INTERIM APPLICATION NO.1 OF 2019

4th December 2019

Petitioner Counsel: Mr. Virag Tulzapurkar Mr. Hiren Kamod Mr. Nishad Nadkarni Ms. Khushboo Jhunjhunwala Ms. Khaitan and Co.
Respondent Counsel: Mr. Venkatesh Dhond Mr. Rohan Kadam Mr. Durgaprasad Poojari
Act Name:

Cases Cited :
Paras 4, 7: Gujarat Co-operatrive Milk Marketing Federation Ltd Vs. Hindustan Unilever Ltd., Appeal No.340/17 in Nt. Of Motion (L) No.690/17 in Suit (L) No.204/17
Para 7: Godrej Consumer Products Limited Vs. Initiative Media Advertising, 2012 (52) PTC 260 (Bom)
Para 7: Dabar India Limited Vs. Colgate Palmolive India Ltd., 2004(29) PTC 401 (Del)
Para 7: Reckitt Benckiser (India) Ltd Vs. Hindustan Lever Limited, (2013) 200 DLT 563
Para 7: Annamalayar Agencies Vs. VVS & Sons Pvt. Ltd., 2008 (38) PTC 37 (Mad)
Para 7: Reckitt & Colman of India Ltd. Vs. M.P. Ramchandran, 1999 (19) PTC 741

JUDGEMENT

1. This interim application has been made in a commercial IP suit, which complains of disparagement of the Plaintiff's goods and infringement of its registered trade mark.

2. The Plaintiff is a manufacturer and marketer of various well known and established household brands, such ‘Nihar’, ‘Parachute’, ‘Parachute Advansed’, Saffola, ‘Livon’, ‘Hair & Care’, ‘ Silk-N-Shine’ etc. The Plaintiff markets multiple products such as hair oil, edible oil, health foods, hair care, skin care etc. with the use of these brand names, all of which are registered trademarks of the Plaintiff. The grievance of the Plaintiff in this case is in respect of hair oil marketed by it, particularly ‘Amla Hair Oil’ marketed under the trade mark NIHAR with or without addition/s to it (‘NIHAR range’). It is submitted that the Plaintiff is a market leader in terms of sales by volumes; about 42.6 per cent of Amla Hair Oil sold in the market is under the Plaintiff's NIHAR range of trademarks, though by value its market share is said to be of 30.8 per cent. It is submitted that the bottles, in which NIHAR range of Amla Hair Oil is marketed by the Plaintiff, have a particular size, shape, features, contours and configuration; these are distinctive and unique to the products marketed by the Plaintiff. It is submitted that the Plaintiff has also designed distinctive labels for NIHAR range of Amla Hair Oil, which go along with, and take, the shape and size of the bottles. The Plaintiff even has a registration for the particular label, which is used on its bottles with the same shape. The Plaintiff claims to have acquired enormous reputation and goodwill in Amla Hair Oil products marketed by it under the NIHAR range and in the distinctive shape, size, etc. of the bottles used for the products. The grievance of the Plaintiff is that the Defendant, who is a rival manufacturer and marketer of amala hair oil, is issuing advertisements in newspapers comparing its amla hair oil with rival hair oils terming them as 'cheap oil' and disparaging them as bad quality products making hair weak, leading to their breakage and fall. It is submitted that advertisements create an unmistakable impression that these rival cheap products, described therein as deficient in quality, are the Plaintiff's products, which are incidentally much cheaper than the Defendant's rival products. It is submitted that the distinctive shape, size and contours of the bottles in which the Plaintiff markets its products are displayed as bottles of cheap oil, which is said to be harmful to hair and which is said to cause hair fall or breakage. It is submitted that these advertisements are issued with a malicious intent to slander or disparage the Plaintiff's NIHAR range of Amla Hair Oil and gain unjustly by promoting its own hair oil by showing the Plaintiff's products in a poor light. The Plaintiff submits that this amounts to injurious falsehood and disparagement of the Plaintiff’s goods.

3. Before we consider the Plaintiff's grievance, it must be noted at the outset that the Defendant has offered to change the colour, shape, size and contours of the rival bottle of hair oil used by it in its advertisements for comparison with its own brand of amla hair oil. This statement is made with prejudice by learned Counsel for the Defendant. Learned Counsel also produces a sample advertisement showing the changed shape, size and contours of the bottle now proposed to be used by the Defendant in its advertisements for comparison of products. The Plaintiff's grievance, thus, needs to be considered in the light of what is now proposed by the Defendant. The sample advertisement is kept on record, marked ‘X’ for identification.

4. Learned Counsel for the Plaintiff, however, submits that this change of bottle makes no difference. It is submitted that reasonableness of its price is one of the marketing highlights of the Plaintiff for its hair oil products under NIHAR range. The Plaintiff's amla hair oil products are far too cheaper than the Defendant's rival products. So also, it is submitted that almost the entire range of products in the market, coming from different manufacturers or marketers is cheaper than the average price of the Defendant's products. A comparative chart showing the respective market shares, both by value and by volume, and average prices of products per kg, is produced with the plaint. It is submitted that the Plaintiff being one of the competitors of the Defendant, its products being cheaper than the Defendant's, the comparison, even the one which is now proposed with the use of the new bottle of a different size, shape or contours, clearly evokes an unmistakable reference to the Plaintiff's products and disparages them as being of inferior quality leading to hair fall and hair breakage. It is submitted that the reference to the word 'cheap' is not merely suggestive of quality of products but also of price and inasmuch as such reference to price evokes, or is calculated or likely to evoke, the memory of the Plaintiff's products, the disparagement clearly refers to the Plaintiff's products. Alternatively, it is submitted that even if one were to consider targeting of the entire class of cheaper products as substandard products in its advertisement by the Defendant, since the Plaintiff's products fall within that category or class, namely, products cheaper than the Defendant's products, there is indeed disparagement of the Plaintiff's products. Mr. Tulzapurkear, learned Counsel appearing for the Plaintiff, relies on a Division Bench judgment of this court in Gujarat Co-operatrive Milk Marketing Federation Ltd Vs. Hindustan Unilever Ltd., Appeal No.340/17 in Nt. Of Motion (L) No.690/17 in Suit (L) No.204/17, decided on 13.12.2018. Relying on the analysis of case law in this decision and the principles laid down therein, learned Counsel submits that even if there is no direct reference in a comparative advertisement to the complainant's products, if and to the extent to the comparison is suggestive of the complainant's products, showing them to be in a poor light or of sub-standard quality, a case of actionable disparagement is made out.

5. Coming to the bare facts of the Plaintiff's grievance, it is at once clear that the bottle used in the Defendant's advertisement (i.e. the one now proposed to be used in the advertisements) does not bear any resemblance, even remotely so, to the bottle used by the Plaintif for marketing its range of amla hair oil products, going by size, shape, colour or contours of the bottle. The bottle does not in anyway evoke the memory of the Plaintiff's products. There are, after all, on the Plaintiff's own showing, about twenty nine manufacturers and marketers, whose products of a varying range are in the market. This court is conscious of the law against disparaging advertisement, where the standard of comparison of products displayed is different from that in a case of passing off. In case of disparagement, the one who disparages another's product is not actually seeking to make his product look similar to the disparaged product, but is actually distinguishing it from the disparaged product. The object is simply to make the disparaged product appear as more or less similar to the competitor’s product so as to evoke the memory of the competitor's product. Accordingly, whatever comparison one makes in a case of disparagement, it must not only be from the standpoint or perspective of an average person with an imperfect recollection, as in the case of passing off, but, unlike in a case of passing off, where it is usually the court which compares the two products going by their trade dress or packaging material and makes an assessment, though of course from the standpoint of the same average customer, a greater latitude must be shown when it comes to comparison in a case of disparagement. The court may, in other words, more readily come to a finding of similarity between the two products, i.e. the disparaged product and the competitor’s product, than, say, in a case of passing off. Thus, even if, whilst comparing the products, a suggestion is given to the average public, such average public comprising of users or potential users of the product, which is allegedly sought to be disparaged or slandered, that the product being compared is the opponent's product, a case of disparagement may thereby ensue. In the present case, however, even if one were to make an allowance for this kind of comparison, I am unable to come to a conclusion that the disparaged product shown in the impugned advertisement for comparison (i.e. product shown in the new or proposed advertisement) can be said to evoke the memory of the Plaintiff's products.

6. Mr. Tulzapurkar relies heavily on the suggestion of ‘Cheap Amla Hair Oil’ contained in the advertisement. Learned Counsel submits that even if the shape, size or contours of the bottle do not evoke the memory of the Plaintiff's products, the very description of the product, namely, Amla Hair Oil, as being of cheaper variety, that is to say, cheaper in terms of price, the reference is clearly to the Plaintiff's products, which are competitive products and which are cheaper than the Defendant’s. Alternatively, he submits that all other products, which are cheaper than the Defendant's products, are thereby disparaged and so long as the Plaintiff’s products come within these others, the Plaintiff has a cause of action. Even this suggestion does not appear to be correct. No doubt, the word ‘cheap’ does imply not only an attribute of deficient quality but lower price. But that does not mean that by use of that word, disparagement is generally made of all less priced products. What the advertisement, taken at its plain face value, suggests is that there could be products, which may be cheap in price, and yet, those may be harmful and may lead to conditions such as hair fall or hair breakage. In comparison, the Plaintiff's products are shown as ‘true amla’, that is to say, of a purer quality. There is no disparagement in this of all cheaper (in terms of price) varieties of hair oil generally, much less of anyone's hair oil in particular. All that it suggests is that consumers should pay more attention to quality rather than go merely by price. And here it suggests that the Defendant’s products are superior in quality. The disparagement, if at all, is of products, which are ‘cheap’ (even if we take it as in terms of price) and which are also inferior in quality, without any suggestion that all ‘cheap’ products are generally inferior or that of the Plaintiff’s products, in particular, are inferior.

7. The judgment of Gujarat Co-operative Milk Marketing Federation Ltd (supra) and the analysis of case law therein stand entirely on a different footing. The quotation from the case of Godrej Consumer Products Limited Vs. Initiative Media Advertising, 2012 (52) PTC 260 (Bom), set out therein, and in particular, the reference in the latter to the case of Dabar India Limited Vs. Colgate Palmolive India Ltd., 2004(29) PTC 401 (Del), make the position clear. The sum and substance of the impugned TV advertisement in Dabar India, which was complained of, was said to evoke the memory of ‘Lal Dant Manjan Powder’ marketed by the plaintiff, in that case, though the product's name was not mentioned in it. Delhi High Court was of the view that ‘Lal Dant Manjan Powder’, which was the product of the Plaintiff, was generally denigrated for its effect on the body and in the premises, an injunctive relief was granted by the court. Even in Reckitt Benckiser (India) Ltd Vs. Hindustan Lever Limited, (2013) 200 DLT 563, though the name of the soap was not used for disparagement, the colour, the contours and the overall shape of the soap used in the advertisement clearly evoked the memory of the complainant's product, and this, coupled with the particular colour of packaging used by the complainant in that case, according to the court, gave a clear impression that the bar of soap shown in the advertisement, going by its particular colour, shape and contours and the wrapper or packaging shown for it, was the plaintiff's soap. The court considered that there could be soaps of the same colour, soaps of the same shape, and there could be soaps which are packaged in the same colour wrappers, but the plaintiff's was the only soap with a combination of all three elements, that is to say, the particular colour (orange), the particular shape (curved edges) and the particular colour of packaging (green). The court, in the premises, held that it had no doubt that the particular bar of soap shown for disparaging comparison in the advertisement referred to the plaintiff's soap and none else. Even in Madras High Court case of Annamalayar Agencies Vs. VVS & Sons Pvt. Ltd., 2008 (38) PTC 37 (Mad), the plaintiff's product of ‘Parachute Coconut Oil’ was bottled in a particular colour bottle, namely, blue, whereas the defendant's product was bottled in a green bottle, and every suggestion was made in the impugned advertisement for denigrating the product coming in blue bottle. In the context of these facts, the learned Judge of Madras High Court observed that the advertisement clearly made a suggestion and sent a message to television viewers and buyers of coconut oil that blue bottle products were inferior to green bottle products, which were marketed by the defendant, and accordingly, there was an open disparagement of the plaintiff's products. Calcutta High Court in Reckitt & Colman of India Ltd. Vs. M.P. Ramchandran, 1999 (19) PTC 741 also proceeded on a more or less similar footing. The plaintiff's product in that case was marketed under the trade mark 'Robin Blue'. The disparaged product used by the defendant in its advertisement bore the word ‘Blue’, which was printed on it. The court was of the view that though the word used in the advertisement for depicting the product was ‘Blue’, it was difficult to hold that the reference was not to ‘Robin Blue’. In the case decided by the Division Bench of our court, i.e. the case of Gujarat Co-operative Milk Marketing Federation Ltd (supra), the plaintiff's product was ‘frozen dessert’. The defendant, whilst advertising its goods, namely, ice cream, had shown in the advertisement that all manufacturers of ‘frozen desserts’ use Vanaspati or Vanaspati oil and that products manufactured with the use of Vanaspati or Vanaspati oil were dangerous to health. It was in this context, and on these facts, that our Division Bench held that it had no manner of doubt that the particular TV commercial complained of had the effect of disparaging frozen desserts in general and dissuading customers from using them and since the plaintiff''s was a frozen dessert, it amounted to disparagement of the plaintiff's product.

8. These cases do not support the Plaintiff in our case. In our case, as I have noted above, the shape, size, contours or colour of the bottle of the disparaged product in the impugned advertisement do not, in any real sense, evoke the memory of the Plaintiff's product. Even the reference to “Cheap Amla Hair Oil' cannot be said to evoke the memory of the Plaintiff's product. There are, as we have noted above, several manufacturers and traders in the market, who are marketing amla hair oils, which are priced lesser than the Defendant’s hair oil. It is difficult to hold, as noted above, that lesser priced products, as a class, have been sought to be disparaged in the advertisement. If it is the Plaintiff's case that ‘cheap hair oil’ is indeed an idea associated with their products, they will have to make out such a case at the trial of the suit or prima facie even at the hearing of the Interim Application. On a mere say so, and on the basis of materials placed before this court at this ad-interim stage, it is not possible to hold that the reference to ‘cheap hair oil’ evokes the memory of the Plaintiff's hair oil. Though the word 'cheap' used in the advertisement has connotations with reference to both ‘quality’ and ‘price’, it is difficult to hold that the word ‘cheap’ is used only in the sense of lesser price and in no other sense or that, in doing so, the memory evoked is of the Plaintiff's products, thereby disparaging the same as being of substandard quality.

9. Accordingly, there is no merit in the ad-interim application. The application is rejected.

10. Reply, if any, to the Interim Application by the Defendant within four weeks from today. Rejoinder, if any, two weeks thereafter. The Interim Application to come up on board for hearing after six weeks.

11. It is made clear that the observations made above conerning the facts of the case are merely for deciding the ad-interim application. The Interim Application shall be decided, after the parties are allowed to file detailed pleadings, on its own merits and without being influenced by this order.