TMI Blog2003 (9) TMI 705X X X X Extracts X X X X X X X X Extracts X X X X ..... dvertising where the Council of the European Communities having regard to the Treaty establishing the European Economic Community, and in particular Article 100 thereof while taking into consideration the effect of misleading advertisement which reaches beyond the frontiers of individual Member States, adopted the directives in the form of Articles. Article 3(a) deals with Comparative advertising which shall, as far as the comparison is concerned, be permitted if the following conditions are met: (a) it is not misleading according to Articles 2(2), 3 and 7(1). (b) it compares goods or services meeting the same needs or intended for the same purpose; (c) it objectively compares one or more material, relevant, verifiable and representative features of those goods and services, which may include price; (d) it does not create confusion in the market place between the advertiser and a competitor or between the advertiser's trade marks, trade names, other distinguishing marks, goods or services and those of a competitor; (e) it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services, activities, or circumstanc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nor the balance of convenience lies in favor of the appellants for the grant of interlocutory injunction. The learned Judge further observed that the issues which have been raised in the suit can be decided only after the evidence is led by the parties. That in order to protect the right of the appellants, in the meantime it has been ordered that if at the final stage and after detailed arguments, the appellant succeeds in the suit, the respondent would pay damages and therefore, directed the respondents to furnish an undertaking to pay damages to the appellants within four weeks from the decision of the suit in favor of the appellants and against the respondents. It is this order of the learned Single Judge which is under challenge. 6. We shall now state the facts and the conclusion arrived at by the learned single Judge as are material for the purpose of deciding this appeal. 7. The appellant is a registered owner of the mark PEPSI , PEPSI COLA and GLOBAL DEVICE . It also claims to be the owner of the copy right in the words Yen Dil Maange More , which is a trade mark of the appellants under the Trade and Merchandise Marks Act, 1958, Appellants claim exclusive ri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... respondents have disparaged the products of the appellants; (ii) whether the globe devise and the phrase Yeh Dil Maange More is copy rightable and if so whether this copy right has been infringed by the respondent; (iii) whether the essence of the roller coaster has been copied by the respondents and if so the affect of the same. 11. Firstly, we have to appreciate the commercial in which on the bottle the word PAPPI is written, whether it meant and stood for PEPSI . From the visual it is clear that bottle is PEPSI though the word written is PAPPI . For arriving at this conclusion we are supported by three factors namely the actor i.e. the boy who is called from the audience is asked to give his preference of Cola drink. He mutters PEPSI in mutted manner but from movements of his lips, it can be seen he says PEPSI . Secondly, there are only three cola drinks i.e. PEPSI, THUMS UP and COCA COLA . The latter two belong to respondents, hence the bottle of Cola colour on which word Pappi is written has to be PEPSI . Thirdly, the GLOBAL DEVICE and the colour scheme on that with the word PAPPI is that of the appellant. Hence, it can safely be concluded tha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt bottles covered with lid and the question asked by the lead actor is that Bacchon Ko Konsi pasand aayegi .? After taste the boy points out to one drink and says that that drink would be liked by the children because it is sweet. In his words he says. Who meethi hain, Bacchon ko meethi cheese pasand hai . He discredited the drink one which according to him has a sweet taste. He preferred the other drink which according to him tastes strong and that grown up people would prefer the same. At that point, the lead actor lifts the lid from both the bottles and the one which is said to be strong taste reveals to be Thums Up , and one which is sweet, word PAPPI is written on the bottle with a globe device and the colour that of the PEPSI . Realizing that he had at the initial stage given his preference for PEPSI and subsequently finding it to be a drink for kids, the boy felt embarrassed. This embarrassment gesture he depicts by putting his hands on his head. 14. Second advertisement which appears at pages 35-45 (Annexure B) filed with the plaint is another commercial advertisement in which the star actor asks the audience. Ek Sawaal do glass. Bacchoako konsi dri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Mr. Chhagla relied on the observation made by Lord Diplock in Erven Warnink B.V. and Anr. v. J. Townend Sons (Hull) Limited and Anr., 1980 RPC 31 where it is opined that the economic battles should be confined to the market place. By granting the injunction, Mr. Iqbal Chhagla, Sr. Advocate contended this Court would be hampering healthy competition in the market. Rival claim of better product in comparison to rival product can only be displayed in the market place. This is nothing but puffing one's products which can give no cause of action to a competitor. Moreover, courts are not the appropriate forum to resolve the differences of opinion regarding quality of products of the parties. The appellant has not come to the court with clean hands. Appellant in fact has been indulging in the same advertisement war, therefore, is not entitled to any equitable relief. The appellant has in fact been protected by the learned Single Judge vide the impugned order thereby asking the respondent to furnish undertaking that in case appellants succeed it can recover damages from the respondents. Supreme Court in the case of Gujarat Bottling Co. Ltd. v. The Coca Cola Co ., has observed that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... asses. After taking a sip from each of the bottle, that boy gave preference of one over the other. When the reason for the preference was asked, the boy tells that one of them is a sweet drink meant for children and uses the word Yen Meethi hein. Bachhon Ko Meethi Pasand Ahi Yen Bachhon wall hei (it is sweet, children like sweets. It is meant for children). The moment it is said, the lid is lifted up by lead Actor from the bottles. The drink which the boy says Bachhon wali meant for children, on that it is written PAPPI . The other bottle is of Thums Up. The comparison is in fact between Pepsi and Thums Up . It can be seen from the fact that the bottle named as PAPPI is shown to certain Cola of Cola colour. The logo used in the commercial on that bottle consists of circular device and red blue colour Along with the word PAPPI written underneath. That the respondent depicted the bottle with the mark PAPPI and the global device on it is a clear insinuation that the respondent is showing the product of the appellant i.e. PEPSI meant for children only. Though the actor mouthed the word PEPSI in a mute form yet from lip movement one can say he was uttering the word PE ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for PEPSI. The manner in which the commercial is shown and the way the actor puts his hands on his head feeling embarrassed is nothing but disparaging the products of the appellant. To say that a particular drink is Bachhon Wali Drink is one thing but to redicule the preference for Pepsi by action showing the boy feeling embarrassed after knowing his preference conveys a very serious message particularly when the lead actor says wrong choice baby . This is a clear indication that the product of the appellants is inferior. The observation of the learned Single Judge that this comparison whereby Thums Up has been stated to be a drink for grown up is poking fun, to our mind, is not a proper appreciation of the commercial. Puffing does not mean one should denigrate the product of the competitor. 19. Admittedly puffing one's product by comparing others' goods and saying his goods are better is not an actionable claim but when puffing or poking fun amount to denigrate the goods of the competitor, it is actionable. Calcutta High Court in the case of Reckitt Colman of India Ltd. v. M.P. Ramchandran and Anr. 1999 PTC (19) 741 while dealing with the question of disparag ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the children, it amounts to disparaging the PEPSI COLA . The way the lead actor after seeing the expression of the boy say wrong choice baby speaks slightingly of the product of the appellant. The strict liability status Mr. Kapil Sibal contended comes into play if there is infringement of appellant's right as in this case the appellants have been able to establish the legal right which has been infringed, therefore, there is no question of going to the market place for fighting the commercial war as suggested by respondents. Dr. AM. Singhvi's contention that the conduct of the appellant is such which would dis-entitle it to any discretionary relief or that the appellant has not come to the court with clean hands. The war of advertisement against each other's products is going on but that does not entitle the respondents to contend nor can be permitted to plead the past conduct as a good defense to denigrate the product of the appellant nor the market place is a suitable substitute for injunction. 23. The next question for consideration is about infringement of copy right and literary work of the appellant namely the phrase Yen Dil Maange More . According to appe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... anida's case Court observed that when a sentence is proved to have been in common use then it is not copyrightable nor can be protected. These cases are distinguishable because the slogan of the appellant is not a common place phrase. It is original combination of words from two different languages thereby conveying the theme of the advertising. It has acquired distinctiveness and association with the product of the appellant. 25. Similarly the GLOBE DEVICE is a registered trade mark of the appellant. By showing GLOBE DEVICE of the colour scheme on the bottle on which word PAPPI is written and then saying Yeh Dil Maange No More . Mr. Kapil Sibal said such use of a registered trade mark in comparative advertising constitutes infringement of registered trade mark in terms of Section 29(1) of the Trade and Merchandise Marks Act, 1958. The effect of permitting the use of the Globe Device which is a registered trade mark of PEPSI to any other manufacturer for its product or for comparison would take away the statutory rights of the appellants. Non protection against such infringement would lead to drastic consequences and would be contrary to the basic tenets of Copyright La ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he course of trade of a mark which is identical with or deceptively similar to the trade mark of the appellant. 29. Infringement of registered trade marks - (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. 29. Usage should be in relation to the goods of the appellant and in such a manner rendering the use of mark likely to be taken as being used as a trade mark by the respondent. That is not even the case of the appellant. It is nowhere alleged by the appellant that respondents have used the globe device of the appellants for its products nor passed on its products under the Trade Mark or globe device of the appellant. We find force in the submission of Mr. Iqbal Chhagla that the impugned advertisement neither uses the trade mark of the appellants in the course of trade nor in any manner suggest the c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... re on earlier occasions; (iii) to communicate the film to the public.... 31. Mr. Kapil Sibal basing his submission on Section 14 contended that the copy can either be of the whole work or of substantial part of the work. In this commercial i.e. of roller coaster, the respondents have completely copied essential elements of the appellant's advertisement. The entire theme of the advertisement is identical and even the sequence of events are identical. The copying of the elements of the appellant's cinematographic film by the respondent in their commercial constitutes infringement. To support his contention he placed reliance on the decision of Supreme Court in the case of R.G. Anand v. Deluxe Film, wherein the Apex Court observed that; Thus, the fundamental fact which has to be determined where a charge of violation of the copyright is made by the plaintiff against the defendant is to determine whether or not the defendant not only adopted the idea of the copyrighted work but has also adopted the manner, arrangement, situation to situation, scene to scene with minor changes or super-additions or embellishment here and there. Indeed, if on a perusal of the copyr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sts hardly for an year or so. Hence if the interim injunction is not granted against the use of the commercial by the respondents, it will have far reaching consequences. The purpose for which the campaign was launched by the appellant will get defeated and lost. Copying of the entire theme of the advertisement cannot be called competitive advertisement. The loss which appellant will suffer cannot be adequately compensated by money. 34. Countering these arguments Mr. Iqbal Chhagla contended that Section 14 of the Act envisages that copying of the cinematographic film must be identical in all respects and since the roller coaster commercial of the respondents is not a copy of the advertisement of the appellant, therefore, the provisions of Section 14 of the Act are not applicable to the facts of this case. 35. We were shown the commercial of roller coaster during the proceedings by both parties. By seeing the same an impression which one gathers is that roller coaster of the respondent is a copy of the theme of the roller coaster of the appellant. The roller coaster commercial of the appellant is an original work of the appellant, therefore, covered under Section 14 of the Act ..... X X X X Extracts X X X X X X X X Extracts X X X X
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