Marico Limited vs Dabur India Limited
2022 Latest Caselaw 1982 Cal/2

                         IN THE HIGH COURT AT CALCUTTA
                     ORDINARY ORIGINAL CIVIL JURISDICTION
                                ORIGINAL SIDE
                            (COMMERCIAL DIVISION)

BEFORE:
The Hon'ble Mr. Justice Ravi Krishan Kapur

                                 GA No.1 of 2021
                                        &
                                 GA No.2 of 2022
                                       In
                                CS No. 264 of 2021

                                MARICO LIMITED
                                           Vs.
                               DABUR INDIA LIMITED

For the Petitioner            : Mr. S.N. Mookherjee, Sr. Advocate
                                Mr. Ranjan Bachawat, Sr. Advocate
                                Mr. Ratnanko Banerjee, Sr. Advocate
                                Mr. Arunnabha Deb, Advocate
                                Ms. Ashika Daga, Advocate
                                Ms. Arti Bhattacharya, Advocate
                                Ms. Deepti Priya, Advocate
                                Mr. Yash Singhi, Advocate

For the Respondent            : Mr.   Anindya Kumar Mitra, Sr. Advocate

Mr. Tilak Kumar Bose, Sr. Advocate Mr. JwaharLal, Advocate Mr. Debnath Ghosh, Advocate Mr. AnujGarg, Advocate Mr. Sudhakar Prasad, Advocate

Reserved on : 26.04.2022

Judgment on : 19.07.2022

Ravi Krishan Kapur, J.:

1. This is an action for disparagement and infringement.

2. The petitioner is a reputed manufacturer and distributor of Fast Moving

Consumer Goods (FMCG). The suit pertains to a hair product

manufactured by the petitioner namely Nihar Naturals Shanti Badam

Amla Hair Oil. The respondent is also a well known manufacturer of

FMCG products. The respondent also manufactures hair oil under the

mark of Dabur. The respondent manufactures two variants of AMLA HAIR

OIL namely Dabur Amla Hair Oil and New Dabur Amla Hair Oil. Both

parties are competitors and trade rivals in the FMCG market.

3. The grievance of the petitioner pertains to the advertisements published

in several newspapers having wide circulation all over India by the

respondents both in print and in electronic form which are "Annexure H"

and "Annexure I" respectively to this application. The impugned

advertisements, inter alia, contain the following caption "DABUR AMLA

DE SHANTI KE MUKABLE (up to) 50% ZYADA MAZBOOT BAAL" (in Hindi

Language). There is also disclaimer to the advertisement to the effect that

"UTPAD NIHAR SHANTI AMLA KE SHABD, DEVICE/LABEL MEIN

TRADEMARK KE ADHIKAR 'MARICO LIMITED' KE PASS HAIN. PACK

SHOTS UDAHARAN KE LIYE DIKHAYE GAYE HAIN. VASTVIK PACK KA

AKAR ALAG HO SAKTA HAIN" (in Hindi Language). From the disclaimer it

is evident that the respondent is fully aware that the petitioner is the

owner of registered trademark and the lable mark "Nihar".

4. It is alleged on behalf of the petitioner that the pictorial impact of the

impugned advertisements demeans and disparages the petitioner's

product and conveys a clear message to the customers that the

petitioner's product are ineffective and useless. In addition, to the false

claim of having 50% of more efficacy, the petitioner's product is also

depicted as an unattractive purchase for consumers and does not serve

the intended purpose. It is also alleged that the respondent has falsely

claimed that their product i.e. Dabur Amla hair oil when compared to the

petitioner's product i.e. Nihar Natural Shanti Amla hair oil gives up to

50% stronger hair thereby conveying that, the petitioner's hair oil is

ineffective. Thus, it is contended on behalf of the petitioner that, the

respondent has ex facie rubbished the petitioner's product by causing the

impugned advertisements to be published.

5. On behalf of the respondent it is contended that, the respondent is

entitled to by means of comparative advertising show a competitor's

product by naming the competitor as long as use of the competitor's mark

is honest. It is further contended that the impugned advertisements

constitutes commercial speech and is protected under Article 19 (1) (a) of

the Constitution. Moreover, even under the Advertising Standard Council

of India Guidelines, the respondent is permitted to publish the impugned

advertisements. The impugned advertisements are legitimate, honest,

truthful, well substantiated and statistically proven. Hence, the impugned

advertisements are permissible in law and do not constitute any

disparagement nor infringe the petitioner's trademark. The respondent

also relies on separate Study Reports which are referred to in the

impugned advertisements to contend justification as a defence to this

action.

6. Upon this suit being filed, a Co-ordinate Bench at the ad interim stage

had, by an order dated 27 December, 2021 inter alia held as follows :

"In view of the aforesaid, as the publication of the advertisement was done on 24th December, 2021, the petitioner

has approached immediately before this Court to consider the urgency.

The defendant/respondent is restrained from publishing the advertisement in pages 67 to 74 of the petitioner without the leave of this Court in any manner whatsoever from printing or disseminating or telecasting or broadcasting or publishing or otherwise communicating to the public or from making available the impugned advertisement or any part thereof or any other advertisement of a similar nature in any language till further orders of the Court.

The defendant/respondent will be at liberty to apply for vacating and/or modifying the order."

7. The matter was taken up for hearing after filing of affidavits.

8. The principles of law of disparagement have been well settled in Reckitt

& Colman of India Ltd. Vs. M.P. Ramchandran reported in (1999) 19 PTC

741, wherein a Learned Judge of this Court had held as follows:

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 defermation 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.

The aforesaid principles have been approved of, reiterated and

consistently followed by different Courts and have stood the test of time

[see Heinz India Private Limited Vs. Glaxo Smithkline Consumer Healthcare

Limited & Ors. reported in 2009(2) CHN 479, Dabur India Ltd. Vs. Wipro

Limited Bangalore (2006) 32 PTC 677 (Del) at Para 22, Pepsi co. Inc. Vs.

Hindustan Coca-cola Ltd. 2003 (27) PTC 305 (Del) at Paras 17 & 18 and

Reckitt & Colman of India Ltd. v. Kiwi T.T.K. 1996 PTC (16) 393 at Para

11].

9. In this background, this Court has to consider whether the

impugned advertisements disparage the product of the petitioner.

A balance has to be struck by an advertiser merely trying to

promote its product but not being permitted to brand a

competitor's product as bad. In other words an advertiser 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. Hence, the question is whether the

Laxmanrekha or Rubicon has been crossed or not?

10. Normally, advertisements by their very nature are taken to be

exaggeration by reasonable people. An amount of hyperbole is to

be expected in the description of goods, property and services in

advertisements. Thus, such advertisements ought to be taken with

a pinch of salt.

11. Comparative advertising is a modern day reality. It has become a

strategy now commonly deployed in the advertising and marketing

world. Such advertisements constitute commercial speech and are

protected under Article 19(1)(a) of the Constitution of India

[Horlicks Vs. Heinz 2019(77) PTC 45 at Paras 28-31]. Chapter IV of

the Advertising Standards Council of India Code also permits

comparative advertisements which includes naming competitors in

advertisements. Such advertisements are recognized to be in the

interests of competition and public enlightenment. Generally, a

certain amount of disparagement is implicit in such

advertisements as long as the advertisement is only limited to

puffing. However, comparative advertising cannot be permitted to

be a means to name and shame a rival's products. In the decision

of Reckitt Benckiser India Private Limited Vs. Hindustan Unilever

Limited (2021) 88 PTC 584 it has been held that: "In comparative

advertising, the comparing of one's goods with that of the other and

establishing the superiority of one's goods over the other is

permissible. However one cannot make a statement that a good is

bad, inferior or undesirable as that would lead to denigrating or

defaming the goods of the other." Similar views have also been

expressed in the following decisions Glaxosmithkline Consumer

Healthcare Ltd. v. Heinz India (P) Ltd., 2010 SCC OnLine Del 3932

at Para 25 and Colgate Palmolive Company v. Hindustan Unilever

Ltd., 2014 (57) PTC 47 [Del] at Para 27.

12. In my view, the impugned advertisements are more than

puffery. There is a clear reference to the product of the petitioner

in each of the advertisements. The impugned advertisements give

an impression that the petitioner's product is inferior and bad in

comparison to the respondent's product. The overall message

which the respondent has tried to convey through the impugned

advertisements is that the petitioner's product does not serve the

purpose which it is intended to serve. The pictorial representation

in the impugned advertisements suggests that the petitioner's

product Nihar Naturals Shanti Amla Hair Oil is ineffective, unattractive

and useless. Accordingly, I find that the impugned advertisements

disparage and rubbish the product of the petitioner.

13. Insofar as the plea of justification is concerned, prima facie at

the interlocutory stage, to permit a party to rely on such self-

serving reports would cause irreparable injury and detriment to

the party against whom such advertising is resorted to. The Court

cannot at this stage of the proceedings be reduced to a machinery

for determination of rival advertisements of which of the two

products are better. The defence of justification can only be

established at the time of trial. The proof of falsity cannot be

decided at the interlocutory stage. In Armstrong vs. Armit (1886) 2

T.L.R at page-890 it was held that "It would be exceedingly difficult

upon affidavits to try whether the privilege has been exceeded. That

is a matter which must depend upon the character and demeanour

of the witnesses, the way in which they stand cross-examination,

and a variety of other circumstances, and which it is obvious that

judges with only affidavits before them are wholly inadequate to

determine with any certainty or advantage." Accordingly, there is

no question of giving any weightage to any of the Reports relied on

by any of the parties or to enter into the merits of the defence of

justification at this stage of the proceeding [See Reckitt Benckiser

India Private Limited Vs. Hindustan Unilever Limited (2021) 88 PTC

584 at Para 26 and Reckitt Benckiser India Private Limited Vs.

Hindustan Unilever Limited, Unreported decision of the High Court

at Delhi dated 25 November, 2021 in FAO(OS)(COMM) 149/2021 at

Para 34].

14. The respondent had during the course of the hearing offered to

modify the impugned advertisements in the manner morefully

depicted in Annexures 'A' and 'B' of the supplementary affidavit

filed on behalf of the respondent affirmed on 1 March, 2022. This

suggestion was not accepted by the petitioner. The parties did

attempt to justify their respective stands. However, in view of the

fact that the modified advertisement was unacceptable to the

petitioner and beyond the scope of the suit, I choose not to enter

into the merits or demerits of the modified advertisement.

15. In view of the aforesaid, I am satisfied that the petitioner has a

strong prima facie case on merits. The balance of convenience and

irreparable injury is also in favour of orders being passed as

prayed for herein. Hence, there shall be an order in terms of

prayer (a) of the Notice of Motion. It is however made clear that

the order of restraint is only limited to the impugned

advertisements. It is also clarified that the order of restraint is not

restricted to any particular portion of the impugned

advertisements but to the impugned advertisements as a whole.

Accordingly, GA 1 of 2021 stands disposed of. GA 2 of 2021 is an

application for vacating the ex parte order dated 27 December,

2021. Since the interlocutory application is being finally disposed

of, GA 2 of 2021 stands disposed as infructuous.

(Ravi Krishan Kapur, J.)