Bombay High Court
Hindustan Unilever Limited And ... vs Usv Private Limited on 16 June, 2022
Bench: A. K. Menon
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.808 OF 2021
IN
COMMERCIAL I.P. SUIT (L)NO. 805 OF 2021
Hindustan Unilever Limited,
A Company incorporated under the
Companies Act, 1913, having its
Registered office at Unilever House,
B. D. Sawant Marg, Chakala,
Andheri (East), Mumbai-400099. ... Applicant (Orig.Plaintiff)
In the matter between:
1. Hindustan Unilever Limited,
A Company incorporated under the
Companies Act, 1913, having its
Registered office at Unilever House,
B. D. Sawant Marg, Chakala,
Andheri (East), Mumbai-400099.
2. Unilever Plc, A Company incorporated
under British Laws having its registered
office at Port Sunlight Wirral Merseyside
CH62 4ZD ... Plaintiffs
v/s.
USV Private Limited, a Company existing
under the Companies Act, 1956 having its
registered address at Arvind Vithal Gandhi
Chowk, B. S. D. Marg, Station Road,
Govandi (East), Mumbai-400 088. ... Defendant
Digitally
signed by
SANDHYA
SANDHYA BHAGU
1/74
BHAGU WADHWA
WADHWA Date:
2022.06.17
17:14:17
+0530
IAL-808-2021 (COMIPL-805-2021).doc
COMMERCIAL INTERIM APPLICATION (L) NO. 1091 OF 2021
IN
COMMERCIAL I.P SUIT (L) NO. 1087 OF 2021
WIPRO Enterprises Private Limited
Having its registered office at
#134 C Block Doddakannelli,
Sarjapur Road, Bangalore,
Karnataka-560035 ... Applicant/Original Plaintiff
In the matter of
WIPRO Enterprises Private Limited
Having its registered office at
# 134 C Block Doddakannelli,
Sarjapur Road, Bangalore,
Karnataka-560035 ... Plaintiff
v/s.
1. USV Private Limited,
Having its registered address at
Arvind Vithal Gandhi Chowk,
B. S. D. Marg, Govandi.
Mumbai-400088 ... Defendant No.1
2.The Womb Communications LLP,
Having its registered office at
101-A, Bolivian Alps, Bhakti Park,
Near IMAX Mumbai, Wadala East,
Mumbai-400037.
Also, at:
11th floor, Classic Pentagon,
Western Express Highway,
Mumbai-400099. ... Defendant No.2
2/74
IAL-808-2021 (COMIPL-805-2021).doc
Mr. Virag Tulzapurkar, Senior Advocate, Dr. Birendra Saraf, Senior Advocate,
a/w Mr. Hiren Kamod, Mr. Nishad Nadkarni, Mr. Aasif Navodia and Ms.
Khushboo Jhunjhunwala, i/by. Khaitan & Co., for the Applicant-Plaintiffs in
IAL No.808/2021.
Mr. Nikhil Sakhardande, Senior Advocate, a/w Nitesh Jain, Siddharth Ranade,
Kaazvin Kapadia & Ritika Ajitsaria i/b. Trilegal for the applicant/plaintiff in IA
(L) No.1091 OF 2021.
.
Mr. Venkatesh Dhond, Senior Advocate, with Mr. Bimal Rajasekhar, Mr.
Prithvi Singh, Mr. Rohan Seth and Ms. Shwetasree Majumdar, for the
Defendant.
CORAM : A. K. MENON, J.
RESERVED ON : 9TH MARCH, 2022
PRONOUNCED ON : 16TH JUNE, 2022
P.C. :
1. In a suit assailing the advertising campaign launched by the defendant
to publicize its products under the brand SEBAMED, the plaintiffs in
the first suit [HUL Suit] have filed this interim application seeking (a) to
restrain the defendant, its parent company and group companies and
subsidiaries and servants and agents including advertising agencies
from in any manner broadcasting, communicating to the public or
otherwise utilizing the impugned advertising campaign including
television, commercials, (TVCs) banners, warnings, hoardings and
newspaper advertisements and other material in all languages. The
impugned advertisements and publicity including on the internet and
IAL-808-2021 (COMIPL-805-2021).doc
to remove the same since all the aforesaid media. Thus a mandatory
order is being sought as well.
2. The other reliefs sought are as follows;
(b) an injunction restraining the defendant from directly or indirectly
disparaging or denigrating the plaintiffs' products viz. Lux, Dove, Pears
and Rin are the plaintiffs business practices in that respect.
(c) A further injunction sought restraining the defendant from in any
manner infringing the 1st plaintiff's registered marks Lux, Dove, Pears
and Rin bearing the relevant registration numbers in any manner
whatsoever either by visual representation, depiction spoken words or
otherwise using the same in the impugned advertising campaign
referred to above.
(d) Lastly, the plaintiffs seek an interim order directing the defendant
and its servants and agents including broadcasters, television channels
and exhibitors be ordered to deliver up for destruction the master
tapes other copies of material containing the impugned campaign
including the warnings, hoardings, newspaper advertisements etc.
3. In the second suit [WIPRO SUIT], the plaintiffs seek the following
reliefs against the same defendants;
(a) an injunction restraining defendant nos.1 and 2, or their
IAL-808-2021 (COMIPL-805-2021).doc
servants/agents/affiliates or their advertising agencies or any other
person claiming through them, from publishing/
telecasting/broadcasting the advertisement campaigns at any platforms
including television commercial, electronic media, newsprints,
billboards in any platforms and mediums;
(b) pending disposal of suit, an injunction restraining the defendants,
their Directors, proprietors, partners, subsidiaries, affiliates,
franchisees, officers, employees, agents and all others in capacity of
principal or agent acting for and on behalf, or anyone claiming
through, or by or under them, from in any manner using directly or
indirectly, by or under them, from in any manner using directly or
indirectly the trademark Santoor or any other mark deceptively similar
to the plaintiff's trademark Santoor, amounting to the infringement of
the plaintiff's trademark.
4. The interim applications are called and taken up for final hearing. The
facts of that case being very similar, both these IAs are being disposed
by this common order. The submissions made by counsel on behalf of
the plaintiffs in both matters are largely similar. The defence is
common. According to the plaintiffs, they have made out a good case
for injunction on account of disparagement and infringement of their
Trademark as well as the tort of slander of goods allegedly committed
by the defendant.
IAL-808-2021 (COMIPL-805-2021).doc
5. The plaintiffs in the HUL suit are FMCG (Fast Moving Consumer
Goods) majors and have been in business for several years. The case of
the plaintiffs in the HUL Suit as canvassed by Mr. Tulzapurkar is that
they are in the business of manufacturing and sale of personal care
products for almost 100 years. Numerous brands of toilet and bathing
soaps and detergent soaps are being sold by the plaintiffs. A distinction
must be made between toilet soaps and bathing soaps on one hand and
detergent soaps on the other hand since the toilet soaps and bathing
soaps cannot be substituted with the detergent soaps and vice versa.
The plaintiffs' brands Lux, Dove, Pears, Hamam, Liril, Rexona, and
Lifebuoy are distinctive trademarks and very popular owing to their
excellent quality and efficacy in the market.
6. It is contended that Pears has 4.2% market share, Lux 11.3% and Dove
4.3%. Collectively three brands enjoy an aggregate of 19.8% of the
market share. The plaintiffs have set out particulars of these brands,
trademarks registered including the fact that Lux has all throughout
been promoted well known celebrities internationally and in India.
Names of various international film-stars who have endorsed the
brand Lux has been adverted to. Likewise in India, numerous
Bollywood personalities are said to have endorsed the brand. Their
products have been successful in the Indian market and have been sold
extensively in international market like Arabia, Brazil, Thailand and
South Africa. The plaintiffs' 'Lux' mark is the most trusted brand and
IAL-808-2021 (COMIPL-805-2021).doc
several television programmes are also sponsored by Lux. The annual
turnover of Lux for the years 2014-15 till 2017 is as follows;
Year Brand Turnover Promotional
Expenses
2016-17 Lux 205,650 10612
2016-17 Dove 63,560 8024
2016-17 Pears 65,478 7048
2016-17 Rin 15642400 846300
7. According to Mr. Tulzapurkar all these products comply with industry
standards namely BIS Standard IS2888-2004 and amendments thereto.
The defendant is a competitor and has been selling SEBAMED products
as aforesaid and the impugned campaign initially started with a teaser
film in Hindi "Sach Coming Soon" on 7 th January, 2021. Three models
seated at the table have stated "that film stars, celebrities and
Bollywood beauties are ready to say anything but they are scared to tell
the truth and that the truth come out soon." The said teaser was said
to be initially available on the defendant's YouTube channel
"SEBAMED India". It is stated that on 8 th /9th January, 2021 the plaintiff
was shocked to come across three audio visuals in Hindi language
launched by the defendant in respect of "SEBAMED Cleansing Bar".
Each advertisement specifically referred to Lux Soap, Dove Soap and
Pears Soap by insinuating that use of these products is like using the
detergent soap Rin. The intent and story line of these advertisements
IAL-808-2021 (COMIPL-805-2021).doc
were said to be misleading, containing falsehood but more importantly
they were disparaging and denigrating the plaintiff's products.
Reference is made to the various URLS wherein these offending
commercials were viewed.
8. It is contended that in January the defendants were broadcasting
these impugned offending advertisements on television channels such
as Colors, Colors Marathi, Star Plus, NDTV India and several other
regional channels. The plaintiffs are also aggrieved by the fact that the
impugned advertisements were also made available online on the
defendant's website amongst other social media pages. The plaintiffs
are particularly aggrieved by the fact the plaintiffs' soap Lux was said
to have a pH value of 10 equivalent to the plaintiffs' detergent soap Rin
thereby alluding to the fact that by using Lux was equivalent to using a
detergent Rin whereas SEBAMED had a "perfect pH 5.5. for sensitive
skin." Screenshots of the commercial on YouTube, Facebook and
Instagram have been relied upon. The plaintiffs have contended that
the Times of India newspaper carried full page advertisements on its
front page on 10th January, 2020. An extract of this representation was
shown on TV as set out at an earlier occasion. All of this has resulted in
a cause of action in favour of the plaintiffs. When this matter was
heard at the ad-interim stage in an order dated 11 th January, 2021, the
court had at that stage found that the exparte order was justified and
accordingly injunction in terms of prayer clause (a) restricted to a part
IAL-808-2021 (COMIPL-805-2021).doc
was granted.
9. Thereafter on or about 19 th January, 2021, the order was recalled since
there was a caveat already on record which was not noticed. As a
result of further hearing on 19 th January, 2021, an order came to be
passed whereby the advertisement in relation to SEBAMED in
comparison with Dove which was titled " Doodh Jaise Safedi Ka Sach " is
concerned, was allowed to continue in the current form. As far as the
advertisement relating to Lux titled "Film Stars ki nahi, Science ki
suno" and "Transparent soap ka sach" in relation to Pears Soap, the
defendant was allowed to air the advertisement without any reference
to 'Rin' detergent bar or any other detergent soap. The modified
advertisement was therefore permitted provided it did not refer to a
washing detergent. All forms of advertisement were thus modified
partly. The specific reference "pH scale appearing on the defendant's
website which indicated that soaps with pH levels between 5 and 6 are
"safe" whereas pH levels between 6 & 10 are not " safe" were directed
to be changed. The words " safe" and "not safe" were to be substituted
by "ideal" and "not ideal". These modified advertisements have been
aired since and continued which is why the cause of action is said to
survive. It is an ongoing advertisement campaign and hence the
attempt of the plaintiff is to secure the aforesaid injunctions thereby
protecting the brands in question. The plaintiffs have contended and as
canvassed by Mr. Tulzapurkar that pH is not the sole determinant of
IAL-808-2021 (COMIPL-805-2021).doc
mildness and harshness. Bathing soaps cannot be compared with
detergent soaps as they have entirely different compositions.
10. Although the suit campaign has been modified, they are in fact the
same. The original campaign incorporated a comparison with Rin
detergent bar and the use of the words "not perfect" and "not safe".
The new campaign has deleted the comparison with Rin but uses the
word "ideal" instead of "not perfect" and the word "not safe" has been
deleted. By making reference to the original campaign in the opening
screen "LAST YEAR 8TH JAN" the defendant is reminding consumers
and the original advertisement which had the comparison between and
reference to perfect pH. The slide/visual "LAST YEAR 8TH JAN"
indirectly seeks is to ensure that people recall the original campaign.
The modification thus therefore continues to denigrate and disparage
the plaintiffs' products.
11. Mr. Tulzapurkar submits that the campaign and storyboard is not
even truthful and it conveys grossly misleading and false information
to society in general because pH is not a determinant but indicates that
5.5 is the "perfect" pH thereby suggesting that the plaintiff's soaps are
not good. The learned counsel for the plaintiff has in support of his
contentions relied upon the material placed on record as to the
relevance of pH, my attention has been drawn to Exhibit '1' to the
affidavit dated 12th March, 2021 filed in rejoinder by one
IAL-808-2021 (COMIPL-805-2021).doc
Vijayalakshmy Malkani who has deposed on this aspect inter alia
making reliance to the views expressed by one MS Clinical Research in
which the author has observed that the organization has reviewed the
safety and efficacy clinical study reports for Pears, Lux and Dove and
the products were found to be of non-irritating formulae and can
qualify as dermatologically safe for all skin types. That clinical reports
have demonstrated the cleaning efficacy, skin tolerability and
compatibility in regular use. BIS Standards set out guidelines for toilet
soaps and bathing soaps and in neither of them reference to pH is
considered a relevant parameter. This is sought to be read along with
an article title "The pH of the skin surface and its impact on the barrier
function" dated 19th July, 2006 by one M H. Schmid-Wendtner which
according to Mr. Tulzapurkar reviewed article by Saba M Ali and Gil
Yosipovitch. The article deals with the investigations into skin pH and
refers to various scientific research papers. In the second article titled
"Guidelines for dermatologists." Mr. Tulzapurkar has invited my
attention to the finding and recommendation that amongst body wash
soap or cleanser, one that has a pH between 4.5 to 6.5 similar to
normal pH of skin should be selected. In conclusion, it is stated that at
the root of skin pH is a factor is the SC function (Stratum Corneum)
and much remains to be learnt about the complex relation of skin pH
and downstream pH dependent events.
IAL-808-2021 (COMIPL-805-2021).doc
12. Mr. Tulzapurkar further submits that there is absolutely no reason
why quality of the soap or bathing bar should be related to skin pH.
My attention has been drawn by the plaintiffs to a test report
no.202012170085 dated 1st November, 2019 issued by Arbro
Pharmaceuticals Private Limited, Certificate of Analysis a Government
approved test house which analyzed the defendant's SEBAMED
Cleansing Bar. The analysis shows that pH value in tap water was 5.76
and pH in a distilled water was 5.71. Thus, it is clear that even from in
test report does not reveal a 5.5 pH level. Therefore to suggest that 5.5
is "Ideal" is misleading and ought not to be accepted by the court. The
attempt of the defendant is to compare Apples with Oranges inasmuch,
as admittedly SEBAMED is a product for sensitive skin and for persons
suffering from allergies. Whereas the plaintiffs product are not.
SEBAMED is directed towards a targeted consumer whereas the
plaintiff's products are usable by all concerned as a matter of choice.
13. Paragraph 57 of the plaint sets out reasons for the plaintiffs alleging
that the impugned campaign is false, misleading and incorrect. The
comparisons are disparaging because initially the plaintiffs soap was
compared to detergent bar Rin and if pH was a critical parameter it
would have been explicitly provided for in the BIS Standards. The
question is whether the campaign is denigrating and disparaging of the
plaintiffs products and violate of the plaintiffs trademarks. In this
respect, my attention has been drawn by counsel to Exhibit "Y", "Z"
IAL-808-2021 (COMIPL-805-2021).doc
and "AA". Exhibit "Y" is a study report by M S Clinical Research at the
instance of the plaintiffs. It evaluates dermatological safety of products
under investigation after 24 hours patch test on healthy human beings.
The products are described in the study report. Further reference is
made to Exhibit "Z" which is yet another a study report by the same
institution. Reference is made to Exhibit "AA" which is a clinical and
laboratory study titled "The Soap Chamber Test- A new method for
assessing the irritancy of soaps." This report, after comparing 18
different soaps, one of which is the plaintiffs soap Dove with its
competitors, concludes that during a 4 year period the same brands
bought at different times may yield different toxicity scores and soap is
a variable mixture. It finds that Ivory soap tested had become milder in
the previous two years. Numerous articles, reviews and decisions have
been relied upon in this behalf by both sides. Market Research Studies
have also been referred to in Exhibit "CC" to the plaint and in
particular with reference to the product Lux Rosalia similarly from the
market research studies have been conducted for Pears and for Dove.
In the case of Lux, the conclusion that sample size of 207, 98% found
the soap gentle and mild and moisturizer making skin softer and
smoother and did not dry out the skin. Similar reports are found in the
case of Pears and Dove.
14. Mr. Tulzapurkar submitted that the entire advertising campaign
IAL-808-2021 (COMIPL-805-2021).doc
promoting 5.5 pH as "perfect" has no basis in fact because scientific
data shows there is no perfect pH. There are reports on both sides
indicating that 5.5 is not the correct pH of even the defendants'
product. The products were incomparable to the knowledge of the
defendants and therefore, the campaign is misleading and denigrating
the plaintiffs' products. Lux and Pears are toilet soaps and the BIS
Standards prescribe specifications as set out in the plaint. Dove is a
bathing bar also covered by the BIS Standard, whereas BIS has no
reference to pH whatsoever. pH is therefore, not required to be
disclosed in the product specifications, contents or ingredients that are
statutorily required to be declared. Thus, adding to the plaintiffs' stated
case that pH is not a relevant factor at all. Reference is made to page
253 of the rejoinder and the description of "healthy skin". According to
the plaintiffs, their products are toilet soaps, whereas the defendant's
product is soap-free. The indications for use of the defendant's
product SEBAMED is for those who are suffering from skin disease and
soap-intolerance. Thus, it is obvious that you cannot compare a soap-
free product with a soap. The unjust comparison is deliberately
designed to denigrate the plaintiff's products, which have a very long
standing in the market and the plaintiffs have successfully been selling
these products for many years. The attempt of the defendant is to break
into the plaintiffs' market, gain a share by assailing the quality of the
plaintiffs' products without any basis. Reference is made to Exhibit 'S'
IAL-808-2021 (COMIPL-805-2021).doc
which deals with perfect pH for sensitive skin (see page 198/200).
15. The next submission on behalf of the plaintiffs is that the defendant is
clearly desirous of discrediting reference to BIS. My attention is invited
to Exhibits 'O1' to 'O3' in this respect and the BIS guideline/Rule
No.150A, which requires it to be read with Schedule 'S' of the Drugs
and Cosmetics Rules, 1945 which require toilet soaps and bathing bars
to be described as such at items 19, 24 and 29. The BIS is statutory.
There is no reference to pH at all in respect of soap, whereas for
shampoo there is a BIS Standard referring to pH. Thus, it is impossible
to make a comparison between a soap, a toilet bar on one hand with a
specified pH factor. The market for soaps is clearly different. The
plaintiff's soaps and the products sought to be assailed by the
impugned advertisements meet the industry standards. All of them
have a pH of between 7 to 10 and there cannot be a soap with a pH of
5.5. The defendant's product admittedly not being a soap, the
comparison is wrong and deliberately so. No toilet soap, it is
contended, can have a pH of 5.5 and meet the BIS Standard.
16.Mr. Tulzapurkar submitted that the entire body of law is against
comparison of the incomparable. PH is not a determining factor for the
product in question and SEBAMED claiming to have pH of 5.5 is also
incorrect given the factual analysis that has been referred to by the
plaintiff, which indicates the pH of 5.7 and more. There is absolutely
IAL-808-2021 (COMIPL-805-2021).doc
no research and analysis of how much the pH of a soap affects the skin.
pH not being a determinant in respect of safety of use of a soap, the
comparison on that basis is unacceptable. In fact, the plaintiffs point
out that in the affidavit-in-reply in para 9, there is an admission that
pH is not the only determining factor for quality. The advertisements
do not convey the same version as contained in their affidavit, since it
clearly assails the plaintiff's products on the basis of their pH levels. As
far as the allegation of suppression of the ASCI decision is concerned,
Mr. Tulzapurkar submitted that there is no question of any suppression
and the allegations are baseless. Reference is made to the defendant's
campaign on social media which is also found to be objectionable. It is
pointed out that there are about 2,59,260 followers. All of them are
being fed with the message that the plaintiff's products are not
safe/ideal and/or do not have the perfect pH, whereas the defendants'
does.
17. In this background, while the plaintiffs admit the pH readings of its
products that the defendants have sought to convey to the public, the
contention that the plaintiff's products are not safe or not perfect or
not ideal has not been made out. In effect, it is contended that the
meaning of 'ideal', the expression that the defendant has now chosen to
adopt and on the basis of which the ad-interim order came to be
modified, actually means 'perfect'. Thus, the word 'ideal' also has a
synonym which is 'perfect'. Since the words 'ideal' and 'perfect' are
IAL-808-2021 (COMIPL-805-2021).doc
synonymous, it is contended that there is no real change in the
campaign and the campaign is being assailed on the same basis as one
which is deliberately designed to denigrate the plaintiff's products.
18. It is contended that there is also contravention of Section 29(2)(8) of
the Trademarks Act. Incomparable products are being compared by
misusing the registered trademarks of the plaintiffs and there is clear
violation of Sections 29(8)(a), (b) and (c). Mr. Tulzapurkar submitted
that any advertisement which is found to be falling foul of the
provisions of Sections 29(8)(a), (b) or (c) is clearly tantamount to
infringement of the trademark and hence, on that ground too, the
plaintiffs are entitled to relief. It is his contention that it is not
sufficient to make a small modification in the campaign and the
modification made thus far is of no consequence and the plaintiffs are
still entitled to all the reliefs that they seek. As long as there is a
reference to pH, there cannot be any justification in continuing the
campaign. Mr. Tulzapurkar further submitted that the decisions in the
case of Lakhanpal National Limited v/s. M.R.T.P Commission and Anr
will squarely apply as long as the public is led to believe what the
defendant is now propagating in its advertisements. Likewise, the case
of Colgate Palmolive Company and Anr. v/s. Hindustan Unilever Ltd.
will also be applicable and it would justify the grant of the reliefs
sought in the present Interim Application. My attention has also been
invited to the orders passed on 21 st January, 2021 in the plaintiff's
IAL-808-2021 (COMIPL-805-2021).doc
Appeal (L) bearing No.1919 of 2021 and in particular, paragraphs 2,
7, 9, 10 and 11. Likewise in the order passed in the defendant's appeal
on 27th January, 2021, reference is made to paragraph 2 in support of
the plaintiff's case.
19. Mr. Tulzapurkar then invited my attention to the compilation of
documents tendered by the defendant during submissions as also the
label of Dove relied upon by the defendant. He submits that the
reliance placed by the defendant on the advertising campaign of Dove
in the United States is not carried out by the plaintiff at all and there is
nothing that makes reference to pH in those advertisements. There is
no comparison of Dove based on the pH levels of its rival products,
which were also soaps. As far as the TV commercial is concerned,
Mr.Tulzapurkar submitted that it pertains to an advertisement of 1992
and bears no relevance to the current campaign. He submits that class
disparagement is what the defendant is engaged in and that is not
permissible. While you are entitled to puff your product, you cannot
run down others products. He submits that the injury to the plaintiff is
irreparable but there is no irreparable harm, loss or injury that can be
caused to the defendant if the reliefs in the I.A. are granted. He further
submitted that the test reports that have been relied upon by the
defendants are not at all relevant and the judgment in HUL v/s. Reckitt
Benckiser of the Delhi High Court(supra), the fact situation is different.
IAL-808-2021 (COMIPL-805-2021).doc
The injunction was granted because the message conveyed was found
to be improper as recorded in para 60 of that judgment. He further
submits that the word 'perfect' is the same as the word 'ideal'. The
change made by the defendants in their advertising campaign makes
no material difference. The new advertisement campaign is as bad as
the earlier one which is being assailed in the Suit. The overall effect of
the campaign is to be gauged from the manner, content and intent and
that clearly indicates the defendant's intention to disparage and
denigrate the plaintiff's products. The entire campaign as described in
Exhibits 'Q1' to 'Q4' in the Plaint, which includes the TV commercials,
banners, website posts, social media posts, print advertisements and in
particular, those referred to in Exhibits R, S, T and U are all to be
injuncted. They all intend to run down the plaintiffs' products by
labelling them as inferior. Reference is also made to the case of Reckitt
Benckiser v/s. Hindustan Unilever Limited and it is submitted that the
impact of the advertising campaign as a whole is to be considered and
in the instant case, the impact is clearly providing a justifiable cause of
action for grant of the restraint order.
20. In support of his submissions, Mr. Tulzapurkar has made extensive
reference to the following decisions;
(1) Gujarat Cooperative Milk Marketing Federation Ltd. v/s. Hindustan
Unilever Ltd. and Ors.1
2019 (2) ABR401-Appeal no.340 of 2017 in NMS(L)No.690 of 2017
IAL-808-2021 (COMIPL-805-2021).doc
(2) Godrej Consumer Products Limited v/s. Initiative Media
Advertising & Ors.2
(3) Gillette India Limited v/s. Reckitt Benckiser (India) Pvt. Ltd. 3
(4) Karamchand Appliances Pvt. Ltd. v/s. Sh. Adhikari Brothers and
Ors.4
(5) Lakhanpal National Limited v/s. M.R.T.P. Commission and Ors. 5
(6) Colgate Palmolive Company & Anr. v/s. Hindustan Unilever Ltd. 6
(7) Hindustan Unilever Limited v/s. Gujarat Co-operative Milk
Marketing Federation Ltd. and Ors.7
(8) Reckitt Benckiser (India) Ltd. v/s. Hindustan Unilever Ltd. 8
(9) Hindustan Unilever Limited v/s. Reckitt Benckiser India Limited 9
(10) Reckitt Benckiser (India) Ltd. v/s. Hindustan Uni Lever Ltd. 10
(11) Reckitt & Colman of India Ltd. v/s. Jyothy Laboratories Ltd. &
Ors11
WIPRO SUIT
21. In the WIPRO Suit, submissions have been made by Mr. Sakhardande
who has adopted all the arguments made on behalf of the plaintiffs in
the HUL suit by Mr. Tulzapurkar. A convenience compilation has
been tendered by Mr. Sakhardande who has assailed the suit campaign
2012(114) BOMLR2652
2018 SCC OnLine Mad 1126
2005(31) PTC1(Del)
AIR 1989 SC 1692
2013 SCC OnLine Del 4986
MIPR 2017 (3) 50
2014 SCC OnLine Cal 6094
2014 SCC OnLine Del 490
2013 SCC OnLine Del 1928
1999 SCC OnLine Cal 155
IAL-808-2021 (COMIPL-805-2021).doc
in this second suit as well, the campaign being identical to the first suit.
In the second suit, the soap promoted as Santoor was said to have been
pH level equivalent to Rin upon modification of the advertisement as in
the first suit, comparison with Rin, "Safe" and "Unsafe" have been
deleted in this case as well.
22. Mr. Sakhardande submits that pH is not a relevant criteria to
determine the efficacy of a soap. Mr. Sakhardande has assailed the
defendants campaign as being a comparison on the basis of unfair
determinants which denigrates the market reputation of "Santoor". He
submits that Santoor and SEBAMED were compared only on the basis
of pH values although pH value is not mandatory pre-requisite to be
measured for toilet soaps. Advertisements are misleading and
arbitrarily selects the scientific parameters for comparison. He submits
that comparison is unfair and misleading. He submits that it is an
infringement of the plaintiffs trademark and such infringement would
only be exempt from scrutiny under section 30(1) of the Trademarks
Act, 1999, if the comparison was honest and did not seek an unfair
advantage and not detrimental to the trademark of "Santoor". He has
submitted that the Santoor and SEBAMED are incomparable. In
addition, Mr. Sakhardande has contended that the manufacturers of
toilet soaps are required to comply under BIS Act, 2016. He has
invited my attention to the relevant extracts of the said Act which
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intends to establish National Standards Body for the harmonious
development of activities of standardisation, conformity assessment and
quality assurance of goods amongst others. He submits that toilet soap
is identified under IS 2888-2004. The extract of IS 2888 is produced
before me in which my attention has been invited by the learned Senior
Counsel to specifications of toilet soap, that it should be a thoroughly
saponified, milled soap or homogenized soap or both, either white or
coloured, perfumed and compressed in the form of firm smooth cakes
and shall possess good cleaning and lathering properties. Mr.
Sakhardande has also relied upon the Code for Self-Regulation of
Advertisement Content in India to which I have made reference in this
order.
23. Mr. Sakhardande has also relied upon the judgments in the case of
Hindustan Unilever Ltd. v/s. Reckitt Benckiser (India Ltd. )12 He has also
relied upon the fact that the defendant has relied upon a research
article on titled 'Sensitive Skin' and some other articles which defines
sensitive skin as a "Sensory reaction triggered by contactors and/or
environmental factors, usually without a visible clinical manifestation."
This he submits is indication of conditions which are not normal and
hence require special attention so as may not be suitable for use with
such indications. Mr. Sakhardande has also relied upon IS
13498 :1997 for bathing bars which also indicates soaps and other
2013 SCC OnLine Cal 17896
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surface active agents. Bathing bars also contains soap or fatty acids
and do not require disclosure of pH of any level. The packing and
marking requirements under clause 6 do not contain pH as one of the
necessary ingredients to be discloses for marking. Thus, there is
substance in the submission on behalf of the plaintiff that pH need not
be disclosed statutorily. Voluntarily of course there is no bar in
disclosing pH. Admittedly there is no BIS Standard for SEBAMED since
it is imported and not manufactured in India, at least till the time IA
was heard and in that respect, Mr. Sakhardande submits that
comparison of the defendants product with that of the plaintiff's
disparages the plaintiffs' product as seen on social media including
instagram.
24. Relying upon the guidelines of Drugs and Cosmetics Rules, 1945, Mr.
Sakhardande invited my attention to Chapter IV, Part XV(A) and
guideline 150-B which provides an application for grant of approval
for testing Drugs/Cosmetics. He submits that pH is not one of the
aspects that required to be tested. He has also taken me through the
guidelines of the Bureau of Indian Standards Act, 2016 and submits
that these are the standards that the plaintiffs as Indian manufacturers
are required to follow. None of these require the plaintiffs products to
disclose its pH value or meet any pH value. He relies upon the
definition of saponification as the process of making soap and
highlights the fact that for imported cosmetics, the Drugs and
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Cosmetics Rules, 1945 provided in Rule no.129-G that no cosmetic
shall be imported unless it complies with the specifications prescribed
under Schedule S or Schedule Q or any other standards applicable to it.
25. Mr. Sakhardande also highlighted the fact that SEBAMED being a
cleansing bar is not regulated in India under Rule 129-G and Schedule
S, and hence it does not need to comply with BIS standards or possess
those properties. It was targeted towards sensitive skin and
recommended that it will be used on medical advice. Essentially
SEBAMED also refers to the product backed by scientific evidence of
pH values, however, the packaging mentions that it is a product meant
for "Normal to Oily skin". According to Mr. Sakhardande, the
defendants have described the product SEBAMED as a "Cleansing bar"
on the packaging and that in my view is not material in view of the
defendant's consistent stand that it is a "Cleansing bar".
26. Mr. Sakhardande relied upon the following judgments;
(1) Hindustan Unilever Ltd. v/s. Reckitt Benckiser (India) Ltd. 13
(2) Havells India Ltd. v/s. Amritanshu Khaitan & Ors. 14
(3) Reckitt Benckiser India Private Limited v/s. Hindustan Unilever
Limited15
(4) Reckitt Benckiser Health Care (India) Pvt. v/s. Emami Ltd. & Ors. 16
2013 SCC OnLine Cal 17896
2015 SCC OnLine Del 8115
2021 SCC OnLine Del 4896
2015 SCC OnLine Cal 1873
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Submissions on behalf of the Defendant
27. As and by way of a concession and at which the very outset, Mr.
Dhond submitted that the modified campaign can continue to be aired
during the pendency of the suit and that the original advertising
campaign will not now be aired in. This however, was not acceptable
to either Mr. Tulzapurkar and Mr. Sakhardande and hence, the
submissions on behalf of the defendants proceeded. The applications in
both suits are opposed by Mr. Dhond on behalf of the defendants who
submits that the case which the plaintiffs in the HUL Suit approached
the court and what is now been canvassed were different. Initially the
plaintiffs complained of the language used in the campaign alleging
that the words used to describe the plaintiffs products are false and
that unlike products have been sought to be complained of, alleging
malice on behalf of the defendants. Mr. Dhond submits that the
plaintiff did not approach the court contending that pH was not a
relevant factor at all. On the other hand, it is the defendant's case that
pH is significantly relevant and without getting into any hyper
technical clarifications on classification, Mr. Dhond admitted that
there is no soap in SEBAMED although it is the plaintiffs case that
SEBAMED is being imported as a soap. He brought out the distinctions
between the categories as toilet soaps, bathing bars and cleansing bars.
The plaintiffs' products Pears and Lux he submitted were soaps,
whereas Dove was a bathing bar. SEBAMED is a cleansing bar and this
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is what the plaintiff has canvassed.
28. Mr. Dhond has tendered a set of photographs of Pears which also
describes the product as a bathing bar. Therefore according to Mr.
Dhond all these expressions bathing bar / cleansing bar and soap are
interchangeable. There is no watertight compartment in which these
can be kept. Furthermore, he submitted that although the plaintiff has
sought to distance themselves from the advertisement campaign of
Unilever PLC it cannot avoid the obvious references to the advertising
campaign abroad since Unilever PLC is plaintiff no.2 in the present
suit. This he contends puts paid to the plaintiffs attempt to distance
itself from the advertising campaign comparing Dove with other
competitive products in the United States/U.K. pH refers to
concentration of Hydrogen ions in a product, it is indicative of the
alkaline or acidic nature of a product. The pH of the human body and
the soap must match and it is therefore relevant to refer to pH in
relation to use on human skin. Body pH viz. skin pH is normally 5.5. it
is actually between 4 to 6 and therefore pH is not irrelevant. Mr.
Dhond submits that today the modified ads merely state the facts as
they are.
29. According to Mr. Dhond truth is a complete answer to the allegations
of the plaintiffs. What the defendants advertising campaign states is
the true since the plaintiffs admit the pH value of its products. Once
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the plaintiffs admit the pH value of Lux, Dove and Pears and Santoor
there is no merit in the contention that the impugned campaign is
meant to denigrate or disparage the plaintiffs products. My attention is
invited to the averments in the HUL plaint and in the order dated 19 th
January, 2021 and in particular paragraph 6 and 7 of that order. The
plaintiffs case is that pH is not the sole determinative factor but not that
it is irrelevant. The pH of the plaintiffs product Dove is a statement of
fact which the defendants had carried in its advertisement. Referring
to the plaint and the reproduction of the different components of the
campaign as reproduced in the plaint, Mr. Dhond submits that the
portion "kiske jitna" appearing at page no.175 of the plaint has now
been replaced with "kitna". As far as the contents of page 176 are
concerned, the same has deleted entirely and the next frame is
represented in page 177. Page 178 continues as it is whereas the next
page 179 is deleted entirely. Pages 180 and 181 then continue. The
use of the opening screen "LAST YEAR 8TH JAN" referring to the
campaign of January 2020 Mr. Dhond submits that it has been
modified suitably. Mr. Dhond submitted that the modified
advertisement as set out in Exhibit "Q3" has not been changed. Mr.
Dhond then made reference to the difference in the two campaigns
post the ad-interim order and the order of the Appeal Court. In the
case of each product of the plaintiff viz. Dove as aforesaid followed by
Pears and Lux.
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30. Mr. Dhond further submitted that the plaint itself makes various
references to pH and it is obvious that pH is a very relevant factor. He
has invited my attention to the various averments the plaint in this
respect particular in paragraph 57 of the plaint which extensively
deals with the aspect of pH levels in the various products. It is evident
that throughout paragraph 57 the plaintiffs have focused on the aspect
of pH and cannot now seek to contend that pH is not a relevant factor
at all. pH is very much relevant to the product in question and is an
important factor to be taken into consideration when using skin care
products. Mr. Dhond further submitted that in the context of skin and
in particular sensitive skin pH of the soap is a relevant criteria and
there is a scientific literature to establish that pH of the soap can cause
an effect on skin more alkaline the soap the greater the potential to
cause allergy. My attention has been drawn to the order of the
Division Bench on the aspect of pH and Mr. Dhond submits that there
is no material to deny the relevancy of pH in reference to skin care
products. While the defendant concedes that pH is not the sole criteria
for assessing the quality and safety of a soap. It is definitely an
important factor and this cannot be overlooked and this is the reason
why the plaint in paragraphs 57 onwards deals extensively with the
effect of pH on skin.
31. Mr. Dhond also contended that reference and reliance to the order
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passed by ASCI is of no avail and mildness is not synonymous with the
aspect of pH. The correctness of referring to pH is evident from the
plaint itself and the admissions of the plaintiffs in respect of the pH of
each of their products. Mr. Dhond submitted that as observed in the
case of Havells India (supra) truth is a complete answer and it is for the
defendant to decide which of the features of its product are required to
be highlighted. The truth is that the pH of SEBAMED is 5.5 that of
Dove is 7, Lux and Pears are 10. Santoor which is the product of the
plaintiff in the companion suit also reflects a pH of 10 and so does Rin.
While SEBAMED he submits, appeals to persons with sensitive skin,
others may also buy it but effectively it is targeted those with sensitive
skin so as to enable them to reap benefits of the ideal pH of the
product.
32. In any event it is contended that the expression "unsafe" has been
dropped from campaign so has reference to Rin. Therefore the present
version of the advertisement cannot be objected to. Whereas the
plaintiff is using glamour to sell its products, the defendant is using
science. Mr. Dhond then sought to deal with the judgments cited on
behalf of the plaintiffs and proceeded to distinguish these judgments
particular reference to decision of the Calcutta High Court in case of
Reckitt & Colman v/s. Jyothy Laboratories (supra). Mr. Dhond
submitted that it is not a comparison of identifiable parameters but a
comparison of results and that the comment is on the suitability of a
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product and that is different on the other parameters which could be
used to compare products. The defendant is not using any tricky
language. The case of Lakhanpal National(supra) is sought to be
distinguished on that basis. He submitted that the facts situation in
Gujarat Marketing Co-operative v/s. Hindustan Unilever (supra) was
very different. The facts do not bear any similarity to the case at hand.
Mr. Dhond further submitted that if there is a prima facie case of
justification that the defendant has made out, the court ought not to
grant any injunction. He further submits that the defendant is entitled
to certain amount of hyperbole after having deleted reference to Rin
detergent bar and discontinued use of the expressed "not safe". He
submits that this is not a case of a comparison of apples with oranges.
33. Mr. Dhond therefore submitted that no relief ought to be granted to
the plaintiffs in the IA and that the modifications made can continued
on the understanding that the original advertising campaign will not
be aired. Mr. Dhond adopted the aforesaid submissions in the WIPRO
Suit as well.
34. Rejoining in support of the plaintiff's case, Dr. Saraf submitted that
when one assesses the suit campaign as a whole and considers the
flavour of the story line and its effect, one will realize that the focus of
the advertisement is only to attribute negative facts to the plaintiffs
products. The defendants endeavour has been to beat down
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competition and one takes into account the defendant's intention, they
did not make any concessions, they did not voluntarily delete any of the
offending portion on the contrary. In the course of hearing of the
appeal, the defendants were forced to make further concessions and
this Dr. Saraf submits is an admission of malice and disparagement. In
particular he reiterates the aspect where the defendant's campaign
refers to the previous year's launch of the TVCs by using the words "ek
saal pehle". The concession made was to delete reference "ek saal" in
the new advertisement. This is clearly indicative of the malicious
intent with which the campaign was initially launched. However, that
said even the current version of the advertising campaign is equally
disparaging as was the first. The expression of negative connotation is
evident. Focus is on the aspect that you are likely to harm your skin by
using the plaintiffs products. The focus is not really on the defendants
product which is shown to be a better option but premised on the basic
thrust of the advertising campaign that the plaintiffs products are not
suitable for your skin. According to Dr. Saraf, all the advertisements be
it in the TV Series, banners, hoardings, and the websites and as a social
media posts are all negative in their reference to the plaintiffs products.
The advertising campaign essentially seeks to run down the plaintiffs
products. The truth argument also it is contended has no merit since
analysis of the documents will show that the claim of the defendants
pH of 5.5 is also not correct. My attention is invited to sample
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photographs of the various packages of Dove and SEBAMED which is
stated to be part of the analytical report at Exhibit 7 to the affidavit in
rejoinder of Vijayalakshmy Malkani dated 12 th March, 2021 filed on
behalf of the plaintiffs.
35. Referring to the convenience compilation filed on behalf of the
defendants, Dr. Saraf invited my attention to a report dated 2 nd
September, 2005 in "Skin Pharmacology and Physiology" a Journal
apparently issued by the Departments of Dermatology and
Allergology of two Universities in Bonn and Munich in Germany made
reference to the fact that potentiometric measurements carried out
revealed skin pH measures between 4.2 and 5.6. Thus, it is not as if 5.5
is the ideal or perfect or safe pH. The measurements carried out by the
Universities clearly provide for a range between 4.2 to 5.6. Dr. Saraf
submits that it is seen that the defendant is clearly being manipulative
since there is no static value that can be attributed to skin pH. Mr.
Sakhardande likewise reiterated his case in the WIPRO Suit.
CONCLUSIONS:
36. The defendant has already filed their written statements in the suit
and they have denied the plaintiffs claim. Brief reference is to be made
to the written statement to record the basis of the defence as canvassed
during the hearing of this IA. It is the defendant's case that the
defendant is also a reputed pharmaceutical company marketing his
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products in 65 countries. A total income for the year 2019-2020 was
INR 33.073 million. Its products command a high reputation and
goodwill amongst the medical practitioners, trade and consuming
public and their products are sold all over the country and are
exported to many foreign countries. Reference is made to several
products of regular use including drugs and pharma products.
Sebapharma GmbH & Co. KG is renowned German Company and the
defendant and its members are widely publicized including thereto
official website. Sebapharma has exclusively owned trademark of the
defendant registered under Classes 3 and 5. The defendant claims that
it has an enviable reputation and goodwill in the market. The
defendant's bathing soap SEBAMED is considered the world's leading
skin care brand from Germany developed in 1967 when the first
commercial soap free cleaning bar with pH value of 5.5 which
according to the defendant protects the natural protective layer of skin.
SEBAMED claimed to provide comprehensive skin care solution is
available in different iterations such as SEBAMED Age Defence,
SEBAMED Clear Face and Baby SEBAMED. They are all tested on
sensitive skin and not tested on animals.
37.It is the defendant's case that their products have been developed by
dermatologist and it does not alter the skin's pH levels. They are free
from soap alkali and harsh chemicals are tailored to the needs of
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sensitive and problematic skin. It also believed to avoid all ingredients
which are known to trigger allergies and irritation. According to the
defendant, the suit is misconceived and an abuse of process. It has
been initiated by the plaintiff to prevent the defendant from making
"legitimate and truthful advertisement" which shows accurate pH
levels of plaintiffs and defendants products. The comparison is
necessary but plaintiffs are trying to stifle competition and honest
criticism.
38. It is contended that the plaintiffs have also advertised products in
comparison with its competitors. In these advertisements Dove is
compared to other products in an attempt to demonstrate that the
others were harsh. Reference was made to pH value of Dove in
comparison with that of other products and in a manner such that
Dove was milder. These advertisement campaigns have allegedly been
suppressed by the plaintiffs. It is the case of the defendant's that their
claim in relation to pH is correct. The defendant's product has a pH
value of 5.5, the pH of the plaintiffs' products is higher and that of Lux
and Pears are equivalent to the pH of Rin whereas the perfect pH or
ideal pH level is 5.5.
39. The defendant has contended that its advertisement is truthful and
accurate. He states that the facts inasmuch as two or three bathing
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soap brands of the plaintiffs have the same pH as that of the plaintiffs'
popular detergent Rin. The plaintiffs have also used similar
comparison of washing detergent and bathing soaps using pH levels as
a reference point in its own advertisement which the plaintiffs have
suppressed.
40. The Advertising Standards Council of India ("ASCI") had on 24 th
August, 2016 concluded that pH cannot be the sole determinant of
mildness of the soap. It is contended that the decision of ASCI was in
relation to the plaintiffs advertisement for Dove soap bearing the tag
line "Harsh nahi, gentle chuniye" which displayed forearm-controlled
application of litmus paper on soaps. It is therefore contended that the
plaintiffs cannot complain about the current campaign by the order
passed by the ASCI.
41. It is contended that reliance placed upon the order passed by ASCI is
not appropriate and that cannot be used as a precedent in the present
set of facts. ASCI had held that the pH cannot be the sole determinant
of mildness of the soap. Moreover, ASCI is a self- regulatory voluntary
organization and a decision of ASCI cannot set a precedent. In fact it is
contended that the plaintiffs are themselves not followed the ASCI
directions and continued to advertise their products with reference to
pH values using litmus as a reference point. The defendant has
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contended that it has a fundamental right to commercial speech under
Article 19(1)(a) and cannot be prevented other than by virtue of
Article 19(2) of the Constitution. The allegations that the defendant is
launched the impugned advertising campaign to belittle the plaintiffs
product is denied. The pH level of bathing bars are a relevant factor to
enable consumers to choose between products. The allegations that the
defendant's advertisement is false, disparaging, denigrating and
impermissible in law are denied. The allegation that the defendant's
advertisement suggests that the plaintiffs' products are harsh and
harmful on the skin are also denied. The defendants have also denied
that it has conveyed to the consumer that pH is the sole determinative
factor for the quality of soap or that they have suggested that a pH
value of greater than 5.5 which is not safe. The defendant has denied
that their advertisements are misleading or disparaging. The defendant
has also denied the valuation of damages claimed by the plaintiff.
According to the defendant, all the advertisements are permissible in
law.
42. In the instant case, there is no doubt that the plaintiff's products are
sought to be compared with the defendants. It is not merely references
the look of the soap or its colour, shape or size but direct reference is
made to the plaintiff's products 'Lux' 'Pears' and 'Dove'. A
comparison of Lux, Pears and Dove is made with the defendant's
product SEBAMED. The question is whether the contents of the
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advertisement disparages the plaintiff's products and the aspect of
disparagement needs to be considered since the identity of the
plaintiff's products allegedly being disparaged is not in doubt and
hence I am required to render a finding on that aspect.
43.I have heard extensive arguments of both sides in these two IAs. Let me
deal with some of the law cited in the first instance. In Gujarat Co-
operative Milk Marketing Federation v/s. Hindustan Unilever Ltd. &
Ors. (Appeal no.240/2017) (supra) a Division Bench of this court
considered a challenge to grant of injunction by the single Judge
restraining the appellant from communicating to the public or
otherwise publishing two TVCs. The court held that the appellant
could make false claims to puff their product but could not air
advertisements disparaging the products of competitors. In that case
the single Judge found the TVCs were disparaging frozen desserts
marketed by the plaintiff. The finding of the learned single Judge was
upheld. The court relied upon the various other pronouncements
including in the case of Godrej Consumer Products Limited v/s.
Initiative Media Advertising & Anr. (supra) in which the Single Judge
held that advertisement campaigns on the visual media has an
immediate impact on the viewers and possibly on the purchaser's mind
particularly when a well-known cine star is endorsing it. The
defendant had not denied that its campaign points out the deleterious
effects of a particular dental powder. The balance of convenience was
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found to be in favour of the plaintiff. It was found that in not granting
injunction would cause irreparable injury to the plaintiff. The court
also made reference to Reckitt Benckiser (India) Ltd. v/s. Hindustan
Lever Limited17, wherein the plaintiff had sue to restrain the defendant
from promoting its soap "LIFEBUOY" allegedly disparaging the
plaintiff's soap "DETTOL" albeit without naming "DETTOL" in the
advertisement. An orange colour soap similar to that of Dettol was
shown. The court found that the indications in the photograph to the
orange colour soap bar, the contours of which the overall shape of the
soap all found to be indicative of the soap being Dettol.
Notwithstanding the fact that the brand name, logo or the sword device
did not appear in the orange soap bar. The court found that there is
no misgivings that the bar of soap that was being referred to in the
advertisement was the plaintiff's product. The court found that there
was no doubt that there is any ordinary antiseptic soap with the
combination of colour, shape, design and packaging.
44. In Annamalayar Agencies v/s. VVS & Sons Pvt. Ltd. & Ors .18, the
Madras High Court considered the advertisement pertaining to the
plaintiff's product "Parachute Coconut Oil" marketed in a blue bottle
and the defendant's product "VVD Gold Coconut Oil" is in a green
bottle. The model while holding both these bottles disapprovingly puts
2008(38) PTC 139
18 2008 (38) PTC 37 (Mad)
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down the blue bottle holding up the green bottle. The Single Judge
held that the message conveyed by the advertisement that the unnamed
blue bottle does not contain pure and natural coconut oil but the
defendant's product did. The green bottle was found to be disparaging
the plaintiffs' product.
45. In Reckitt & Colman of India Ltd. v/s. M.P. Ramchandran and Anr. 19,
the Calcutta High Court considered the advertisement of blue bottle
which was sought to be disparaged by the defendant's product "Ujala".
The court observed that in a suit of the nature at hand, one has to look
whether the advertisement puffed the product of the advertiser or in
the garb of doing so contended that the competitors product was
inferior. The court found that the defendant's product also being blue,
the advertisement proceeded to depict any inferior product. The court
found that it was difficult to proceed on the basis that the defendant
was not referring to blue bottle in the advertisement. It can be
deduced from the Amul judgment is the fact that if the basic
ingredients of disparagement are to be found, the injunction can be
granted and that is what we need to ascertain in the present case. In
Godrej Consumer Products (supra), the court had also observed that
the intent of the commercial, manner of the commercial, its storyline
and the messages sought to be conveyed must also be kept in mind
when deciding the question of disparagement. The court found that
19 1999(19) PTC 741
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the manner of the commercial should not amount to denigrating the
product of the competitor, if it did, then it amounted to disparagement.
Those observations are made in the case of two competing mosquito
repellent vaporizers.
46. In Gillete India (supra) a Division Bench of the Calcutta High Court
while considering appeals against an order and decree passed by a
single Judge found that the suit dealt with manufacturers of
competitive depilatories. The product in fact were different inasmuch
as Gillete products was a 'Razor' whereas the respondents was a
'Cream'. The grievance before a single Judge was the contention that
the defendant denigrated and disparaged the product "Veet"
manufactured by the respondent. The court considered numerous
decisions of the Delhi High Court, various judicial pronouncements
including that of the Supreme Court in Tata Press Ltd. v/s. Mahanagar
Telephone Nigam Limited holding that advertisements and such a
commercial speech has two facets. The public at large, the court found
is benefited by the information made available in the advertisement.
That in a democratic economy free flow of commercial information is
indispensable and the economic system in a democracy would be
handicapped without there being freedom of commercial speech. The
extent of commercial speech may have deeper interest in the
advertisement than the businessman who is behind the publication.
For example, it was observed that as and by way of an advertisement
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giving information regarding a lifesaving drug may have more
importance to general public than to the advertiser. The Supreme
Court held commercial speech to be a part of the freedom of speech
under Article 19(1)(a) of the Constitution. In the present case, the
defendant has taken up a plea that it had only published the truth
about the plaintiffs' products. The defendant denies any element of
slander in the advertisement campaign.
47. In my view there is only one aspect that has to be considered in the
facts of the present case viz. whether by making reference to the
plaintiff's products, the suit campaign is disparaging or denigrating the
plaintiffs' soaps. It must be borne in mind that the defendant claims
that its product SEBAMED is not a soap. Thus, there is an admission on
a crucial one inasmuch as the defendant's product SEBAMED is not a
soap whereas all of the plaintiff's products referred to in the suit
campaign are soaps. Quite apart from that fact in some cases, bathing
bars, cleansing bars are referred to a soaps and vice versa, it is also to
be borne in mind that the test to be applied is how an ordinary member
of the public would respond to the advertisement in India while
advertisers seek to attract viewers using catchy phrases, visuals,
freedom of commercial speech can be subjected to reasonable
restrictions. The right to freedom of speech (including commercial
speech) offers no protection against defamation, slander, libel,
denigration or disparagement. In Reckitt & Colman of India v/s.
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M.P.Ramchadran (supra) the Calcutta High Court set out the following
criteria;
"(i) A tradesman is entitled to declare his goods to be
best in the world, even though the declaration is
untrue.
(ii) He can also say that his goods are better than his
competitors, even though such statement is untrue.
(iii) For the purpose of saying that his goods are the
best in the world or his goods are better than his
competitors he can even compare the advantages of
his goods over the goods of others.
(iv) He however, cannot, while saying that his goods
are better than his competitors, say that his
competitors goods are bad. If he says so, he really
slanders the goods of his competitors. In other words,
he defames his competitors and their goods, which is
not permissible.
(v) If there is no defamation to the goods or to the
manufacturer of such goods no action lies, but if
there is such defamation an action lies and if an
action lies for recovery of damages for defamation,
then the court is also competent to grant an order of
injunction restraining repetition of such defamation."
48. The court also found that 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
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defamation. Considering the balance of convenience, the court would
have to weigh the competing interests of the applicant seeking the
injunction and the party opposing injunction. The impact of social
media was also considered. Observing that watching television and
surfing the internet are part of the daily routine in every household
and advertisements have a great impact on consumers, the court also
found that while the novelty of advertisement may attract the potential
buyers, derogatory references to goods and services on others may also
leave a negative impression. The court inter alia observed whether or
not the contents of the advertisement is true or not would be
adjudicated upon trial and the disputes regarding acidity levels or
alkalinity levels of the products cannot be decided at an interlocutory
stage.
49. In the present case, I do not find the need to delve into in depth
examination of the pH values of the plaintiff's soap since they appear
to have been admitted. The question is now to consider whether in the
face of plaintiffs having admitted pH values of Lux, Dove and Pears,
whether campaign continues to be disparaging, denigrating the
plaintiffs' products. That brings us to the relevance of pH in the instant
case on whether the defendant's products can be said to be actually
better and safer for human skin, based on its pH value of 5.5. On this
aspect, material placed before the court does not appear to establish the
defendant's case of a an exact 5.5 pH. If that is so, would it be correct
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to compare the rival products on the basis of pH value alone?
50. If the suit campaign merely made reference to the apparent higher pH
in general without reference to specific brands, the complexion of the
suit campaign would be different. It is the nature of the commercial
and in the manner in which the advertisement has been created as part
of the defendant's exercise of freedom of commercial speech that has to
be considered. In Karamchand Appliances Pvt. Ltd. (supra), the court
considered Black's Law Dictionary meaning of the expressions
"disparagement and disparagement of goods ". Those relevant extracts
of definitions can be usefully reproduced.
Disparagement:
"Matter which is intended by its publisher to be understood or
which is reasonably understood to cast doubt upon the
existence or extent of another's property in land, chattels or
intangible, things or upon their quality.
A falsehood that tends to denigrate the goods or services of
another party is actionable in a common law suit for
disparagement.
Disparagement of goods:
"A statement about a competitor's goods which is untrue or
misleading and is made to influence or tends to influence the
public not to buy."
51. The court observed that whether or not goods of a trader or
manufacturer are disparaged would depend upon the facts of each
case and there cannot be a cut and dried formula to be applied
generally. The court should be conscious that the disparagement may
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be brazen, clear and direct but could also to be clever, mischievous or
covert. The court should examine whether or not the rival parties
advertisement detracts or discredits the reputation of another's
products. The court referred to a large number of cases including
Reckitt & Colman of India v/s. M.P. Ramchandran & Anr. (supra)
[1999 (19) PTC 741] and they found merit in the case inter alia
holding that while comparative advertising is permissible it should not
disparage or denigrate the products of the competitor.
52. In Lakhanpal National Limited (supra), the Supreme Court considered
the question of an unfair trade practice under the Monopolies and
Restrictive Trade Practices Act, 1969. That case pertained to batteries
known as "Novino" and the Court observed that the key would be to
examine whether there are false or misleading statements made and
the impact of such representations on the common man and whether it
could cause a common man to lead to or draw a conclusion. That
exercise could also be undertaken in the present case.
53. In Colgate Palmolive Company (supra), the Division Bench of the
Delhi High Court discussed the law on disparagement. Both Mr.
Tulzapurkar and Mr. Dhond have referred to relied upon different
portions. On behalf of the plaintiffs, my attention is invited to
paragraph 28 which deals with the decision of the Chancery Division
in the case of De Beers Abrasive Products Ltd. v/s. International
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General Electric Co. of New York Ltd .20 wherein the court considered
the fact of false advertising and observed that the law permits any
trader to puff his own goods even though puffing involves denigration
of rival goods. However, if the advertisement says that "the goods of
one manufacturer are better than that of the other because the others
product is absolute rubbish" the statement is actionable. On the other
hand, if the statement is to the effect that the goods in question are the
best in the world, it would not be actionable. The Supreme Court
found that as long as claims made in an advertisement are only
puffery, it would not justify interference and if a party chooses to use a
hyperbole which may not be description of goods, the ordinary persons
would take it "with a large pinch of salt."
54. Yet in another case of Hindustan Unilever Limited v/s. Gujarat Co-
operative Milk Marketing Federation Ltd. (Division Bench) (supra), this
court held that generic disparagement of a rival product without
specifically identifying or pin pointing rival product is equally
objectionable. This case pertains to the Frozen Dessert v/s. Ice Cream
controversy. Useful reference can also be made to an extract from the
decision of the Madras High Court in Annamalayar Agencies (supra)
which is reproduced below for ease of reference;
" (1) A manufacturer of a disparaged product which though
not identified by name can complain of and seek to injunct
such disparagement.
1975 (2) ALL ER 599
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(2) Generic disparagement of a rival product without
specifically identifying or pinpointing the rival product is
equally objectionable.
(3) Advertisement campaign on visual media has an
immediate impact on the viewers and possible purchasers'
mind particularly a well-known cinema star is endorsing it.
(4) There must be a dividing line between statements that
are actionable and those which are not.
(5) When a claim of superiority over a rival product is
made and until the same is proved by a panel of experts, an
order of interim nature should operate against those
advertisements.
(6) Advertiser has a right, to boast of its technological
superiority in comparison with a product of a competitor,
however while doing so, he cannot disparage the goods of the
competitor.
(7) If the Defendants highlight its better future while
comparing its product with that of the Plaintiff in an
advertisement, no possible objection can be raised thereto.
(8) Courts will injunct an advertiser from publishing an
article if the dominant purpose is to injure the reputation of
the Plaintiff.
(9) The factors to be kept in mind to decide the question of
disparagement are (1) intent of the commercial (2) manner of
the commercial (3) story line of the commercial, and (4) the
message sought to be conveyed by the commercial.
10) The degree of disparagement must be such that it
would tantamount to or almost tantamount to defamation.
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(11) An advertiser can say that his product is better than
that of his rival, but he cannot say that the rival's product is
inferior to his product."
55. Of particular relevance to the present case is the observation of the
learned Single Judge in paragraph 23 which is reproduced below for
ease of reference;
"23. Any campaign to educate the members of the public by
placing before them the true and correct facts/ingredients
used in a product should always be welcomed. However, no
manufacturer can place misleading information before the
consumers qua the product of his rivals and thereby
disparage/discredit/belittle such product including
influencing the consumer not to buy the same in the garb of
educating and/or bringing the correct facts before the
members of the public, as is done in the present case by
Defendant No.1. Apart from educating the consumers qua the
difference in products by mentioning the correct facts and
following the legal route, action can also be taken against the
manufacturers of products, if they are found violating Section
53 of the FSSA, 2006 as alleged by the Defendant No.1. The
aforesaid excuse /reason given by Defendant No.1 therefore
lacks justification and is rejected."
56. Both sides have placed reliance upon the dictionary meaning of
"perfect" v/s. "ideal". On behalf of the plaintiffs it is contended that they
are one and the same. On behalf of defendant, it is contended that they
are different since "perfect" has now been given up for the use of the
word "ideal". To my mind, this is an indication that apparently there is
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no justification the defendant has provided for describing its product
which is admittedly not a Soap "ideal" for human skin in comparison
with the plaintiffs' soaps.
57. On the aspect of trade mark, Calcutta High Court has in the case of
Reckitt Benckiser (India) Ltd. v/s. Hindustan Unilever Ltd. [2014 SCC
OnLine Cal 6094] (supra) observed that suits between two companies
were objecting advertisement by each other. There was an attempt to
denigrate the product of the other and that the Trade Marks Act
prohibits one registered mark taking unfair advantage of another
mark holder by any advertisement detrimental to its distinctive
character and reputation. The defendant has however sought to
distinguish the judgment in its application of the facts in the present
case. The Division Bench having considered the decision of single
Judge observed that there is nothing on law to permit a serious
comparison by a trader of his product with the product of another and
that comparison should not be more than a "puff".
58. In Reckitt & Colman of India Ltd. v/s. Jyothy Laboratories Ltd. & Ors.
(supra), the Division Bench of Calcutta High Court observed on the
aspect of balance of convenience that the offending advertisement if
continued, which cause damages to reputation and goodwill of the
other, such that it would be irreparable loss and impossible of
quantification. On the other hand, the defendant's claim on
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constitutional right of freedom of speech cannot be unrestricted. In
that case, however, I find that they were only asking for postponement
of the advertisement of the product in a particular way till the
interlocutory application was disposed. The order of injunction came
to be vacated and the appeal court restored the order specially since
the injunction sought was only disposing the advertisement in a
particular way till the interlocutory application was disposed. In the
present case we are at the stage of interim application itself and I find
that Mr. Dhond has on behalf of the defendant sought to distinguish
this judgment on facts.
59. In Reckitt Benckiser (India) Ltd. v/s. Hindustan Uni Lever Ltd . (supra),
(2013) SCC Online Del 1928 , a single Judge of the Delhi High Court
was dealing with test reports of Lifebuoy and Dettol soaps and
observed that the television commercial should be construed and tested
from the perspective of an ordinary person of average intelligence and
user of the product and therefore technicalities in the reports
establishing the efficiency of the two products would not suffice and
that advertisers would have to tread much more carefully when
creating comparative advertisements for television.
60. In Hindustan Unilever Limited v/s. Reckitt Benckiser India Limited,
[2014 SCC OnLine Del 490] (supra), the Division Bench of the Delhi
High Court observed that the arguments of the petitioner therein on
the basis of test reports was of little relevance. The depiction in the
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case of Reckitt's soap described as "ordinary antiseptic soap" is bad for
the skin. On the other hand, the plaintiff produced certain Exhibits to
show that other oval shaped, orange coloured and green wrapper
packaged soaps exist, it made no attempt to correlate the shapes and
colour with specific products nor the defendant's witness to do so and
the plaintiff could not complain of being targeted by the impugned
advertisement. In the instant case, this aspect will not arise since there
is clearly identification of the plaintiff's products in the advertisement
itself.
61. Mr. Dhond has relied upon the following judgments;
(1) Havells India Ltd. & Anr. v/s. Amritanshu Khaitan & Ors. 21
(2) Horlicks Ltd. & Anr. v/s. Heinz India Private Limited 22
(3) Horlicks Ltd. & Anr. v/s. Heinz India Pvt. Ltd. 23
(4) Dabur India Ltd. v/s. M/s. Colortek Meghalaya Pvt. Ltd. 24
(5) Dabur India Ltd. v/s. M/s. Colortek Meghalaya Pvt. Ltd. 25
(6) Puro Wellness Pvt. Ltd. v/s. Tata Chemicals Ltd. 26
(7) Skol Breweries Limited v/s. Fortune Alcobrew Pvt. Limited and
Ors.27
62. Apart from the judgments Mr. Dhond on behalf of the defendants has
2015 SCC OnLine Del 8115
CS(COMM)808/2017 (dt.17/12/2018)
FAO(OS)(COMM)309/2018 (DT.15/3/2019)
2009 SCC OnLine Del 3940
2010 SCC OnLine Del 391
2019 (178) DRJ 130(DB)
2012 Vol.114(4) Bom. L.R. 2313
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relied upon, my attention is also invited to several online articles some
of which are follows;
"Impact of Water Exposure and Temperature
Changes on Skin Barrier Function."
In a convenience compilation, further articles titled below have been
arrayed as;
"1) Evaluation of pH of bathing soaps and
shampoos for skin and hair care;
2) The effect of detergents on skin pH and its
consequences;
3) Cleansing of sensitive skin; with
determination of the pH of the skin following
use of soap and a soap substitute;
4) Dermatologically controlled in-use test of
SEBAMED soap free washing bar in a daily
care unit;
5) Skin pH and Cutaneous Microflora;
6) The pH of the skin surface and its impact on the
barrier function;
7) Skin pH : From basic science to basic skin care;
8) The concept of the Acid Mantle of the skin : Its
relevance for the choice of skin cleansers;
9) The pH of commercially available rinse-off
products in Sri Lanka and their effect on skin
pH;
10) Effect of pH Changes in a specific detergent
Multicomponent Emulsion on the water content
of stratum corneum; and
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11) Syndets in the treatment of Atopic Eczema."
63. Lastly, reliance is placed on the registration certificate under the
Drugs and Cosmetics Rules, 1945, for the purposes of import of
cosmetics by the defendant and the registration certificate issued to the
defendant's principal M/s. Sebapharma GmbH & Co.KG, dated 3 rd
September, 2019. In my view, for the purposes of the present IA, it
may not be appropriate to delve into the detailed scientific studies some
of which are conflicting in nature and evaluation of these must be left
to the trial of the suit. That having been said in an order dated 21 st
January, 2021, the Division Bench while disposing Commercial Appeal
(L) no.1919 of 2021 observed that the only controversy before the
court that was use of the words "ideal" and "not ideal" in the suit
campaign. The court observed thus;
"Prima facie, at this ad-interim stage, it is fairly clear to
our mind that pH factor of a toilet or bathing soap is an
important and relevant aspect and it is quite legitimate
to make it a talking point for recommending one's
product to the purchasing public. The Respondent has
relied on literature available in public domain in that
behalf. Indian Journal of Dermatology has published an
article under the title 'Evaluation of pH of Bathing Soaps
and Shampoos for Skin and Hair Care'. The article
makes a point in its extract as a background fact that
normal healthy skin has potential of hydrogen (pH)
range of 5.4-5.9 and a normal bacterial flora, and use of
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a soap with high pH causes an increase in skin pH,
which in turn causes an increase in dehydrative effect,
irritability and alteration in the bacterial flora. It
describes in its extract of results that majority of soaps
have a pH within the range of 9-10, whilst majority of
shampoos have a pH within the range of 6-7. The
article further goes on to state that the use of skin
cleansing agents with a pH of about 5.5 may be of
relevance in prevention and treatment of certain skin
diseases, which are caused due to increase in
dehydrative effect, irritability and propionibacterial
count. There is also another scientific article under the
title 'The Effect of Detergents on Skin pH and Its
Consequences'. Even this article claims that the normal
pH range of human skin is said to be between 5.4 and
5.9 and that skin surface pH increases upon regular use
of a conventional soap and decreases again after change
to an acidic cleanser of pH 5.5 and vice versa. Having
regard to this and the other material produced by the
Respondent in its short reply, submitted for an ad
interim hearing before the learned Single Judge, it is
safe to conclude at least at this threshold prima facie
stage that the position taken by the Respondent in its
advertisements is in keeping with the scientific opinion
and may be said to be an important piece of information
for the purchasing public. There is, thus, nothing
wrong, at least this much could be said at this threshold
stage, in the Respondent comparing the pH of the two
products and claiming its product to be ideal for
sensitive skin."
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64. The Division Bench also observed that there is a scientific basis for
contending that the appellants products are not ideal for sensitive skin.
However, we are now at the interim stage at the disposal of the IA and
it is not just the two articles that were placed before the Division Bench
that have to be taken into consideration, large number of articles and
reviews, including of some persons sponsored by the plaintiff have
been pressed into service.
65. The Delhi High Court has in the case of Havells India Ltd. & Anr. v/s.
Amritanshu Khaitan & Ors. (supra) , construed comparative advertising
and observed that a certain amount of disparagement is implicit and
that failure to point out a competitor's advantages is not necessarily
dishonest. Competitors may compare but cannot mislead. Reliance is
also placed on the decision of the English Court in Barclays Bank Plc v
s. RBS Advanta28. The court eventually observed that, "it was open to
an advertiser to highlight a special feature/ characteristic of its product
which sets it apart from its competitors and to make a comparison as
long as it is true. Whereas Mr. Dhond laid emphasis on this aspect,
nothing before this court suggests that the claim of the defendant
should have pH of 5.5 is true. That can be established only at the trial.
66. In Horlicks Ltd. (supra), the impugned advertisement was one
(1996) R.P.C. 307
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promoting a competitor "Complan". The advertisement was modified
to some extent. It provided a visual comparison of the protein content.
In that case, the two products were actually competing with each
other. In the present case, the defendant's product is not a Soap but a
"Cleansing bar" and meant to use for sensitive skin and those with
soap intolerance. While the defendant has relied upon the judgment in
Horlicks (supra) that has in turn relied upon the Delhi High Court
decision in Havells India Ltd. [2015 SCC OnLine Del 8115] (supra) and
has set out, in its opinion, that comparative advertisement is legal
based on the Advertising Standards Council of India Code.
67. Chapter IV of that Code is relevant for our purposes and is
reproduced below;
"CHAPTER IV
To ensure that advertisements observe fairness in competition
such that the consumer's need to be informed on choice in the
marketplace and the Canons of generally accepted competitive
behavior in business are both served.
1. Advertisements containing comparisons with other
manufacturers or suppliers or with other products including
those where a competitor is named, are permissible in the
interests of vigorous competition and public enlightenment,
provided:
(a) It is clear what aspects of the advertiser's product are being
compared with what aspects of the competitor's product.
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(b) The subject matter of comparison is not chosen in such a
way as to confer an artificial advantage upon the advertiser or
so as to suggest that a better bargain is offered than is truly the
case.
(c) The comparisons are factual, accurate and capable of
substantiation.
(d) There is no likelihood of the consumer being misled as a
result of the comparison, whether about the product advertised
or that with which it is compared.
(e) The advertisement does not unfairly denigrate, attack or
discredit other products, advertisers or advertisements directly
or by implication."
68. In paragraph 28 of Havells (supra), the court held that comparative
advertising can be resorted to with regard to like products and can be
allowed provided the following conditions are met;
(i) goods or services meeting the same needs or intended for the same
purpose;
(ii) one or more material, relevant, verifiable and representative
features (which may include price); and
(iii) products with the same designation of origin (where applicable).
There are numerous other decisions that have been cited for the
purposes of the IA many of which are not relevant. The High Court
then observed that competitors can compare but cannot mislead.
Misleading advertising is also been considered as defined under Article
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2(2) of the European Union Council Directive 84/450 to mean "any
advertising which is in any way, including its presentation, deceives or
is likely to deceive the persons to whom it is addressed or whom it
reaches and which, by reason of its, deceptive nature, is likely to affect
their economic behaviour or which, for those reasons, injures or is
likely to injure a competitor."
69. I am inclined to hold that given the defendant's declaration and
admission that its product SEBAMED is not a soap the comparison
with the plaintiffs' soap is not appropriate. These are not products
which meet the same end or intended for the same purpose as
admitted by the defendant itself. The modification of the advertisement
deleting reference to Rin makes no difference. The modified campaign
can be continues to compare the soaps with a cleansing bar which does
not contain soap. If the defendant had contended that its product did
not contain soap and all soaps in general are not suitable for sensitive
skin but its own product SEBAMED was, it was a different matter
altogether but viewing the campaign as a whole, one sees that it is not
case where the defendant had significantly puffed its own product
SEBAMED which is admittedly recommended for sensitive skin and
subject to the condition of obtaining medical advice.
70. Mr. Dhond had also submitted that the plaintiffs have themselves
launched an overseas campaign in the past comparing Dove Beauty
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Bar with other products viz. Ivory and Alpha Keri, Natural Care Soap
and Camay and also Jergens Mild and Palmolive, Cuticura and
Neutrogena. These campaigns are admittedly with comparable
products but Dove did not claim to be in an exclusive category from
the other soaps used in the comparative advertisement. All were soaps.
Mr. Dhond also submitted that in case of Pears, it is shown as a
"bathing bar" and not a "soap". Elsewhere on website of the plaintiff it
is shown as a "hand soap". Relying upon the decision of the Division
Bench in the Commercial Appeal (L) no.1919 of 2021, Mr. Dhond had
submitted that there is no case for granting an injunction in the
present set of circumstances because the advertising campaign has
modified and the defendant would continue that campaign as modified
pending the hearing of the suit. The defendants will also not make
reference to "ek saal pehle" alluding to the original campaign. Thus,
Mr.Dhond submitted that if the campaign is modified it will meet the
ends of justice. I am unable to agree.
71. I find that the comparison in the campaign is clearly amongst the
incomparable. The Indian Journal of Dermatology referred to by the
Division Bench and as canvassed by Mr. Dhond, provides for a normal
healthy skin which has a pH range of 5.4 to 5.9. It refers to the fact that
use of soap with high pH which would cause an increase in skin pH
irritability and alteration in bacterial flora. The majority of soaps and
shampoos do not disclose their pH but the effect remain statutorily
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which is not liable to be disclosed. It is evident from the material
placed before the court by Mr. Sakhardande, the learned Senior
Counsel, appearing on behalf of the plaintiff in the companion suit. In
the introduction in this very Article of September October 2014, the
authors have recorded that use of skin cleansing agents with the pH of
about 5.5 may be of relevance in the prevention and treatment of skin
diseases. It is pertaining to a note on the defendant's product
SEBAMED that it is not marketed as a soap and indeed it is a soap free.
It proclaimed declaration of a pH of 5.5 is a fact that is yet to be
proved. pH is not a selling point for any toilet soap. All toilet soaps are
thus found to be having a higher pH. The studies are consistent on this
aspect and indeed the study recorded by the Indian Journal of
Dermatology (supra) did find that majority of the samples of soap
commonly used by the population having pH of between 9.01 and 11.
Only two samples had pH corresponding to that of a skin pH. The
difference is attributed probably due to greater accuracy of the pH
meter used in the study when compared to pH paper. The conclusion
is that soaps and shampoos have commonly used a pH outside the
range of normal skin and hair pH values by use. On recommending a
soap to patients specially those who have sensitive skin and acne prone
skin, due consideration is given to the pH factor and it is suggested that
manufacturers may give a thought to pH of soaps and shampoos
manufactured by them so that their products will be more skin and
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hair friendly. The fact that skin pH is generally found to be between
5.4 and 5.9 is seen in other reports as well but all of these referred to
samples taken abroad including in Canada and elsewhere overseas in
different conditions. None of these studies relied upon in the course of
hearing are studies carried out locally in India.
72. An article supporting the use of Soap Free Washing Bars by the
Department of Dermatology Horst-Schmitt Kliniken Wesbaden,
Germany, refers to SEBAMED as a soap-free washing bar. In India it is
referred to as a Cleansing bar. Be that as it may, the entire body of
research that has been placed before the court are all indicative of the
fact that SEBAMED is for sensitive skin for persons who are reactive to
soap and furthermore the use of SEBAMED is advised under medical
supervision.
73. Another review article by Saba M. Ali and Gil Yosipovitch records skin
pH varying between 4 to 6. The defendant's product has been clearly
demarcated for restricted use on sensitive skin and subject to medical
advice. It is admittedly soap-free. It is not produced by using the
saponification process which has been highlighted by Mr.
Sakhardande. The process for production of SEBAMED is not
saponification as in soaps. In these circumstances, I thought it fit to
consider the descriptions on the package of SEBAMED. It is described
thus;
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CLEANSING BAR
For normal to oily skin
Soap-free
Safeguards the skin with vitamins
and moisturizing amino acids
The declaration of the side of the package reads as follows;
"Soap and alkali-free sebamed Cleansing Bar gently cleanses deep into the pores.
An effective moisturizing complex, containing essential skin-related amino acids,
vitamins and lecithin, promotes the moisturize retaining capacity of your skin. The
pH value of 5.5 maintains the balance of the acid mantle's hydro-lipid system and
its protective barrier function against damaging environmental influences. If you
have a skin disease or soap intolerance, consult your doctor to use this product as
a therapy supportive skin care." (Emphasis supplied)
The above label indicates that even if you have a skin disease or suffer
from soap intolerance, you must consult a doctor prior to using the
bar. This is an indication that the bar may not be "Safe" or "Ideal" as
claimed the in the campaign and medical advice prior to use is
recommended.
74. The report by the Bonn & Munich University records that skin pH is
affected by a great number of endogenous factors example being skin
moisturizer, sweat, sebum, anatomic site, genetic pre-disposition and
age. That apart other factors like use of detergents, application of
cosmetic products, dressings as well as tropical antibiotics may
influence skin pH. Skin was reported to be acidic by nature. That was
determined by Heuss in 1892 and numerous studies have confirmed
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this observation. The report also shows that the overall evaluation of
the publications which generally recognized the fact that surface pH
value of human skin based on the forearm of a healthy adult white
male is around 5.4 to 5.9. We are not in the instant case concerned
with the human skin of the nature that the said reviewers tested the
products concerned on. The neutral point it is clearly shown is 7 and
the maximum values of acidic and alkaline ranges are 0 to 14. Thus,
on a balance, if a neutral position is taken, the pH value appears to be
7. Furthermore, there are numerous external factors which are said to
affect skin surface pH one of the most important one being skin
cleansing. pH may rise for a few hours after cleansing the skin with an
alkaline soap. pH could reach 10.5 and 11. If synthetic detergents
treated at the same pH as skin and even tap water, would lead to a rise
in the skin surface pH probably for a shorter period of time.
Furthermore, the temporary pH changes are limited to uppermost
layers of the skin. All in all, I do not see how the version of the
defendants that 5.5 is the ideal pH for the human skin can be used to
compare SEBAMED a soap-free product used under medical advice for
treatment of sensitive skin with soaps available off the shelf and usable
generally.
75. Notwithstanding the unavoidable references that I have made to some
reviews and data canvassed by both sides. I am of the view that we
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are concerned with ascertaining whether or not suit campaign
disparages or denigrates the products of the plaintiffs, reference to
opinions of experts and scientists on skin pH, soap pH, cleansing bar
pH need not be gone into. Courts are not equipped with the
wherewithal for analyzing and deciding on the basis of scientific data
at this interim stage. The fate of the IA is to be decided on the basis of
comparisons made in the suit campaign viewed from the point of view
of a common man, a consumer of ordinary disposition and average
intelligence.
76. Thus claiming to be a distinctive product, I am of the view that the
defendant's product is not comparable to soaps and in this light, when
we consider the suit campaign I find that it is not an inadvertent or
incidental comparison. The comparison is with specific products of a
plaintiff whose popularity has not been questioned. The product of the
plaintiff in the second suit being "Santoor" is sought to be presented as
being inferior and not ideal and not substitute for sensitive skin. The
defendant has adopted common arguments of both the plaintiffs. Thus,
the limited scope of these IA as to ascertain whether the suit campaign
is tends to denigrate or disparage the plaintiffs product. This is not a
case where the parties have sought to disparage each other's products
which are direct competitors. There have been several instances such
as the 'Cola wars' where rival competitors had mounted campaigns
promoting competitive products, both Colas.
IAL-808-2021 (COMIPL-805-2021).doc
77. In the instant case, all these cases cited before me, the comparisons
were mainly between competitive products. The element of
competition in the facts of the present case is limited inasmuch as
considering the selling price of these products. It is admitted that the
defendant's product is launching at a premium price, approximately
@ Rs.100/-. The plaintiff's products are cheaper, they are produced
locally. SEBAMED is imported from Germany registered under the
Drugs and Cosmetics Rules, 1945. Considering the overall nature of
the advertisements, there is a clear attempt to disparage the plaintiffs
products, initially by comparing it with Rin which is a detergent, the
impression then created was that bathing with any of the soaps of the
plaintiffs in these two suits was equivalent to bathing bar with Rin.
Thus, creating an impression in the mind of the common man that the
plaintiff's soaps are to be avoided unless they wish to bathe with a
detergent. This since has been modified the campaign as it was
launched clearly assailed the plaintiffs products as "unsafe". The
plaintiffs have contended that they have reputation to protect their
marks which are valuable and they have been marketed for many
years. Comparison of their product with a detergent also required by
the plaintiffs was clearly in a disparaging that is has been sought to be
cured by making modifications deleting reference to Rin and deleting
certain portions of advertisement referring to "safe/unsafe" replacing
with "ideal" "not ideal". But even the current campaign describing the
IAL-808-2021 (COMIPL-805-2021).doc
SEBAMED is alluding to the plaintiff's soaps as being "not ideal". In
fact if SEBAMED is not a soap, then all soaps in the market are sought
to be treated as not ideal.
78. Alternatively it could imply that all soaps other than the plaintiffs are
better than the plaintiffs. Such a comparison is acceptable however it
ignores one important factor and that is whether or not they were
comparable. In this behalf, the guidelines provided by ASCI in Chapter
IV clearly set out that the advertisement containing comparison with
other manufacturers are factual, accurate and capable of
substantiation. There should be no likelihood of consumer being
misled. The advertisement should not unfairly denigrate or discredit
other products directly or by implication which in the present case the
defendant has clearly done. To my mind the final changes in the
advertisements made at over time by virtue of the during the pendency
of this interim application make no difference to the substantial case of
the plaintiff seeks to oppose the campaign as a whole. The campaign
convey the same message "Do not use the plaintiffs soaps but use
SEBAMED instead because it is "ideal". According to the defendant and
apparently soaps are not suitable for sensitive skin. Whether or not the
soap is suitable will be known by one who uses the soap and that
irritation will also be known only upon using the soap. These are
aspects which clearly indicate that SEBAMED not being a soap, being
IAL-808-2021 (COMIPL-805-2021).doc
reportedly alkali free, claims that it is ideal for use on sensitive skin.
Once that fact is admitted as it undoubtedly has been in view of the
admission that it is soap-free, there is no real contest on the aspect that
this comparison was and continues to be an unreasonable one.
79. I am of the view that the suit campaign is certainly disparaging and
denigrating the plaintiffs' products considering the manner in which
the advertisement has been created. That part it appears to be in breach
of the Code of self-regulation issued by ASCI. Television commercials
would have immense impact on the minds of the consumer. Hoardings
websites may only be viewed for seconds. In fact as the common
person passes by a hoarding she/he may not even read the entire
hoarding. So also the website and banners may not be read its entirety
but a television commercial is a more engaging form of
communication. It is common knowledge that commercials are
inserted at the beginning, during or just after popular television
broadcasts be it cricket or 'soap' operas. The viewer is more likely to be
directly engaged in watching the commercial from start to finish while
awaiting the broadcast content to resume.
80. The parties have provided copies of the TVCs. References are
specifically made to the qualities of the milk like whiteness of Dove, the
transparency of Pears, Celebrity usage of Lux through these
advertisements. I am of the view that the attempt to disparage these
IAL-808-2021 (COMIPL-805-2021).doc
products is not merely in the storyboard but also considering the
intonation of the voice overs of the persons featured in the TVCs. There
is a clear unmistakable underlying message " Do not use the plaintiffs'
products since they are not "ideal" but use the defendant instead ." The
advertising does not convey the fact that several reviews relied upon by
the defendant themselves have disclosed that pH of most soaps is
between 9.01 to 11. The defendant's product appears to be marketed
as an alternative to soap itself. Thus every form of soap is sought to be
ruled out for use on sensitive skin. If that would be the true
advertisement of the suit campaign, there would have been no occasion
of pick and choose individual products of the plaintiffs in the two suits.
81. It is for the court to sit in judgment as to the defendants use of the
commercial speech and as we have noticed the freedom of commercial
speech is not uncontrolled or unrestricted. Thus, when one focuses on
the TVCs in particular and the manner of description of the plaintiffs
products in comparison with the defendant's the intonation of the
pictured presenters plays an important part and in the facts of the case
it is clearly disparaging the plaintiffs products. It is not a bonafide
scientific comparison. The suit campaign seeks to compare pH values
of incomparable products and undoubtedly seeks to attribute to the
plaintiffs products inferiority of quality and lack of reduced beneficial
results or to complete lack of benefits of using the plaintiffs products.
IAL-808-2021 (COMIPL-805-2021).doc
82. I am not for the purpose of the present interim application inclined to
focus on the material sought to be placed comparing pH values. Some
of these reports may have been prepared under different circumstances
for example the participants in the tests are not necessarily in this
country. Some reports have made differentiate between soaps with
persons of a different gender and age. The use of water of the
appropriate temperature and how cold or lukewarm water may be
preferred to hot water are other aspects that the varying reports have
referred to. These are not the aspects that the court is required to
consider at this stage at all and hence on first principles I find that the
comparison sought to be made and the message said to be conveyed in
these advertisements are between products which cannot be compared,
thus offering no justification. The suit campaign on the basis of
products that are incomparable is clearly intended to disparage the
plaintiffs products. There also appears to be prima facie the case of
infringement, however, that is not something that can be gone into at
this interim stage. For the purposes of the IA, the reliefs sought herein,
I am of the view that the comparison between incomparable products
justifies grant of reliefs. The facts situation in various other judgments
cited before me were of comparable apart from being violative of ASCI
guidelines, I have no doubt in my mind that advertisements in suit
campaign unfairly seeks to discredit products of the plaintiffs and
therefore the plaintiffs deserves protection.
IAL-808-2021 (COMIPL-805-2021).doc
83. It is also pertinent to note that on behalf of the plaintiffs, Dr. Saraf has
sought to distinguish the comparative advertisement in the case of
Colgate v/s. Hindustan Unilever, Havells India, Horlicks which did not
directly show the product of the plaintiff. It would not be appropriate
to consider why in those cases injunctions were not granted and why
some were granted since the facts differ considerably. In my view, the
plaintiffs in these two suits have succeeded in making a strong prima
facie case. The balance of convenience is clearly favouring the
plaintiffs and it is evident from the fact that the defendant is a new
entrant in the market and that the plaintiffs' products have been
around for a long time and sales figures have sought to establish this.
The defendant also recognizes the plaintiffs reputation in the market
and popularity of the plaintiffs' products and thus, the impugned
campaign targeting successful and popular products of the plaintiffs in
my view is likely to cause irreparable loss and damage to the plaintiffs
reputation and products thus, inviting an appropriate orders pending
the hearing and final disposal of the suit. Having come to the
conclusion that the impugned campaign is denigrating and
disparaging the plaintiffs' products in my view the impugned
campaign also amounts to infringement of the plaintiffs' trade marks
in the manner contemplated in Section 29(8)(c) and therefore the
plaintiffs are entitled to appropriate relief.
IAL-808-2021 (COMIPL-805-2021).doc
84. The IAs are therefore disposed as follows;
IA (L) No.808 of 2021 in Commercial IP Suit (L)no.805 of 2021
(i) The defendants its parent subsidiaries, group companies, affiliated
entities and directors, servants and agents including the advertising
agencies engaged are restrained by an order of injunction from in any
manner broadcasting or telecasting and or otherwise communicating
to the public the impugned campaign including without limitation the
hoardings, television commercials, banners, including on social media
howsoever described, including via the internet, the suit campaign and
from disparaging or denigrating the plaintiffs' products Lux, Dove,
Pears and Rin, pending the hearing and final disposal of the suit.
(ii) Pending the hearing and final disposal of the suit, the defendants its
subsidiaries, servants and agents are directed to deliver up for
destruction the master copies and other copies used for broadcasting
communicating to the public the impugned campaign including
without limitation the television commercials, banners, including on
social media howsoever described, through the means of the internet,
disparaging or denigrating the plaintiffs' products Lux, Dove, Pears
and Rin, and confirm discontinuation of use of the impugned suit
campaign on oath within a period of four weeks from today.
(iii) IA is also allowed in terms of prayer clause (c) which reads thus;
"That pending hearing and final disposal of the present suit,
IAL-808-2021 (COMIPL-805-2021).doc
the defendant, its parent company, group companies,
subsidiaries, directors, servants, officers, employees,
representatives, agents, advertising agencies and all other
persons claiming under them or acting in concert with them
or on their behalf or acting on their instructions be
restrained by an order and injunction of this Court from in
any manner whatsoever infringing the plaintiff no.1's LUX
Marks bearing registration Nos.87117, 1199650 and
2920182 and/or the plaintiff no.1's DOVE Marks bearing
registration Nos.247934, 602155 and 1843035 and/or the
plaintiff No.2's PEARS Mark bearing registration no.129552
and/or the Plaintiff No.1's RIN Marks bearing registration
numbers 214094, 1065244 either by visual representation,
depiction or by spoken words or in any other manner
whatsoever or by usage of marks similar thereto and/or
depictions of shapes and/or contours identical or similar to
those of the Plaintiff's products being subject matter of the
aforementioned registrations and from depicting or
reproducing or substantially reproducing the same in the
Impugned Campaign including without limitation the
Impugned TVCs, Impugned Banners, Impugned Warnings,
Impugned Hoardings of the newspaper ads or any material
comprising all or any part of the above or any other
IAL-808-2021 (COMIPL-805-2021).doc
content."
IA(L) No.1091 of 2021 in Commercial IP Suit (L) No.1087 of 2021
(i) Pending the hearing and disposal of the suit, defendants
and their servants and agents are restrained from
publishing broadcasting, telecasting the impugned
advertisement in relation to the plaintiffs' products "Santoor"
in a platform including via TVCs, websites, electric media,
newsprint and howsoever described.
(ii) IA is allowed in terms of prayer clause A-1, which reads thus;
"Pending disposal of the suit, pass an order of temporary
injunction restraining the defendants, their directors,
proprietors, partners, subsidiaries, affiliates, franchisees,
officers, employees, agents and all others in capacity of
principal or agent acting for and on their behalf, or anyone
claiming through, by or under them, from in any manner
using directly or indirectly the trademark Santoor or any
other mark deceptively similar to the plaintiffs' trademark,
Santoor, amounting to the infringement of the plaintiffs'
trademark."
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At this stage, Mr. Rajashekhar for the defendant seeks stay of the
operation of this order. Accordingly, operation of the orders in both
the above IAs shall remain stayed for four weeks.
(A. K. MENON, J.)
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