Delhi High Court
Beiersdorf Ag vs Hindustan Unilever Limited on 9 May, 2024
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on : 15th April, 2024
Pronounced on : 09th May, 2024
+ I.A. 7636/2021 in CS(COMM) 300/2021
BEIERSDORF AG ..... Plaintiff
Through: Mr. M.S. Bharath, Mr. V.S. Krishna, Mr.
Ayush Sharma and Mr. Ashish Sharma,
Advocates.
versus
HINDUSTAN UNILEVER LIMITED ..... Defendant
Through: Mr. Chander M. Lall, Sr. Advocate
along with Ms. Pragya Mishra, Mr.
Shashwat Rakshit and Mr. Ankur
Sangal, Advocates.
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
% ORDER
I.A. No. 7636/2021 (under Order XXXIX Rules 1 & 2 of CPC)
1. This application has been filed by plaintiff as part of suit seeking
permanent injunction restraining infringement of trademark, unfair trade
practice, disparagement, dilution and damages against defendant alleging
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dishonest conduct by using the signature elements of the distinctive look trade
dress of plaintiff's 'NIVEA' products.
2. The crux of the matter relates to the highly distinctive trade dress claimed
by plaintiff for its 'NIVEA' brand of products written over a distinctive blue
background ('Pantone 280C'), created and developed for plaintiff's products
'NIVEA Crème' in 1925. Around 2021, plaintiff became aware that defendant
had been undertaking marketing activities involving their sales representatives
being present in various malls in Delhi and Gurgaon showing a comparison of
a cream in a blue tub identical to plaintiff's 'NIVEA Crème blue tub' (used
without the sticker) and defendant's product 'Ponds Superlight Gel'
("impugned activity"). As per the plaintiff, sales representatives of defendant
would apply cream from the "blue tub" on the skin of the walk-in customers on
one hand and defendant's product on the other hand. Thereafter, the
representatives would use a magnifying glass in an attempt to assure the
customers that blue tub product left an oily residue on their skin as compared to
defendant's product 'Ponds Super Light Gel'. This, claimed by plaintiff, was
disparaging of their product and a cease-and-desist notice was issued on 19th
June, 2021 to defendant. Thereafter, the instant suit was filed and summons
were issued on 5th July, 2021. However, notice was issued in the application
and thereafter, the matter has remained on Board.
3. Subsequently, under the impression that defendant was not pursuing the
impugned activity, plaintiff had filed an affidavit for withdrawal of the suit.
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However, as noted in order dated 23rd January, 2024, Senior Counsel for
defendant stated that they have not withdrawn from any such activity and
therefore, plaintiff withdrew the said affidavit of withdrawal and this
application was contested and argued.
Submissions on behalf of Plaintiff
4. Plaintiff claims that one of its most famous and recognizable product
packaging is under the brand 'NIVEA' in a flat can of cream with a distinctive
blue colour design and brand 'NIVEA' written in white. The
distinctive blue colour is identified as 'Pantone 280C', and used as a source
identifier. Subsequently plaintiff's 'NIVEA' mark was adopted, used and
promoted extensively in other forms such as
and various others.
5. Plaintiff applied and obtained registrations for 'NIVEA' trademark and
variants in more than 175 countries in various classes. 'NIVEA' was first
registered in 1943 in India in class 3 and subsequently was registered in various
other classes.
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6. List of marks / trademark registrations claimed by plaintiff for brand
'NIVEA' are provided in a tabulation as under:
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7. For the purposes of this suit, aside from the word mark, which was not in
picture in the impugned promotional activity, stress was laid on distinctive blue
colour in the device/logo, especially under registration Nos. 1329991, 2232698,
2856286 and 3263712, all being in class 3.
8. While this colour was not protected under registration in India, it was
given protection by German Patent and Trademark Office under registration
No. 30571072 in class 3. Plaintiff claimed that the distinctive blue colour and
the unique trade dress have been extensively used for their product 'NIVEA'
and been extensively advertised all over the world through print and digital
media and a huge amount of promotional expenses have been spent. The recall
therefore, in mind of general consumer relatable to the 'NIVEA' product is of
the distinctive blue colour used along with trade dress. Annual worldwide sales
turnover, as claimed by plaintiff, for year 2016 was Euro 4.2 billion and
promotional expenditure was in the range of Euro 1.5 million. Their specific
sales and promotional figures for 'NIVEA' products for the year 2018 were
claimed by plaintiff to be Euro 119 million and Euro 30 million respectively.
Figures were given for both worldwide and Indian territories from the year 1999
onwards. It is claimed that the brand 'NIVEA' features amongst global top 500
super brands and has received various other awards, nationally and
internationally.
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9. 'NIVEA' was declared a well-known trademark by this Court in CS(OS)
No. 1164/2001 titled as Beiersdorf A.G. v. Ajay Sukhwani & Anr.,
2008:DHC:3037 vide order dated 14th November, 2008.
10. Counsel for plaintiff drew attention to order dated 28th January, 2021 in
CS(COMM) 48/2021 titled as Beiersdorf A.G. v. RSH Global Private Limited
& Anr., where the unique trade dress having dark blue background of plaintiff
had been protected and an ad interim injunction had been passed against
defendant for infringement of the artistic work, label, trade dress and passing
off. Attention was drawn to para 4 of the said order dated 28 th January, 2021
where the Court noted that the distinguishing features of the trade dress of
plaintiff, as apparent from their products, included the brand name of plaintiff,
written in white font on a dark blue background and the distinctive blue colour
of container, registered by German Patent & Trademark Office in class 3. In
this context was the ad interim injunction granted. This, plaintiff's counsel
asserted, afforded some recognition by this Court of the distinctive blue colour
of plaintiff's product.
11. Grievance was against the impugned promotional campaign of defendant
through their sales representatives. Screenshots of the same were provided by
plaintiff, which are extracted as under:
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12. The basic grievance was regarding inherently wrong comparison being
done by defendant between two different categories of creams. Plaintiff has
provided a tabulation for products of plaintiff and defendant focusing on
percentage of fatty matter, which are relevant for said assessment, extracted as
under:
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13. It was pointed out that there were three categories of products in this
cream segment of plaintiff and defendant. The first category being the 'heavy
category' (plaintiff's product being 'NIVEA CRÈME' and defendant's product
being 'PONDS COLD CREAM'). This heavy product, as apparent from the
tabulation above, had 25-28% of fatty matter. The second category was the
'light category' (plaintiff's product being 'NIVEA SOFT' and defendant's
product being 'POND'S LIGHT MOISTURISER'). As apparent from the table
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above, total fatty matter in these products was in range of 10-15%. The third
category was the 'gel category' (plaintiff's product being 'NIVEA MEN FRESH
GEL' and defendant's product being 'POND'S SUPERLIGHT GEL'). As
apparent from the table above, total fatty matter in these products was in the
range of 1-8%.
14. What was stressed by plaintiff's counsel was that the impugned
promotional campaign was comparing plaintiff's product from heavy category
(category 1 above) with defendant's product from gel category (category 3
above). Therefore, not only was the use of the blue tub, a clear reference to
plaintiff's product, but also the comparison made between two different
categories in order to convince a customer that plaintiff's product left oily
residue while defendant's product did not, was misleading. Counsel for plaintiff
stated that if defendant had done a category-wise comparison between plaintiff
and defendant's products, it could potentially still have been a fair comparison,
but to use plaintiff's product from the heavy category containing about 25%
fatty matter and comparing it with defendant's product having 10% fatty matter,
would obviously show a difference in its application and residue. This, it was
argued, was unfair, dishonest, mala fide and misleading.
15. Attention was drawn to para 2(ix) of defendant's written statement where
they had averred that they also sell other moisture variants including heavy
moisturisers. Plaintiff's counsel stated that this amounted to an admission on
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defendant's part that they also had other categories of products, including heavy
moisturisers and creams.
16. What was heavily focused on by plaintiff's counsel are ten different
instances in which the same or similar disparagement issues arose, of plaintiff's
products by defendant, in particular the 'NIVEA' brand in distinctive blue
packaging. It was pointed out that plaintiff is the parent company which owns
the product 'NIVEA' worldwide and is responsible for agitating this issue in
various jurisdictions. In fact, in two of these instances, plaintiff's subsidiary
'NIVEA India Private Limited' had made complaints with Indian regulators.
These ten instances were further elaborated as under:
(i) A letter was addressed on 19th January, 2004 by plaintiff to 'Unilever'
(the parent company of defendant Company) regarding a TV Commercial
(TVC) comparing 'NIVEA' products of plaintiff against 'DOVE' product of
defendant. The TVC had sought to compare 'NIVEA Crème' to a 'DOVE Silk'
product. In response, communication dated 1st March, 2004 was received by
plaintiff's Middle East office from defendant's parent company, 'Unilever',
stating that they had taken necessary measures to ensure that this particular TVC
will not go on Air again.
(ii) An order of District Court, Hamburg, Germany, dated 16 th
September, 2003 between plaintiff and 'Lever Faberge GmbH' (part of
Unilever Group) injuncting an advertisement between plaintiff's 'NIVEA
Crème' and 'DOVE' product regarding "no greasy coating on your skin".
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(iii) A complaint made to 'Advertising Standards Council of India'
(hereinafter referred to as "ASCI") dated 25th October, 2012, regarding TVC
for launch of 'Fair & Lovely Moisture Plus', which had shown a hand pushing
a blue jar off the screen and introducing the 'Fair & Lovely' product (which is
sold by defendant company). A part of the complaint had asserted the
importance of 'NIVEA' blue colour tone and distinctive shape of the jar which
has been identified with plaintiff's product in several countries. The ASCI
rendered a decision/ recommendation on 2nd November, 2012 upholding the
complaint and advising the defendant to withdraw or modify the said TVC.
(iv) A communication dated 17th March, 2013 addressed by plaintiff's Middle
East Office ('Beiersdorf Middle East') to Mr. Sanjiv Mehta of 'Unilever Gulf
FZE', in relation to campaign of comparative advertisements for 'DOVE
Essential Nourishment Lotion', displaying plaintiff's brand as a dark blue tub
with white print and describing it as "greasy". This complaint was regarding in-
mall activations with promoters inviting participants to compare 'DOVE
Essential Nourishment Lotion' with the lotion in the blue tub.
(v) A decision dated 12th May, 2016 of 'Ethics Council of São Paulo' under
'CONAR (National Council of Advertising Self-Regulation)' regarding a
complaint by plaintiff ('BDF NIVEA LTDA') against 'Unilever Brasil LTDA'
of 'DOVE ORIGINAL' campaign marketed on TV for comparison with
'NIVEA' product whereby the Ethics Council agreed to recommend alteration
of the said advertisement.
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(vi) A complaint dated 16th December, 2016 by 'Hindustan Unilever Ltd.'
against plaintiff to the ASCI with regard to 'NIVEA crème' advertisement.
(vii) A communication dated 5th June, 2018 from 'NIVEA India Pvt. Ltd.', the
Indian subsidiary of plaintiff, to defendant regarding 'Ponds Light Moisturiser'
advertisement on digital and social media platforms. This was also related to
'NIVEA' product in colour blue where the 'Ponds Light Moisturiser' had been
compared with an unnamed moisturising product. Comparison was made
between a heavy moisturiser and 'Ponds Light Moisturiser'. Pursuant to the said
notice, said advertisement was withdrawn in a "gesture of goodwill" as per
communication dated 12th June, 2018 from Unilever.
(viii) A communication dated 25th October, 2019 from 'NIVEA India Pvt. Ltd.'
to defendant regarding 'Lakme Peach Milk Soft crème' advertisement. A
comparison was made with the product having the iconic blue colour packaging
and the font style of 'crème'. In the communication dated 5th November, 2019
from defendant, it was stated that the said Instagram story was published for
temporary period and not re-posted or used in any other creative nor in any form
of media advertisements and the matter was requested to be closed.
(ix) Decision of Federal Patent Court of Munich, Germany, dated 14 th
October, 2019 in relation to a cancellation petition by 'Unilever Deutschland
Holding GmbH' against the blue colour ('Pantone 280C') registration. The said
cancellation request by 'Unilever' was withdrawn subsequently.
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(x) In settlement arrived at between plaintiff and 'Unilever Hamburg,
Germany', relating to use by 'Unilever' of various products under 'DOVE'
trademark in iconic blue packaging which was agreed not to be offered /
advertised or placed in the market. The parties had further agreed that it did not
restrict 'Unilever' from using a colour mark blue other than colour 'Pantone
280C'.
17. Plaintiff's counsel also drew attention to portions of reply filed by
defendant to this application being I.A. 7636/2021 under Order XXXIX Rules
1 & 2 of CPC, in particular the following:
(i) Firstly, that the application of an unidentified 'heavy moisturiser' in a
dark blue container and application of a light 'gel-based moisturiser' upon
hands of a consumer was to provide them a feel of products and was not
disparaging. Defendant had stated the colours of the container only with a view
to stress on whether the moisturiser being used was heavy or a light one. This,
plaintiff's counsel asserted, was enough of an admission that the specific
container colour was used in order to point to the heavy cream of plaintiff.
(ii) Secondly, a table was provided in the said reply by defendant which also
noted the difference in the fatty matter between plaintiff's product 'NIVEA
crème' and defendant's 'Ponds Gel Moisturiser' product which was being used
for comparison. The said table as provided by defendant is reproduced below:
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(iii) Thirdly, defendant stated that it was a true statement that defendant's
cream was less sticky and therefore cannot be construed as disparagement. To
this, plaintiff's counsel asserted that this could only be used as a defence when
compared to a similar product, rather than to different products.
(iv) Fourthly, defendant stated that there were other parties using the colour
blue for their products and therefore, plaintiff could not have monopoly over
the same, and the said promotional activity could not possibly refer to just
plaintiff's products. A tabulation had been given of various such products by
defendant. To this, plaintiff adverted to in their rejoinder and responded that all
these products with colour blue, shown by defendant, were actually not
available in India. The said table is provided as under for ease of reference:
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18. Plaintiff's counsel placed reliance inter alia upon the following
decisions:
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18.1 George V. Records, SARL v. Kiran Jogani & Anr., 2004 SCC OnLine
Del 186, where reliance was placed inter alia on para 12 of the decision of the
High Court of Delhi, on the issue of single economic entity.
18.2 Su-Kam Power Systems Ltd. v. Kunwer Sachdev and Anr., 2019 SCC
OnLine Del 10764 in CS (COMM) 1155/2018, decided on 30th October, 2019,
where reliance was placed on para 81 of the said decision to state that defendant
would be estopped from claiming that they had no knowledge of the existence
of plaintiff's product since it would have to be presumed from prior facts and
circumstances. Reliance in these paragraphs has been made to Supreme Court's
decision in B.L. Sreedhar and Ors. v. K.M. Munireddy (Dead) and Ors.,
(2003) 2 SCC 355. This was in the context that defendant cannot claim
ignorance of existence of blue tub product of plaintiff considering there have
been at least ten prior instances where same situation had arisen worldwide
including in India.
18.3 Gillette India Limited v. Reckitt Benckiser (India) Private Limited,
2018 SCC OnLine Mad 1126, a decision rendered by High Court of Madras
decided on19th April, 2018 wherein reliance was placed to state that even if
there was no specific reference to the brand of plaintiff, overall impression
created by advertisement would end up being disparaging of plaintiff's product
because of dominance of plaintiff in that particular category.
18.4 Reckitt Benckiser (India) Ltd. v. Hindustan Lever Limited, 2013 SCC
OnLine Del 6377 titled as CS(OS) No. 375/2013 decided on 14th May, 2013, to
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submit that at the stage of injunction, only a prima facie opinion is taken, and
market surveys/lab reports relied upon by defendant may not be relevant at that
stage. Plaintiff's counsel contended that even they had carried out market
surveys after the filing of the suit where the brand of plaintiff's products were
peeled off, however, the customers even then recognised that as the 'NIVEA'
product of plaintiff.
18.5 Reckitt Benckiser (India) Ltd. v. Hindustan Lever Limited, 2008 SCC
OnLine Del 1731 in CS(OS) No. 1359/2007 decided on 7th July, 2008, where
injunction was granted in relation to advertisement which had shown an orange-
coloured soap as being harmful. Even though the brand was not shown, it was
held by the Court that from the standpoint of a reasonable person, the
advertisement will amount to disparagement of and denigrating plaintiff's
product, and relief was granted.
18.6 Plaintiff's counsel also filed the following decisions - Reckitt & Colman
of India Ltd v. KIWI T.T.K, 1996 (16) PTC 393 (Del); Pepsi Co. Inc and Ors.
v. Hindustan Coca Cola Ltd., 2003 (27) PTC 305 (Del) (DB); Dabur India
Limited v. Colgate Palmolive India Ltd., 2004 (29) PTC 401 (Del); Eureka
Forbes Ltd. vs. Pentair Water India Pvt. Ltd., 2007 (35) PTC 556 (Karn);
Unibic Biscuits India Pvt. Ltd. v. Britannia Industries Limited, MIPR 2008
(3) 347; S.C. Johnson and son Inc. and Anr. v. Buchanan Group Pvt. Ltd.
and Ors., 2010 (42) PTC 77 (Del); Anheuser Bushch Llc v. Rishav Sharma &
Ors., 2020 (83) PTC 217 (Del); Vikram Roller Flour Mills Ltd. v. KRBL Ltd.,
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CS (COMM) 587/2018; Columbia Sportswear Company v Harish Footwear
& Anr., CS (COMM) 1611/2016; Sudhir Kumar @ S. Baliyan v. Vinay
Kumar, CA No. 5620 of 2021; Annamalayar Agencies v. VVS & Sons, Pvt.
Ltd & Ors., 2008 (38) PTC 37 (Mad); ITC Limited v Reckitt Benckiser (India)
Pvt. Ltd., C.S. No. 55 of 2021; Hindustan Unilever Ltd. v. Reckitt Benckiser
(India) Ltd., 2014 (57) PTC 78 (Cal); Hindustan Unilever Limited v Reckitt
Benckiser India Limited, 2014 (57) PTC 495 (Del); Reckitt Benckiser (India)
Ltd. v. Hindustan Unilever Ltd., 2014 (3) CHN (Cal) 527 & Reckitt Benckiser
(India) Ltd. v. Hindustan Unilever Ltd., 2020 (82) PTC 329 (Del) & Reckitt
Benckiser India Pvt. Ltd. v. Hindustan Unilever Ltd., 2021 (88) PTC 584
(Del).
Submissions on behalf of Defendant
19. Mr. Chander M Lall, Senior Advocate placed his submissions on behalf
of defendant in response. First, he drew attention to the impugned activity which
had been alleged by plaintiff as disparaging. The video depicting the activity
was shown to the Court where it could be seen that individuals in malls, who
were field marketing force of defendant, were applying defendant's product
'Ponds Super Light Gel' on one hand of the consumers and cream from a blue
container on the other hand and asking the consumers to look from a magnifying
glass to ascertain which product leaves oily residue.
20. The said video did not have any audio recording, and it was admitted by
the parties that there was no verbal communication in the impugned activity.
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For this the statement made in para 4 (xi) in the written statement was pointed
out, where lack of verbal communication is mentioned, which has not been
denied by plaintiff in its replication.
21. Senior counsel for defendant set the stage for his arguments on the basis
that it was settled law that comparative advertising was permitted, though
disparagement was not. Any marketing exercise involving comparison of one
brand with the other was permitted, but to put another brand in a negative light
amounting to disparaging was not. In this, he stated that no brand was shown
of other cream which was being compared and just another cream was used in
blue tub by the marketing executive in the impugned activity. Without prejudice,
he stated that even if presuming 'NIVEA' brand was shown in the compared
product, it would still not amount to disparagement, since it was merely a
comparison between two sets of creams, as to their relative merits on oily
residue.
22. Disparagement, according to him, could be either for a specific brand or
for a category of products. He contended that even assuming that 'NIVEA'
brand was shown, at best the impugned activity would show that 'NIVEA'
brand was oilier, which could, for a particular user, be more useful and
preferable for use in winter depending on the skin type.
23. Moreover, he pointed out that, in any event plaintiff could not have any
exclusive right on the blue colour bottle or in colour blue as several other
moisturisers are being sold in blue container. For this, he pointed out to screen
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shots showing 3rd party moisturisers in dark blue packaging. Also, plaintiff had
supressed the fact that they were marketing distinct creams including
moisturising creams in different colour packaging. For this, he pointed out to
range of products from video portfolio, screenshot of which is extracted under
for ready reference:
24. Plaintiff did not have any trademark registration over the colour blue in
'Pantone 280C' in India. Trademark rights were territorial and registration in
any other jurisdiction will not inure to plaintiff's benefit.
25. It was argued that even if the product in the impugned activity is
plaintiff's product, no conclusion was being reached that which product was
better or should be used by the consumer. The products were also not
completely different as plaintiff's product was promoted as 'NIVEA crème' as
an all-season moisturiser, suitable for all skin types and not as a heavy
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moisturiser. The products were intended for the same purpose i.e. a moisturising
cream and they were being compared in relation to a verifiable and material
feature i.e. their effect on the skin of the consumer. Therefore, plaintiff's
contention that they were dissimilar products, could not be accepted.
26. Regards the plaintiff's contention that there was a history of litigation
between the parties on the basis of use of colour blue, senior counsel for
defendant contended that adjudication has to be on merits of the case and not
past disputes. The impugned activity, which is alleged to be disparaging, has to
be looked on its own merits.
27. Defendant's counsel placed reliance inter alia upon the following
decisions:
27.1 Britannia Industries Ltd. v. ITC Ltd., (2017) SCC OnLine Del 7391,
where ITC had filed a suit seeking injunction against Britannia from using a
deceptively confusing similar trade dress for its 'Nutri Choice' product, copying
that of ITC's 'Sunfeast' product.
27.2 Colgate Palmolive Company & Anr. v. Hindustan Unilever Ltd., 2013
SCC OnLine Del 4986, where the issue before the Division Bench of this Court
was relatable to an advertisement campaign pursued by a party selling its
toothpaste through print advertisements as well as television commercials
(TVCs). The advertisement sought to convey that 'Pepsodent Germicheck
Super Power' was a 130% better product, than the opposing party's product
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'Colgate Dental Cream Strong Teeth'. The suit for disparagement had been
filed and injunction was not granted by the Single Judge.
27.3 Dabur India Ltd. v. M/s. Colortek Meghalaya Pvt. Ltd., 2010 SCC
OnLine Del 391, wherein Division Bench of this Court was dealing with telecast
of an advertisement of 'Good Knight Naturals' mosquito repellent cream, which
was considered disparaging by plaintiff / appellant who manufactured
'Odomos'. The court traversed the law regarding disparagement.
27.4 Horlicks Ltd. & Anr v Heinz India (Pvt.) Ltd., 2018 SCC Online Del
12975, where the Single Judge of this Court was dealing with an issue of
disparagement against plaintiff's brand 'Horlicks' being compared by
defendant's product 'Complan'. The disparagement was that one cup of
'Complan' has same amount of protein as two cups of 'Horlicks'. The court
traversed law regarding disparagement and reached the conclusion that the
impugned advertisement compared a material element verifiable and
represented feature of the goods in question. It further stated that defendant was
not obliged to compare all parameters, and it was open to advertiser to highlight
a special feature or characteristic of his product, which sets its product apart
from that of its competitors.
27.5 Havells India Ltd. & Anr. v. Amritanshu Khaitan & Ors., 2015 SCC
OnLine Del 8115, wherein Single Judge of this Court was dealing with plaintiff
suit alleging disparagement by the defendants by comparing their product
'Eveready LED Bulb' with plaintiff's product 'Havells LED Bulb' exhorting the
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customers to 'check lumens and price before you buy' before purchase. The
Court opined that comparative advertising was legal and permissible being in
the interest of vigorous competition and public entitlement and can be resorted
only with regard to like products.
27.6 Dabur India Ltd. v. Emami Ltd., 2019 SCC OnLine Del 9022, where the
Single Judge of this court was dealing with plaintiff's application for seeking
restraint of advertisements by defendant which was comparing its sugar free
variant 'Chyavanprashad' with 'Chyawanprash' which contains sugar.
27.7 Reckitt Benckiser (India) Pvt. Ltd. & Anr. v. Wipro Enterprises (P)
Limited, 2023 SCC OnLine Del 2958. Single Judge of this Court was dealing
with issue of disparagement of plaintiff's 'Dettol' hand wash with 'Santoor'
hand wash product of defendant.
27.8 Counsel for defendant has also filed decisions of Novartis A.G. & Ors.
v. Mehar Pharma & Ors., 2005 (30) PTC 160 (Bom) & Reckitt Benckiser
(India) Limited v. Gillete India Ltd., (2016) 68 PTC 67 (DB), Reckitt
Benckiser (India) Ltd. v. Hindustan Unilever Ltd., 2014 (57) PTC 78 (Cal) &
Gillette India Limited v. Reckitt Benckiser (India) Pvt. Ltd., 2018 SCC OnLine
Mad 1126.
Submissions in Rejoinder
28. Counsel for plaintiff responded to defendant's submissions essentially
reiterating that defendant was not alien to plaintiff's blue colour product and
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had surprisingly insisted in using a blue colour jar for cream comparison. This
is despite that defendant had been stopped from using this colour in ten other
instances which had already been cited. Attention was drawn in particular to the
written statement filed by defendant in para (xv) stating that plaintiff's 'NIVEA
crème' was a cream-based product whereas defendant's 'Ponds Superlight Gel'
is a gel-based product. It was stated in the written statement that cream-based
moisturisers are usually heavy, making the skin sticky and not suitable for all
skin types irrespective of the season or geographical location of the consumer.
On the other hand, gel-based moisturisers are of light texture, oil free, suitable
for all skin types, non-sticky and provide hydration to the skin without clogging
pores. It is reiterated in para (xvi) of defendant's written statement that
defendant's product, being a gel-based moisturiser, is a superlight weight gel
providing hydration without getting one's skin sticky and leaves lesser oily
residue as compared to other cream-based moisturisers and this was truthful
statement by defendant.
29. Counsel for plaintiff stated that impugned activity was comparing the
heaviest cream of plaintiff with the lightest gel of defendant, and not even the
intermediate products which are sold by both parties.
30. Plaintiff's counsel used a different benchmark to state that senior counsel
for defendant was trying to compare a 'running shoe' with a 'trekking shoe' or
'chywanprash' with a 'herbal paste'. He further submitted that defendant
lacked the courage to compare correct and similar versions of the moisturisers
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/ creams. Plaintiff's counsel stated that there was no reason as to why defendant
was simply comparing a heavier cream to their light gel, had to use a blue
coloured distinct tub which was indicative and suggestive of plaintiff's product
rather than using any other colour. It was just a matter of proving the lighter
consistency of their product.
Analysis
31. The jurisprudence on comparative advertising developed in India through
various Court decisions, which are, most usefully and comprehensively,
traversed and documented in a recent judgement of a learned Single Judge of
this Court in Wipro Enterprises (supra). No purpose would be served in
reinventing the wheel and it would be best to advert to the final elucidation and
enumeration of principles, set out in para 111 of the said judgement (parts that
may have relevance to the discussion which follows, are underscored, for ease
of reference):
"111. The overall legal position that emerges from
these decisions is, therefore, the following:
(i) Where the advertisement does not directly or
indirectly refer to the plaintiff's product, the
plaintiff could not claim that its product was being
targeted merely because it enjoyed a lion's share of
the market. Targeting of the plaintiffs product is the
sine qua non, whether expressly or by necessary
implication. That implication cannot, however, be
premised merely on the market share of the
plaintiff's product.
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(ii) At the same time, even if the rival product was
not specifically targeted, an indirect
representation, which was sufficient to identify the
product, was as good as direct targeting.
(iii) Within the limits of permissible assertions,
comparative advertising is protected under Article
19(l)(a) as commercial speech. In comparative
advertising, a certain amount of disparagement is
implicit.
(iv) Subject to the exception in (v) infra, an
advertisement must not be false, misleading, unfair
or deceptive, irrespective of whether it is extolling
the advertised product or criticising its rival.
Misrepresentation and untruth in advertisements is
impermissible. An advertisement has necessarily to
be honest. It was not only, thereby, required to be
accurate and true, but could also not convey an
overall misleading message, seen from the stand
point of the customer.
(v) Puffery is the only exception, as puffery, by its
very nature, involves exaggeration and
embellishment, and an element of untruth is bound
to exist in it. Untruth in puffery is permissible only
because puffery is inherently not taken seriously by
the average consumer. Puffery is not, therefore, to
be tested on the anvil of truth. Some element of
hyperbole and untruth is inherent in puffery.
(vi) Mere puffery is not actionable. One can claim
one's goods to be better than others. Extolling the
virtues of the plaintiffs product as containing
natural ingredients, absent in other products, was
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not disparaging. Extolling of one's positive
features is permissible.
(vii) However, denigration of a rival's or a
competitor's product is completely impermissible.
While it is permissible, therefore, to state that the
advertised product is superior to the competitor's,
it is not permissible to attribute this superiority to
some failing, or fault, in the product of the
competitor. An advertisement cannot claim that a
competitor's goods are bad, undesirable or
inferior. The subtle distinction between claiming
one's goods to be superior to the others', and the
other's goods to be inferior to one's, has to be
borne in mind.
(viii) Serious statements of facts cannot, however,
be untrue. The truthfulness of such assertions or
statements of fact is to be strictly tested.
(ix) What matters is the impression that the
advertisement or commercial registers in the
viewer's mind. The hidden subtext, so long as it is
apparent to the average consumer, therefore,
matters. The impact could be conveyed by clever
advertising or innuendo instead of conveying of a
direct message.
(x) The reasonable man, from whose point of view
the advertisement is to be assessed, is a right
thinking member of the general public, and not a
member of any particular class or section. He
(a) is not naive,
(b) can read between the lines,
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(c) can read in implication into the advertisement,
(d) may indulge in some amount of loose thinking,
(e) is not avid for scandal and
(f) does not select a derogatory, or bad, meaning
to be attributed to an advertisement where
alternative, non-derogatory meanings are also
available.
(xi) While examining whether a commercial is
disparaging, the Court is required to see
(a) the intent of the commercial
(b) the manner of the commercial and
(c) the story line of the commercial, and the
message that it seeks to convey.
What has to be seen is the overall effect of the
advertisement, i.e. as to whether the advertisement
is promoting the advertised product or disparaging
the rival product. The advertisement has to be seen
as a whole, not frame by frame. While promoting
his product, an advertiser might make an
unfavourable comparison, but that may not
necessarily affect the story line or message or have
an unfavourable comparison as its overall effect.
(xii) The Court should neither undertake an over-
elaborate analysis, nor be too literal in its
approach.
(xiii) The advertisement was to be viewed as a
normal viewer would view it, and not with the
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specific aim of catching disparagement. Words
used in the advertisement are meant to be
understood in their natural, general and usual
sense and as per common understanding.
(xiv) The time spent in showing the product was
irrelevant; what was relevant was the context in
which the product was shown.
(xv) A plaintiff cannot afford to be hypersensitive,
as the choice of the article which a consumer would
select would depend on various factors including
market forces, economic climate and nature and
quality of the product.
(xvi) It is necessary to provide a fair amount of
latitude to the advertiser as well."
(emphasis added)
32. While these principles serve as useful guideposts in any assessment of
comparative advertising, each case in unique, with its own facts and context.
Therefore, a specific assessment is necessary. In this context it would be useful
to appreciate submissions by counsels, as noted above. Our analysis revolves
around the following principal aspects: first, the association of the blue cream
tub presented as part of the impugned activity, to that of plaintiff's 'NIVEA
Crème'; second, the knowledge of the defendant of the distinctiveness in the
blue colour of the plaintiff for 'NIVEA Crème'; third, the intent and objective
of using only the blue cream tub as part of the impugned activity; fourth, the
comparative presented to the consumer during the impugned activity; and fifth,
whether it was mere puffery or disparagement.
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The Colour Blue
33. The distinctive blue colour of plaintiff's 'NIVEA Crème' is identified as
'Pantone 280C' and is used as a 'source identifier', by plaintiff. This, as stated
by plaintiff, was first created and developed in 1925. The word 'NIVEA' was
first registered in 1943 in Class 3 in India and later, in other classes as well. The
trademark registrations, as extracted in para 6 above show that a predominant
set of marks, particularly the device marks, adopted the 'Pantone 280C' colour
and in particular the registration numbers i.e. 1329991, 2232698, 2856286 and
3263712, all in Class 3.
34. The distinctive blue colour ('Pantone 280C') was also given protection
by the German Patent and Trademark Office since 2007. It is prima facie
evident from the documentation filed, that the colour is not used by plaintiff for
a decorative purpose but functions as a 'source identifier' and it has been used
extensively by plaintiff for its product, in particular the cream tub. The adoption
of the distinctive colour, about a century back and consistent use of the same by
plaintiff would certainly lead to a prima facie conclusion that plaintiff's cream
product, in this distinctive blue colour tub, will be associated with plaintiff.
35. Plaintiff's counsel had also drawn attention to a decision of this Court
dated 14th November, 2008 in RSH Global (supra) noted in para 10 above,
where this Court passed an injunction inter alia restraining defendant from
selling products infringing the plaintiff's distinctive trade dress. The
distinguishing features of the trade dress included plaintiff's brand name
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'NIVEA' written in white font on a dark blue background in a distinctive blue
colour. While defendant seeks to distinguish by stating that this is only relating
to an overall trade dress, the distinctive blue colour does get associated with
plaintiff's product. The assertion by defendant that plaintiff sells other products
as well in different colour packaging besides the colour blue, would be
irrelevant considering that their flagship product 'NIVEA Crème' and other
associated products are sold in packaging, which use a distinctive blue colour.
36. The distinctiveness in the blue colour is also borne out from the various
instances which plaintiff's counsel relied upon and which are enumerated in
para 16 above. It is not denied that defendant is part of the 'Unilever Group'
worldwide and basis the 'single economic entity principle' [reliance has been
placed on George V. Records (supra)], it cannot deny that it does not have
knowledge of the association of the distinctive blue colour with plaintiff's
product. Unilever's cancellation petition in Germany was withdrawn;
withdrawals and settlements have been made by associate companies under the
'Unilever' umbrella in various countries in relation to comparative
advertisement issues which arose and the same is evident from para 16(i), (vii),
(viii) and (x) above. A previous complaint had been made to the ASCI where a
recommendation was made that defendant withdraw the TVC which showed a
hand pushing a blue jar off the screen, as evident from para 16(iii) above. These
and other instances, as cited in para 16 above, persuade this Court in favour of
plaintiff, in that defendant cannot plead ignorance regarding the distinctive blue
colour association with plaintiff's product. In fact, from these situations, it
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seems that repeated attempts have been made in order to adopt aggressive
comparative advertising by defendant, which has not succeeded in other regions
of the world as well.
37. Prima facie, the colour blue, in particular 'Pantone 280C', is certainly
associated for years with plaintiff's product 'NIVEA', which has achieved
distinctiveness for plaintiff's product and has become popular. Plaintiff
claiming exclusivity in this colour is not the issue, however, the use by
defendant in the impugned activity of a blue colour tub is too much of a
coincidence to ignore. The allusion seems to be to the distinctive blue colour
used by plaintiff.
38. The propensity to compare with plaintiff presumably arises on plaintiff
being possibly the market leader in this category of personal care products,
namely, creams and lotions, or at the very least a dominant competitor to the
defendant. The instances in para 16 above also bear this out. Plaintiff company
is over 130 years old and claims to be one of the leading skin care and personal
care companies in the world, as evident from para 3 of the plaint, and has more
than 150 affiliates worldwide. It is natural in situations of comparative
advertising that the target of the advertiser is usually a competitor and more so,
a competitor with a better market share. This is natural, since market warfare
involves strategies to dilute a competitor's brand, reduce their sales, in order that
a larger market share is procured by the advertiser.
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39. The use by defendant of a blue tub cream, in exactly the same distinctive
colour, seems prima facie to have the objective to make a consumer draw
association to plaintiff's product. Why defendant chose not to use a cream in
any other colour tub, begs an answer which was not available during arguments,
if indeed the attempt was not to disparage plaintiff's product.
40. Even though it cannot be taken as proof in isolation, market survey
conducted by plaintiffs after filing the suit with peeled off labels from various
products also noted that the dark blue tub was associated generally with
'NIVEA' by the consumers.
41. The significance of colour has been the focus of decisions of Courts in
India and reference may be made inter alia to Parle Products (P) Ltd. v. J.P.
and Co., (1972) 1 SCC 618 and Colgate Palmolive Co. & Anr. v. Anchor
Health and Beauty Care (P) Ltd., 2003 SCC OnLine Del 1005.
Defendant's knowledge
42. The knowledge of defendant about Pantone blue colour being associated
with plaintiff is evident from various instances cited by counsel for plaintiff in
India and abroad. Having been locked in litigation, suffered injunctions, and
received complaints on this very issue in other countries, there was no reason
why defendant had to choose a similar blue colour tub for comparison in order
to promote their own product.
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43. Reliance by plaintiff's counsel in Su-Kam (supra), on estoppel, is
therefore apposite.
Intent and objective
44. Defendant could have easily used a different colour tub and written
'heavy cream' on top. By using an 'unlabelled' distinctive blue colour jar/tub
for the cream, defendant has uncategorized the product, leaving the consumer
with absolutely no information as to the consistency of the cream being used
for comparison. Comparison by its very nature ought to be with another
identified product and cannot be a comparison to an abstract unidentified
product. By using a 'non-labelled' blue tub, the question that needs to be
considered is what comparison is the defendant trying to make and with what;
which cream is it trying to compare its cream to?
45. There were no answers available on behalf of the defendant for these
questions. By choosing to use a distinctively blue color tub without a label,
defendant has ventured into the area of deception, misstatement and by
implication, into the area of disparagement.
46. Defendant's contention that a comparison with a 'generic category'
(where the disparaged product is a reference to a general category of products
and not to a specific 'labelled' product of plaintiff) will not amount to
disparagement, is not acceptable in light of the decisions by various courts in
the country. Reference may be made to Reckitt and Colman of India Ltd. v.
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M.P. Ramchandran & Anr., 1998 SCC Online Cal 422 (Single Judge of the
Calcutta HC) (the product category being a clothes whitener, which was blue
in colour); Eureka Forbes Ltd. v Pentair Water India Pvt. Ltd., 2006 SCC
OnLine Kar 753 (Single Judge of Calcutta HC) (category of goods being water
purifiers of UV technology); and Dabur India Ltd. v. Colgate Palmolive Ltd.,
2004 SCC OnLine Del 718 (Single Judge of this Court) (category of goods
being red tooth powder products). In all these decisions, despite the comparison
made by defendant with a generic product without any specific brand, relief was
granted to plaintiff, particularly on the basis that generic disparagement without
specifically identifying or pin-pointing the rival product, was equally
objectionable. This aspect has also been crystallized in para 111(ii) of Wipro
Enterprises (supra).
47. In Dabur India Ltd. v. Colgate Palmolive Ltd., 2004 SCC OnLine Del
718 (supra), it was stated:
"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 genre of a produce within which a
complaining plaintiff falls and raise a defence
that the plaintiff has not been specifically
identified..."
(emphasis added)
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48. Certain other decisions where there was an indirect or no identification
to plaintiff's product, also held the advertisement as objectionable. Reference is
made to Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd., 1996 SCC Online
Del 335 (Single Judge of this Court) where the comparative was done with a
shoe polish bottle identical in shape and configuration to plaintiff's bottle with
a red blob on it, driving an association with 'Cherry' being the plaintiff's
product; Annamalayar Agencies v. WS & Sons Pvt. Ltd. & Ors., 2007 SCC
OnLine Mad 1645 (Single Judge of the Madras HC) where a blue bottle without
labelling was shown and was identified with the 'Parachute coconut oil' bottle
of plaintiff; Reckitt Benckiser (India) Ltd. v. Hindustan Lever Limited, 2008
SCC OnLine Del 1731 (Single Judge of this Court) where an orange coloured
soap was shown as being harmful, drawing association to 'Dettol' soap of
plaintiff. This decision was confirmed by the Division Bench in Hindustan
Unilever Limited v. Reckitt Benckiser India Ltd., 2014 SCC OnLine Del 490
where the Court proceeded inter alia on the basis that the plaintiff held a major
share of the market and therefore, it could not be said that there was no attempt
to disparage the product of plaintiff. If the message conveyed through the
advertisement is loud and clear it would amount to a deliberate act by defendant
to reduce sales of plaintiff.
49. In Reckitt & Colman of India Ltd. v Kiwi T.T.K. Ltd., 1996 SCC Online
Del 335 (supra) it was stated:
"13. The advertisement appears on the electronic
media for a few seconds and it shows a bottle of
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KIWI from which the "KIWI" is written on the
white surface which does not drip as against
another bottle described as "OTHERS" which
drips. The bottle of "OTHERS" is shown as
"Brand X". The allegations are that this "Brand
X" looks similar to the bottle of the liquid shoe
polish of the plaintiff for which the plaintiff
allegedly has a design registered in its name.
There is a red blob on the surface of this bottle
which allegedly represents "CHERRY" which
also appears on the bottle of the product of the
plaintiff ........ I am, in any case, not going into
the question as to what is the effect of the issue of
other advertisements of the similar nature by the
manufacturer of other products. Prima-facie, I
am of the opinion that after the removal of the red
blob from the bottle of "Brand X", the same
cannot be linked to the product of the plaintiff and
consequently, in my opinion, there will not be any
question of disparaging or defaming the product
of the plaintiff."
(emphasis added)
50. In Reckitt Benckiser (India) Ltd. v. Hindustan Lever Limited, 2008 SCC
OnLine Del 1731 (supra), it was stated:
"47. From this discussion, it is apparent that the
advertisement disparages the plaintiffs soap and
it is not an advertisement which seeks merely or
only to promote the superiority of the defendant's
LIFEBUOY soap over an ordinary antiseptic
soap. As I have already pointed out, if it were a
case of mere promotion of superiority of the
defendant's product, alone, the plaintiff would
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not have had a case as that would have only
entailed a permissible "better" or "best"
statement. The advertisement comprises of two
part; one which denigrates and disparages the
product of the plaintiff and the other which
promotes the purported superiority of defendant's
LIFEBUOY soap. The part that disparages does
so because it indulges in the "good versus bad"
comparison. The "good" being the defendant's
LIFEBUOY Skinguard and the "bad" being the
orange coloured bar of soap which has been
identified, as discussed under Issue No. 1, as the
plaintiffs DETTOL Original soap."
(emphasis added)
51. In Gillette India Limited v. Reckitt Benckiser (India) Private Limited,
2018 SCC OnLine Mad 1126, the Division Bench of the Madras High Court
stated:
"96. The meaning of the expression "disparage"
as given in the commonly used dictionaries is,
inter alia, to speak slightingly, to undervalue, to
bring discredit or dishonour, to deprecate, to
degrade, to derogate, to denigrate, to defame, to
reproach, to disgrace, or to unjustly class.
Disparagement is, inter alia, the act of speaking
slightingly, of undervaluing, of bringing discredit
or dishonour, of deprecating or degrading or
disgracing or unjust classing. It also means
derogation or denigration or defamation or
reproachment.
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97. Whether an advertisement is disparaging or
not would depend on several factors, for which
each advertisement would have to be judged on
its own merits, on consideration of the overall
impact of the picture that is portrayed, the
language used, the histrionics, the gesticulations,
the movements, acrobatics, catch phrases,
hilarity or other catchy screen shots. While
humour, hilarity or even ridiculing to highlight
the advantages of one's own product may be
permissible, ridiculing services and products of
another would amount to disparagement.
98. To decide whether an advertisement is
disparaging, the Court has to consider (i) the
intent of the commercial advertisement; (ii) the
message sought to be conveyed; and (iii) the
mode and manner of conveying the message.
Condemning the goods and services of a
competitor or ridiculing the same or showing the
same as substandard would amount to
disparagement.
xxx xxx xxx
108. In a disparagement suit, the Court would
have to examine whether the object of the
advertisement is to highlight the benefits of the
products of the advertiser in comparison to those
of others or to denigrate the products of others,
which would amount to defamation.
xxx xxx xxx
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116. It is true, as argued by Mr. Raman, that
there is no specific reference to "VEET" in the
advertisement. However, admittedly, the
respondent plaintiff dominates 80% of the market
in depilatory creams. As observed above, the
overall impression created by the advertisement
by way of video clip is that all hair removal
creams, which would include the hair removal
creams of the respondent plaintiff, are harmful,
having strong chemicals which are as strong as
bathroom cleaners. Prima facie, there is
disparagement of the depilatory cream of the
respondent plaintiff."
(emphasis added)
52. Defendant's contention that since they have not identified any brand of
the heavy cream that they were using to compare with (but were using a label-
less tub), it would not be a case of disparagement, is therefore not acceptable.
The comparative as presented
53. It is an admitted position that both plaintiff and defendant have different
categories of creams, essentially three categories, each of which have a different
percentage of fatty matter. Defendant chose to compare their lightest product
('Ponds Superlight Gel') to the heaviest product ('NIVEA Crème') of plaintiff,
is inherently misleading. A comparative may be made between similar products,
if the distinguishing feature relates to a parameter which would be different for
a different category.
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54. Defendant admits in its written statement that 'Ponds Superlight Gel'
being a gel-based moisturizer provides hydration without giving a sticky feel or
leaving oily residue, as compared to other cream-based moisturizers. It is further
admitted that cream-based moisturizers are usually heavy making the skin
sticky. The relevant averment is extracted as under:
"..cream-based moisturisers are usually heavy,
make the skin sticky and may not be suitable for all
skin types, irrespective of the season or
geographical location of the consumer. On the
other hand, gel-based moisturisers are light in
texture, oil-free, suitable for all skin types, non-
sticky and provide hydration to the skin without
clogging pores."
(emphasis added)
55. The comparison by defendant of dissimilar product particularly relating
to material feature which was ought to be compared, is in the opinion of this
Court, misleading. Even though there was no verbal communication in the
impugned activity, the impression being given to a consumer was that
defendant's product was lighter and better in the material feature of 'stickiness'
and cream in the blue tub was not. It would naturally lead to a consumer being
extremely watchful when faced with a choice of buying plaintiff's product
(which would have same dimensions and same distinctive colour).
56. If defendant was promoting its lighter gel, there was no reason why they
could not have promoted all their products showing that each of the products
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have different consistencies in heavy, medium and light gel and there is a range
for a consumer to choose from. To compare it with a specific distinctive blue
tub cream, to show that their gel was lighter without full knowledge being given
to the consumer, is in opinion of this Court, misleading.
57. There is no reason why defendants couldn't have used a heavy cream in
a different colour tub in order to compare, and there was no explanation
forthcoming from defendant's side on this issue.
58. The impugned activity critically does not present any audio. This does
not bode well for defendant's case, since it is up to imagination, as to what was
being communicated either by gestures or verbal communication during the
impugned activity. Silence, it is said, speaks volumes and in this case, also
amounts to an omission to clarify to the consumer that different categories of
products are being compared.
59. As evident from para 111(iv) of the Wipro Enterprises (supra)
guidelines, advertisement should not be false, misleading, unfair or deceptive.
The use of a comparative between a lighter hydrating gel to a heavy
moisturizing cream, is itself misleading for a consumer and does not give full
information, while extolling its own product.
60. In fact, even in the ASCI CODE FOR SELF-REGULATION OF
ADVERTISING CONTENT IN INDIA, Chapter IV, Clause 4.1(a), it stated
that comparative advertisements are permissible provided, "it is clear what
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aspects of the advertiser's product are being compared to what aspects of the
competitor's product"; and in clause 4.1(d) that "there is no likelihood of the
consumer being misled as result of the comparison, whether about the product
advertised or that with which it is compared".
61. Comparison of dissimilar products arose in a case, in USA, in Bernard
Food Industries, Inc. v. Dietene Company, 415 F.2d 1279 (7th Cir. 1969). In
this case, both plaintiff and defendant had produced instant custard mix, the
plaintiff, an eggless one, while the defendant, with egg solids. The defendant,
'Dietene', made a comparison of their product with the eggless mix product of
the plaintiff being 'Bernard', showing that the 'Bernard Custard', to be inferior
in flavour, texture, nutrition and cost to that of 'Dietene's Delmar Quick Egg
Custard'. Even though, the decision was not in the favour of plaintiff on the
basis of the scope and purview of section 43 (a) of the Lanham Act, the
commentators have criticized the decision, in that defendant had both
misrepresented plaintiff's product by giving a false description or representation
and put its own product in commerce, in order to reap the benefit of that
misrepresentation and that plaintiff therefore, lost sales and further, the public
was misled. Further, it was also noticed by the U.S Court in Skil Corp. v.
Rockwell Int'l Corp., 375 F. Supp. 777 (N.D.III.1974) that a misrepresentation
was made by defendant in a disparagement action in the case of Bernard
(supra).
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62. Disparagement actions are likely to include misleading advertisements as
well, where there is civil liability or damage by false description or
representation of goods or services. This in the USA, has been considered as,
"comparative advertising abuses". False representation can be either
affirmatively misleading statements, or partially correct statements of failure to
disclose material facts.
Puffery or disparagement
63. Black's Law Dictionary defines disparagement as, "A derogatory
comparison of one thing with another; or a false and injurious statement that
discredits or detracts from the reputation of another's character, property,
product or business."
64. Defendant's contention that nothing negative was being said about
plaintiff's product, in that it was denigrating or rubbishing plaintiff's product,
is a submission, difficult to accept. The clear impression to the consumer was
that the product being compared with, left a heavy oily residue was certainly
misleading as dissimilar products were being compared. The Courts have held
that even though advertisements may not be disparaging, misleading elements
would have to be excised out. Comparison has to be of like products, not unlike
products; 'apples to apples, oranges to oranges', as is the commonly used
phrase.
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65. 'Stickiness' in the realm of creams, may be considered as a negative
attribute. In any event, by pointing out that a non-sticky product was 'better',
the clear message was that 'stickiness' is a negative attribute. The suggestion
by Senior Counsel for defendant that 'stickiness' may be a useful positive
feature in a given circumstance was not supported by any document. Consumer
of creams is typically not seeing 'stickiness' but 'hydration' in 'moisturisation',
certainly not 'stickiness'.
66. Therefore, for defendant to contend that stickiness or oily residue was not
necessarily denigrating or disparaging, cannot be accepted. The very basis of
the comparison was that the blue tub cream left an oily residue. 'Stickiness' is
used as a pejorative in this context.
67. It is the "overall effect" and the "message conveyed" which needs to be
seen for assessing disparagement. The court in Colgate Palmolive (supra)
reached a conclusion that impugned TVC cannot be stated to be per se
disparaging but the voice over at the end of the TVC was misleading and
inaccurate. The statement in the voice over was directed to be deleted from the
TVC and to be suitably modified to refer only to 'Colgate ST (Colgate Strong
Teeth)'. The court said that what is to be considered, is whether the essential
message conveyed by the impugned TVC is prima facie truthful or misleading.
68. This Court in Dabur India v Colortek (supra) has specifically held that
Supreme Court in Tata Press Ltd. v. MTNL, (1995) 5 SCC 139 has laid down
that false, misleading, unfair or deceptive advertising is not protected
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commercial speech. Hyped-up advertising may be permissible but it cannot
transgress the grey areas of permissible assertion. The test of untruthfulness has
therefore, been propounded and therefore cannot be tolerated even though
commercial speech is largely permitted, as part of rights granted under the
Constitution.
69. While counsels seem to state that there were no judgments on in-mall
marketing campaigns, this Court is of the opinion that the law relating to
advertisements in any form whether print, digital, TVC will extend to such
campaigns as well, since ultimately it is a method of promotion and marketing
of company's product to a consumer, and in fact in a much more personalised
and interactive set up. What communication is being done to a user in that
interaction is open to anybody's imagination. At least in an advertisement in
print digital, medium or TVC, the assessment is limited to what is seen or heard
in the commercial. In an in-mall marketing campaign, the possibilities of
imputation, aspersion, implication, overstatement, leading to even a slight
disparagement, will be limitless. The marketing executives body language,
gestures, conversations or suggestive indications will also animate the
promotional interaction. There is therefore, intrinsically lesser material
available to the court to consider and the threshold would have to be slightly
lesser in this regard when considering possibility of the impugned activity being
misleading or disparaging.
Conclusion
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70. In these facts and circumstances, this Court is of the opinion that the
impugned activity undertaken by defendant choosing to compare plaintiff's
'NIVEA' products (either expressly or by implication or association) and
defendant's products, especially those under the trademark 'Ponds', are prima
facie misleading and disparaging, and cause irreversible prejudice to plaintiff.
71. Defendant, their directors, wholesalers, distributors, partners,
proprietors, agents or assignees are restrained from conducting the impugned
activity or such similar marketing/advertising activity, comparing plaintiff's
'NIVEA' products (either expressly or by implication or association) and
defendant's products (especially those under the trademark 'Ponds'), which
amount to disparagement or denigration of plaintiff's products or business.
72. Accordingly, the said application stands disposed of, with the aforesaid
directions.
CS(COMM) 300/2021
1. List on 24th July, 2024 before the Joint Registrar.
2. Judgment be uploaded forthwith on the website of this Court.
ANISH DAYAL, J.
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