contest, thereby affirming the order dated June 25, 2018 passed by the Additional District Judge, First Court at Serampore, District: Hooghly in Miscellaneous Appeal No. 40 of 2018. 21
However, it is made clear that this Court has not gone into the merits of the case and it will be open to both sides to argue all points available to them in law and on facts before both the fora below. The Appellate Court as well as the Trial Court will decide the matter falling for adjudication before them, whether at the interim, ad interim or final stage, independently on its own merits, without being influenced by any of the observations made in this order.
There will be no order as to costs.
( Sabyasachi Bhattacharyya, J. )