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Pepsi Co., Inc. And Ors. Versus Hindustan Coca Cola Ltd. And Anr.

2003 (9) TMI 705 - DELHI HIGH COURT

FAO (OS) No. 432/2001 - Dated:- 1-9-2003 - U. Mehra And O. Dwivedi,JJ. JUDGMENT Usha Mehra, J. 1. "Frivolity has become a serious business these days. Television commercials which are meant to portray a stylization of the good life are crafted with great care, using all the skills that the arts and psychology have produced." 2. The vast majority of the viewer of the commercial advertisement on electronic media are influenced by the visual advertisements as these have a far reaching inf .....

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he Member States concerning misleading advertising 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 permi .....

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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 circumstances of a competitor; (f) for products with designation of origin, it relates in each case to products with the same designation; (g) it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor of the designation of .....

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ondents have disparaged the product of the appellants' namely "PEPSI COLA". 4. Pepsi Company Incorporation Along with Pepsico (India) Holdings Limited and Pepsi Foods Limited, the appellants (plaintiff's before the trial court) filed suit against Hindustan Coca Cola and others. Along with that suit appellants also filed an application for grant of ad interim injunction seeking order restraining the respondents from in any manner infringing upon the registered trade mark of the .....

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telecasting the impugned commercials or any other form of advertisements through print advertising or electronic media as according to the appellants, the impugned commercials infringed the trade mark and copyright of the appellants and disparaged the appellants' product resulting in dilution of appellants' goodwill and reputation. 5. Hindustan Coca Cola Limited and Coca Cola India Pvt. Ltd., the respondents (defendants in the suit) contested the said application. By the impugned order .....

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age 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 o .....

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s that it popularized its products by means of publicity in the print media, electronic media, hoardings, banners etc. Various advertisement themes are introduced by the appellants. It is the appellant who coined the phrase "Yen Dil Maange More" for advertising "PEPSI" and this phrase has now caught up and is associated with "PEPSI COLA". It is the case of the appellant that with a view to promote their products that is "Thums Up" and "Sprite", t .....

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t was contested by the respondents, inter alia, on the ground that the Cola War is a matter of trade rivalry and a market place matter. It ought not to spill over to the court of Law. The appropriate forum for settling the commercial dispute is a market place. Moreover, respondents have neither infringed the trade mark nor copy right of the appellant nor in any way disparaged the products/goods of the appellants. The respondents were puffing to promote their goods which is a healthy competition. .....

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t; does not amount to disparaging. Further held that the phrase "Yeh Dil Maange More" is not copy rightable nor respondent infringed the "Global Device" of the appellant. There is no infringement of the appellant's roller coaster commercial. 10. In this background we have to determine (i) whether prima facie the 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 .....

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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 t .....

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ictionary defines disparage/disparagement to mean, "to speak of slightingly, undervalue, to bring discredit or dishonor upon, the act of depreciating, derogation, a condition of low estimation or valuation, a reproach, disgrace, an unjust classing or comparison with that which is of less worth, and degradation." The Concise Oxford Dictionary defines disparage as under, to bring dis-credit on, slightingly of and depreciate." 13. In the electronic media the disparaging message is co .....

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ortant. If the manner is ridiculing or the condemning product of the competitor then it amounts to disparaging but if the manner is only to show one's product better or best without derogating other's product then that is not actionable. Take for example the commercial which is at page 30 (Annexure A) filed with the plaint which describes "PEPSI" as a "Bachhon Wali Drink" and the same is mocked at in the commercial and the message is "that the kids who want to gr .....

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ent 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 .....

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cts 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 drink pasand aayegi?" As in the first commercial, in this commercial also the drinks are covered and one described as a sweet drink called "Bacchonwala" and the bottle comparing the Globe Device and the mark "PAPPI". Like in th .....

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mockingly says, "Wrong Choice Baby". In these commercials the bottle which resembles "PEPSI" and is referred to as "PAPPI" is termed as "Bacchon Wali". "Thums Up" is referred to as "Bado Ke Liye and Damdar Hai". Pepsi is projected to be a drink for kids, as it is "Sweet". These commercial through the electronic media, Mr. Kapil Sibal, Sr. Advocate contended disparage the goods of the appellant because by comparison, the respo .....

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SI was said to be wrong amounts to disparagement. These advertisements by the respondents are not only made in mocking manner but in fact denigrate the goods of the appellant when the lead actor said "Wrong choice baby", and that the "Thums Up" is a right choice. The saying of the lead actor "Kyo Dil Maange No More" in fact depict the product of the appellant in poor and inferior form. 15. Countering these arguments, Mr. Iqbal Chhagla, Senior Advocate contended that .....

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ed 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 appe .....

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ering the grant of temporary injunction the Court should beside other consideration, must also look to the conduct of the party invoking the jurisdiction. That the conduct of the party seeking the relief should be free from blame which in this case is not. Dr. A.M. Singhvi, Sr. Advocate contended that calling a drink as "Bachhonwali" i.e. meant for children cannot amount to denigrating the product of the appellant. Calling it children's drink does not mean it is bad, harmful or inf .....

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parison the tradesman cannot slander nor defame the goods of the competitor nor can call it bad or inferior. It has been so held in the following cases : (i) Hindustan Lever v. Colgate Palmolive (I) Ltd., (ii) Reckitt & Colman of India Ltd. v. M.P. Ramchandran and Anr., 1999 PTC (19) 741. (iii) Reckitt & Colman of India v. Kiwi TTK Ltd., 1996 PTC (16) 393. 17. By calling the Cola drink of the appellants "Yen Bacchon Wali Hai. Bacchon Ko Yeh Pasand Aayegi", "Wrong Choice Ba .....

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p". The manner in which this message is conveyed does show disparagement of the appellant's product. 18. In one of the commercial the lead actor appears on the screen and asks two boys to come on the stage and point out their favorite drink. One of the boy indicated his preference by mouthing of the word "PEPSI". He was asked by the lead actor to taste the drink from both the bottles which were covered by the glasses. After taking a sip from each of the bottle, that boy gave p .....

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I". 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 i .....

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UP" which is owned by the respondents, who are also the manufacturer of "COCA COLA". Therefore, it cannot be said that the insinuation was against any other Cola other than "PEPSI COLA". The description of the bottle though with the name of "PAPPI" fits to be that of "PEPSI COLA". It cannot be said that the respondents were not comparing their product "THUMS UP" with "PEPSI COLA". As said by Justice Barin Ghosh in the case of Recki .....

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far more superior to the known technology, but he cannot say that the known technology is bad and harmful or that the product made with the known technology is inferior. In the present case while comparing "THUMS UP" with PAPPI i.e. PEPSI, the respondents have tried to project to the customers that the appellants' product is not meant for adults or for grown-up children. "Young and growing children would not like PEPSI as it is sweet meant for children. Hence, of inferior qual .....

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he appellant in low estimation and of less worth. It is nothing but denigrating the product of the appellants. The expression on the face of the boy indicates that being grown up he must not have given preference 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 prefere .....

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nigrate 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 disparagement, laid down the principles which the court should look into while g .....

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of the counsel for the respondents that merely calling PEPSI COLA a sweet drink or "bacchon wala hein" by itself does not in any way indicate that respondent hinted appellant's product as inferior. The products which are liked by children do not become inferior or harmful nor by saying so respondents denigrated or disparaged the product of the appellant. 21. There is no doubt that comparison is permissible so long it does not undervalue the product of the rival. In the commercials .....

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sophisticated way that the product of the appellant is rubbish. 22. The court in the case of Reckitt & Colman of India v. Kiwi TTK LTD., 1996 PTC (16) 393 while applying the principles laid down in the earlier case of Reckitt & Colman of India v. M.P. Ramachandran and Anr. (Supra) held that the comparative advertising is permissible, however, a promoter of product is not entitled to defame the goods of its competitor. It is opined that "the Courts will injunct the defendant from pub .....

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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 .....

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nd literary work of the appellant namely the phrase "Yen Dil Maange More". According to appellants the ownership and copyright of the slogan "Yeh Dil Maange More" vest with them. Appellants got the copyright of this slogan registered in July, 1999. It attained distinctive character. This work has been exclusively associated with the appellant and has a connection with the product of the appellant. It is fully evocative of appellant's work and business. To support his cont .....

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is a part of the copyright work is also protected as a literary work. Relying on Nimmer on Copyright Vol-1 1996 para 2.05p. Mr. Kapil Sibal contended that the slogan "Yeh Dil Maange More" is a literary work hence copy right able. The finding of the learned Single Judge that there is no copyright in "Yeh Dil Maange More" would mean that no company can exercise its rights on tests advertising theme. Hence, finding of the learned Single Judge are not only contrary to the statut .....

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namely Sinanida v. La Maison Kosmeo, 139 The Law Times 365; and Kirk v. J & R Fleming Limited, 1929 Ch. D. 44 are distinguishable on facts. In the case of Sinanida (Supra) plaintiff had copied already existing slogan, hence it was held that it was not original literary work of the plaintiff. Court further held that when "slogan" consists of an original composition in four lines of verse, in which there may be copyright, and the same may be said of an original composition in prose. .....

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EVICE 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 .....

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and nothing more. Copyright can be rebutted and challenged. To support this contention he placed reliance on the following decisions (i) Satsang and Anr. v. Kiron Chandra, ; (ii) Manojab Cine Productions v. A. Sundaresan, AIR 1976 Madras 22; (iii) Nav Sahitya Prakash and Ors. v. Anand Kumar and Ors., ; (iv) Camlin (P) Ltd. v. National Pencil Industries, 2nd 1985 (II) Delhi 813 : 1986 (6) PTC 1 (Del). Moreover, stringing together of various common place words cannot be the subject matter of copy .....

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of the 1938 Act. The 1938 Act changed the law in England to constitute the use of a trade mark of a rival trader for the purpose of comparison as infringement as held in Bismag Ltd. v. Amblins (Chemists) Ltd., [1940] 2 ALL E.R. 608. The law recognised in India under the Act of 1958 is as laid down in Irving's Yeast Vite Ltd. v. FA Horse-nail, (1934) 51 RPC 110 and not as laid down in bids mag's case (Supra). Section 29 of the Act of 1958 has omitted the provision of Clause (b) Section 2 .....

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mark had been used in the course of trade. Section 29(1) of the Act which is reproduced as under requires the usage in the 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 simil .....

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he 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 connection of appellants trade mark with respondent's goods. Moreover comparative advertising is permissible as held by this Court in Reckitt & Coleman v. Kiwi TTK Ltd. (Supra .....

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. Cadila Pharmaceuticals Ltd.,decided on 8th November, 2000. If a trader compares his goods with the goods of a rival without in any way advertising that the trade mark is used in relation to his goods, there is prima facie no infringement. Even otherwise this is only a prima facie view and if ultimately after trial court comes to any other view then the appellants can be compensated as rightly observed by the learned Single Judge. Similarly use of the phrase in the commercial advertisement &quo .....

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reciate the same, we may have a glance to the provision of Section 14 of the Copyright Act, which is reproduced as under :- "14. Meaning of the copyright For the purpose of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:- (a)... (b)... (c) ... (d) In case of a cinematograph film,- (i) to make a copy of the film including a p .....

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l 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 .....

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the original, the charge of palagiarism must stand proved..." 32. Mr. Kapil Sibal contended that the respondents are misconstruing the provisions of Section 14 of the Copyright Act to justify their conduct. They cannot be allowed to take shelter to justify their unjustifiable conduct. To support his contentions he placed reliance on the decision in the case of AGL Sydney v. Shortline Country Council, 17 IPR 199, which according to him is on all fours applicable to the facts of this case. S .....

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nded that use of the appellant's commercial cannot constitute "fair use" nor can it be called parody on appellant's commercial. For this purpose he placed reliance on the following cases; (i) C. Cunniah & Co. v. Balraj & Co., AIR 1961 Madras 111, (ii) AGL Sydney v. Shortline Country Council, 17 IPR 199, (iii) R & C Products PTY Ltd. v. S.C. Johnson & Sons, 26 IPR 98. In all these cases it was observed that if the advertisement or get-up has acquired a special si .....

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every person seeing it. Therefore, Mr. Kapil Sibal contended that in campaigning the commercial of roller coaster the appellants spent lot of money and it has acquired a special significance and has been associated with the product of the appellant. That life of a campaign or commercial is shell life. It lasts 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 whic .....

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