TMI Blog2008 (7) TMI 1045X X X X Extracts X X X X X X X X Extracts X X X X ..... ements and in all media whatsoever including the electronic media; (2) using the depiction of the plaintiff's soap or any other soap deceptively similar to that of the plaintiff's in its advertisement or in any other manner disparaging the goodwill and reputation of the plaintiff and its product sold under the trade mark DETTOL; (3) using any other indicia whatsoever to associate with/depict the plaintiff or its products in its advertisements issued in any and all media whatsoever including the electronic media. The plaintiff also seeks damages to the extent of ₹ 20,00,050/- for disparagement, denigration and tarnishment of its goodwill and reputation by the defendant by its impugned advertisement. Additionally, the plaintiff has also prayed for punitive and exemplary damages against the defendant as well as for costs of the suit. The Plaint: 3. It is stated in the plaint that the plaintiff has been involved in the manufacture of the famous antiseptic disinfectant under the trade mark DETTOL, for over 70 years and that the mark DETTOL has become synonymous with good hygiene and, today, it is a household name and is the most widely used antiseptic disinfectant in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Original bar of soap ,which has an orange colour, is the most popular. According to the plaint, the sale of DETTOL Original constitues 80% of the total DETTOL soap sales. 7. The plaintiff has further stated that the packaging of the soap has always been of the distinctive green and white colour combination and the packaging has become synonymous with the famous DETTOL brand of the plaintiff. It is alleged that the purchasing public perceives the orange coloured bar with its distinctive shape and the distinctive green and white packaging to be synonymous with the DETTOL Original soap. It is alleged that the plaintiff has been continuously and uninterruptedly marketing its DETTOL products with the distinctive packaging consisting of the green and white colour combination including sword device in India since the year 1933. 8. The plaintiff has further stated in the plaint that it had recently announced in a press release that it is contemplating to introduce new variants of its flagship brand DETTOL and it launched a new ad campaign -- Surakshit Parivar -- to create awareness of the practice of hygiene at the family level. The plaintiff has allocated a budged of about ₹ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tains to an established soap i.e., DETTOL Original soap presently being used by the family. (ii) The next frame shows the husband, a medical doctor, and the children telling the lady of the house not to use the soap and the vocals state: Oh God bachaa lena naadaan ko aql dena.... Hum sab ko bachaa lena. It is alleged that the use of a doctor protagonist is once again relevant as DETTOL is an established brand in the medical profession. (iii) The next frame shows the doctor husband explaining to the wife the reason as to why she should not use the offending soap and, instead, should use the Defendant's LIFEBUOY soap by stating that normal antiseptic soaps make the skin dry leading to cracks in the skin thereby permitting the germs to enter the cracks in the skin while the defendant's soap fights germs and keeps the skin protected. According to the plaintiff this scene is clearly intended to give out the message that the plaintiff's soap is not effective against fighting germs whereas the Defendant's soap is effective against fighting germs. The words used in the advertisement are: Dua ki zarurat padegi is dawa ke saath. Aam antiseptic sabun twacha ko r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sement of the defendant and that the cause of action is a continuing one. The said advertisement is being telecast on various television channels in Delhi and is being watched by thousands of people in Delhi. The present suit has been filed for the reliefs indicated above in these circumstances. The Written Statement: 13. The defendant in its written statement raised preliminary objections. The first objection was that the jurisdiction of this Court is specifically excluded under Section 9 of the Code of Civil Procedure, 1908 (hereinafter referred to as the 'CPC') in respect of the present suit, being a Suit for Permanent Injunction and Damages for Disparagement and Unfair Trade Practices, which is specifically covered under the provisions of the Monopolies and Restrictive Trade Practices Act, 1969 (hereinafter referred to as the 'MRTP Act') and the Consumer Protection Act, 1986. 14. It has also been alleged by the defendant that the plaintiff's suit is misconceived as no cause of action against the defendant has accrued in favor of the plaintiff and against the defendant inasmuch as the advertisement, in question, refers to ordinary antiseptic soaps an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ich have a moisturizing effect on the skin and give a long term benefit, on the one hand and ordinary antiseptic soaps in the market, on the other, which may not contain glycerine and do not give to the consumers the benefit of moisturizing the skin and removing the possibility of formation of cracks which is a breeding ground for germs. It is further stated that the defendant's claims about its soap being better than any other ordinary antiseptic soap is based on the laboratory test conducted by it. 17. The defendant submitted that the said TV advertisement has to be seen in its totality and cannot be seen in an isolated and unnatural manner frame by frame. It is further contended on behalf of the defendant that the intent, manner and story line and message of the defendant's advertisement is that its soap is better than ordinary antiseptic soaps because it is rich in glycerine and vitamin E. It is further stated that the plaintiff's soap, being a ₹ 200 crore brand, cannot be termed as an ordinary soap and in any event, the plaintiff's soap is not an antiseptic soap. In the entire advertisement, there is no reference whatsoever to the trademark DETTOL or t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... - (1) Mr Anuj Kumar Rustagi, Global Marketing Manager, Lifebuoy Soaps (DW1); (2) Dr Rajan Raghavachari, Regional Senior Product Development Manager of the defendant (DW2) and (3) Dr Hemangi Jerajani, Dermatologist (DW3). The evidence of these witnesses were in the form of affidavits in the first instance and they were subjected to cross-examination by the opposing counsel. The Issues: The following issues have been framed by virtue of the order dated 17.8.2007: 1. Whether the depiction in the advertisement of the defendant of soap refers to the Dettol soap of the plaintiff' (OPP) 2. Whether the advertisement of the defendant disparages or denigrates the soap of the plaintiff? (OPP) 3. Whether the impugned advertisement seeks only to promote the superiority of the defendant LIFEBUOY soap over an ordinary antiseptic soap (OPD) 4. Whether the plaintiff is guilty of suppression of material facts'If so, its effect (OPD) 5. Whether the impugned advertisement constitutes an attack on the goodwill and reputation of the Dettol brand of the plaintiff? (OPP) 6. Whether the present suit is barred on account of the provisions of the MRTP Act, 1969 and/or the Con ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in the cracks. At this juncture the male voice-over states: ..Jis se dararon me kitanu ghus jate hain (.. as a result of which, germs get into the cracks). Simultaneously, the following words appear on the bottom left of the screen:- Aam antiseptic sabun (ordinary antiseptic soap) 9 Then there is a cut to a water shot, where we see a bar of the red LIFEBUOY soap emerging out of the water. On the top left hand corner of the screen, the words Glycerine and vitamin E appear and the male voice-over states Isi liye naya Lifebuoy Skin Guard (that is why, new Lifebuoy Skin Guard) 10 Then there is a cut again showing a part of the arm under a magnifying glass and the green germs are seen getting washed away. The male voice-over states that : .. jo kare kitanuon pe waar (.. which attacks the germs). 11 The next frames show a layer of glycerine flowing from left to right under the magnifying glass and the voice-over states: .. aur banaye suraksha ki bhi deevar (.. and also builds a protective wall). 12 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lf, are virtually the same as that of the contours, curvature and overall shape of the plaintiff's DETTOL Original soap. Moreover, the clear impression given in the advertisement is that the said orange bar of soap has been taken out from a green wrapper/ packaging. It must also be noted that the design of the plaintiff's soap has been registered by the plaintiff as indicated by Ext. PW1/DX-1. While it is true that there may be other orange coloured soaps and other soaps sold in the pre-dominantly green packaging and other soaps which have an oval shape, it is also true that it is only the plaintiff's soap which has a combination of all the three elements, i.e., orange colour, curved oval shape and pre-dominantly green packaging. Apart from this, it is only the plaintiff's soap which has contours in the manner indicated in the bar of soap in the said advertisement. No evidence has been produced by the defendant to show that there is any ordinary antiseptic soap with the same combination of the aforesaid elements of colour, shape, design and packaging. I have absolutely no doubt that the orange bar of soap shown in the advertisement refers to the plaintiff's DETT ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ned Counsel for the plaintiff. For, ultimately, it is a question of perception and the perception has to be determined from the stand point of an average person man with imperfect recollection but, with a corollary, which shall stated be shortly. One could normally expect that there would be a difference in perception between two distinct classes of persons -- (1) Persons who are using DETTOL Original soap and (2) persons who do not use that soap. A person belonging to the latter category may not be aware of the orange coloured bar of soap of the plaintiff with its distinctive shape, curvature and contours. He may also not be aware of the packaging employed by the plaintiff. Therefore, such a person may not link the bar of soap shown in the advertisement with the plaintiff's product when he sees the advertisement or when he comes upon the plaintiff's product in a shop. Such a person, in all likelihood, would perceive the orange bar of soap shown in the advertisement as being some unbranded bar of soap. On the other hand, a person belonging to the former category, being a user of the plaintiff's DETTOL Original soap, would immediately recognise the bar of soap shown in t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s not seek to make his product similar to the disparaged product, but to distinguish it from the disparaged product. The object of disparagement is to make the disparaged product appear to be as near or similar to the competitor's product. The comparisons, Therefore, in cases of passing off and in cases of disparagement are different. Consequently, the comparison must be from the perspective of an average person with imperfect recollection but, that person must be picked from the category of users of the product allegedly sought to be disparaged or slandered. 27. Considered from the standpoint of an average man with imperfect recollection who is also a user of the DETTOL Original soap, the inescapable conclusion would be that the soap shown in the advertisement refers to the plaintiff's DETTOL Original soap. Consequently Issue No 1 is decided in favor of the plaintiff and against the defendant. Issue No. 2: Whether the advertisement of the defendant disparages or denigrates the soap of the plaintiff? (OPP) Issue No. 3: Whether the impugned advertisement seeks only to promote the superiority of the defendant LIFEBUOY soap over an ordinary antiseptic soap? (OPD) T ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... goods to institute proceedings as there is no disparagement or defamation to the goods of the manufacturer so doing. However, a manufacturer is not entitled to say that his competitor`s goods are bad so as to puff and promote his goods. It, Therefore, appears that if an action lies for defamation an injunction may be granted.... 30. In Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd and Anr. a Division Bench of this Court held that comparative advertising which discredits or denigrates the trade mark or trade name of the competitor cannot be permitted. While considering what is meant by disparagement, the Division Bench noted as under: What is disparagement. The New International Websters' Comprehensive Dictionary defines disparage/disparagement to mean, to speak of slightingly, undervalue, to bring discredit or dishonor upon, the act of deprecating, derogation, a condition of low estimation or valuation, a reproach, disgrace, an unjust classing or comparison with that which is of less worth, and degradiation. The Concise Oxford Dictionary defines disparage as under, to bring dis-credit on, slightingly of and depreciate. The Division Bench further observed: To d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... than the goods of another and if he does so, no action will lie against him, whatever damage may ensue from such statement. See White v. Mellin [1895] A.C.154. It is otherwise where a trader does not limit himself to a comparison of his goods with those manufactured by another trader and a mere statement that they are inferior in quality to his own, but goes further and makes an untrue statement of fact about his rival's goods, for example, where he states that they are rotten or unmerchantable. In a case like this, an action on the case will lie, provided it can be proved that such statement was published maliciously and that special damage has ensued: see Lyne v. Nicholls [1906] 23T.L.R 86. It is not malice if the object of the trader is to push his own business. To make the act malicious it must be done with the direct object of injuring the other person's business. Therefore, the mere fact that it would injure that other person's business is no evidence of malice: see Dunlop Pneumatic Tyre Co. v. Maison Talbot [1904] 20 T.L.R 579. 33. Two recent English decisions; one of 2000 and another of 2002 need to be noticed. In Jupiter Unit Trust Managers Trust Ltd v. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s, property or services, the courts will do what any ordinary reasonable man would do, namely, take it with a large pinch of salt. Where, however, the situation is not that the trader is puffing his own goods, but turns to denigrate those of his rival, then, in my opinion, the situation is not so clear cut. Obviously the statement: My goods are better than X's is only a more dramatic presentation of what is implicit in the statement: My goods are the best in the world . Accordingly, I do not think such a statement would be actionable. At the other end of the scale, if what is said is: My goods are better than X's , because X's are absolute rubbish , then it is established by dicta of Lord Shand in the House of Lords in White v. Mellin [1895] AC 154, which were accepted by Mr Walton as stating the law, this statement would be actionable. Between these two kinds of statements there is obviously still an extremely wide field; and it appears to me that, in order to draw the line, one must apply this test, namely, whether a reasonable man would take the claim being made as being a serious claim or not. 34. Finally, McCarthy on Trademarks and Unfair Competition: ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oceeds to show a person having a bath with the said ordinary antiseptic soap . The bare skin of the upper arm of the person is shown under a magnifying glass as having developed cracks in which green coloured germs are lodged. The voice-over also indicates the same. It is obvious that the advertisement displays the said so called ordinary antiseptic soap in bad light and as something harmful. A soap which only the na ve would use and for using which prayers would be needed to save the user. Thereafter, the advertisement proceeds with the introduction of the defendant's LIFEBUOY soap and the manner in which it spreads a protective wall of glycerine thereby removing the cracks in the skin and dissipating the germs. 36. The advertisement can be viewed in two parts. One part is where the orange coloured soap is shown as being harmful and used by people who are na ve and without any wisdom and who could be saved only through prayers. The other part is where the defendant's product is shown as having the qualities of providing a protective wall against dry cracked skin and as an eliminator of germs. There can be no grievance in respect of the second part of the advertisemen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Issue Nos 1, 2 and 3, this issue would also have to be decided in favor of the plaintiff. The advertisement does constitute an attack on the goodwill and reputation of the DETTOL brand of the plaintiff. Issue No. 4: Whether the plaintiff is guilty of suppression of material facts? If so, its effect? (OPD) 39. It has been contended on behalf of the defendant that the upon a reading of the plaint, it would be apparent that the object of the plaintiff is to give an impression that the DETTOL toilet soap is an antiseptic soap, which is false to the knowledge of the plaintiff. Apart from other paragraphs, paragraph 7 of the para-wise reply in the written statement was referred to in the course of arguments. In that paragraph, the defendant has submitted that the plaintiff is misleading the court into believing that its DETTOL toilet soap is an antiseptic soap. It was submitted that the emphasis is on the DETTOL brand, which incorporates a range of innovative products ranging from the antiseptic liquid to DETTOL Liquid Hand Wash and the famous DETTOL toilet soap, thereby giving an impression that the antiseptic properties are also present in DETTOL toilet soap. This, according to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , such as the Defendant, helps in correcting the error, it commits no illegality. The tortious injunction, which is the backbone of the present action, is predicated on falsehood, and in the present circumstances, the falsehood can be laid at the door of the plaintiff and not of the Defendant. Once this conclusion is arrived at, it is not possible to grant any injunctory relief. [paragraph 7, pg 493] 41. The defendant referred to the following documents filed on behalf of the plaintiff namely Ext.PW1/4 (Chartered Accountant's Certificate certifying the sales figures and the marketing expenses for the Dettol Antiseptic Liquid from the year 2005 to 2007); Ext. PW1/5 ( the 50 ml packaging of the DETTOL Antiseptic liquid); PW1/6 (the A.C. Nielsen report showing the 2006 market share of DETTOL Liquid); Ext. PW1/7 (the IMRB report dated 23.8.2007 concluding that 85% of the consumers of DETTOL Liquid believe that the said product is recommended by Medical Professionals). The learned Counsel for the defendant contended that these documents, which relate to the antiseptic liquid, were filed by the plaintiff to create an impression that the DETTOL toilet soap also had antiseptic qual ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , nowhere is the claim made that the Dettol toilet soap had any antiseptic qualities. 44. I am inclined to agree with the submissions made on behalf of the plaintiff. Nowhere in the plaint has a claim been made that the plaintiff's Dettol Original Soap, which is the toilet soap in question, is an antiseptic soap. As noted in Reckitt Benckiser (India) Ltd. (supra), there is a general public perception that DETTOL toilet soap shares the same medicinal and curative qualities as the DETTOL Liquid. But, for the purpose of the present suit, what is important is: whether the plaintiff has made any averments in the plaint indicating or suggesting that the DETTOL Original soap is an antiseptic soap? The plaintiff has made statements explaining the development of its brand name through time. Initially, the plaintiff's product was the DETTOL Liquid which was used and is used as an antiseptic. Under the mark/brand name DETTOL, the plaintiff diversified its product range to include liquid hand washes and toilet soaps, which were not antiseptic products. The plaintiff has, no doubt, highlighted the goodwill and extensive reach of its brand DETTOL created through its primary product De ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Practices, which is specifically covered by the provisions of the Monopolies and Restrictive Trade Practices Act 1969 (hereinafter referred to as the said MRTP Act ) and the Consumer Protection Act, 1986 (hereinafter referred to the Consumer Act ) and consequently, their cognizance is expressly barred. The same deserves to be returned to be presented in the proper forum. The learned Counsel referred to the provisions of Section 36A(1)(x) of the MRTP Act which defines Unfair Trade Practice to mean a trade practice which, for the purpose of promoting the sale, use or supply of any good or for the provision of any services, adopts any unfair method or unfair or deceptive practice, inter alia, including the practice of making any statement, whether orally or in writing or by visible representation, which gives false or misleading facts disparaging the goods, services or trade of another person. The learned Counsel then referred to the provisions of Section 36D of the MRTP Act, which describes the powers which may be exercised by the Commission inquiring into an unfair trade practice. The said Section 36D reads as under: 36D. Powers which may be exercised by the Commission inq ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er Section 36A(1)(x) of the MRTP Act. 48. The learned Counsel submitted that a distinction must be drawn between a common law right which may be prosecuted in a civil court and a statutory right that is to be enforced in a special forum. It was contended that a fair reading of the plaint, appears to suggest that in fact the ingredients of malicious falsehood/slander of goods have not been pleaded. On the contrary, it is contended, what has been pleaded are the ingredients of Section 36A(1)(x) of the MRTP Act (and, Section 2(r) of the Consumer Protection Act) and that the plaint itself has been titled as a suit for permanent injunction and damages for disparagement and unfair trade practice . 49. It was also contended on behalf of the defendant that injunction ought to be refused where an adequate alternate remedy is available in view of the provisions of Section 41(h) of the Specific Relief Act, 1963. The learned Counsel also placed reliance on Reckitt Benckiser (India) Limited (supra) and ITC v. Shri Krishna Moktan AIR 1992 Sik 1 and submitted that the present suit be dismissed granting the plaintiff liberty to approach the appropriate forum. 50. The learned Counsel for ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s no express or implied bar in the MRTP Act with regard to the institution of a suit such as the present one. The common law remedy of false advertising was available even prior to the enactment of the MRTP Act and the act does not take away such remedy. It was also contended that the MRTP Act does not determine all the rights and liabilities of the parties which are in issue in the present case. The common law remedies that are sought in the present suit are far wider than what the MRTP Commission can grant. It was also contended that the MRTP Act is not a statute which seeks to protect the rights of one competitor against the other and is designed more for redressing the grievances of consumers or the public at large. It was contended that ITC v. Shri Krishna Moktan (supra), a decision cited by the learned Counsel for the defendant, related to a complaint of a consumer for an unfair trade practice, and, Therefore, the said decision would not cover the situation which arises in the present case. With regard to the decision in the case of Reckitt Benckiser (India) Ltd. (supra), the learned Counsel for the plaintiff contended that Section 41(h) of the Specific Relief Act, 1963 only ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y being: equally efficacious relief ; can certainly be obtained ; and by any other usual mode of proceedings. The remedies under the MRTP Act are certainly not as efficacious a relief as an injunction granted by a court. Section 36D of the MRTP Act, as indicated above, empowers the Commission to inquire into any unfair trade practice which may come before it for inquiry and, if, after such inquiry, it is of the opinion that the practice is prejudicial to the public interest, or to the interest of any consumer or consumers generally, then the Commission may by order direct, inter alia, that the practice shall be discontinued or shall not be repeated. It is clear that the Commission has to examine the case of an unfair trade practice from the stand-point of prejudice to public interest or to the interest of any consumer or consumers generally. It does not examine or inquire into an unfair trade practice from the stand-point of competitor which is purely a private interest. Therefore, the scope of an inquiry into an unfair trade practice before the MRTP Commission is entirely different from the scope of consideration of an unfair trade practice in a civil court in a suit institute ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... electronic media would run counter to the principles of law which permit comparative advertisements without entailing any denigration or disparagement. 58. It was also contended that the settled legal position for grant of an injunction, assuming a case of malicious falsehood or slander of goods has been made out, is that the relief available to a successful claimant in malicious falsehood is damages (or an inquiry as to damages) and an injunction to restrain the repetition of the statement complained of or an equivalent statement, i.e., statements which have been found to be false. It was also contended on the strength of observations noted in Kerly's Law of Trade Marks and Trade Names, 13th Edition, that the relief (and, particularly costs) may be refused where one or both parties are conducting the proceedings for the purpose of publicity rather than in pursuit of genuine grievances. In this background, it was contended that the only injunction order, if at all, that could be granted is, with regard to restraining the defendant from repeating the publication of the said advertisement, something, which the defendant has already ceased to do. It was further contended that t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... caused to at least a ₹ 200 crore brand. Ext. PW1/19, which is a comparative chart of the channels in which advertisements of both products appeared, in the month of July, 2007 and part of August, 2007, was referred to by the learned Counsel for the plaintiff to submit that the defendant has targeted all channels on which the plaintiff advertises. It was further contended that Ext. DW1/12 to DW1/14 are advertisements of the plaintiff. In each advertisement a mother is portrayed as encouraging her child to bathe with DETTOL soap. The defendant's advertisement has denigrated and undermined this entire advertisement campaign which, admittedly, was run on various TV channels and viewed by consumers and the public at large on almost a daily basis. It was contended that the defendant's advertisement has seriously damaged the entire campaign of the plaintiff by showing the children now mocking and ridiculing their mother for using DETTOL soap. 62. It was also contended that the reputation of good quality for its toilet soap and the brand DETTOL which the plaintiff painstakingly developed over the past many years has been destroyed by the mischievous and malicious advertise ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tiff is entitled to would be to restrain the defendant from issuing or telecasting the impugned advertisement or in any other manner disparaging the goodwill and reputation of the plaintiff and its product sold under the trade mark DETTOL. It is clarified that it would be open to the defendant to employ comparative advertising comparing its products with those of the plaintiff without, of course, indulging in any disparagement or denigration of the plaintiff's products. 65. As regards the question of award of damages by way of compensatory relief, I agree with the learned Counsel for the plaintiff that the said advertisement has caused some loss/damage to the plaintiff. There is indication that the plaintiff's consumers have shifted to the defendant's product which has been advertised. However, no evidence of the extent of the loss or damage that has been caused has been produced by the plaintiff. Therefore, quantification of the extent of damage and loss has become well nigh impossible. 66. Since the findings returned by me are that the said disparaging advertisement was a deliberate act on the part of the defendant aimed at reducing the sales of the plaintiff ..... X X X X Extracts X X X X X X X X Extracts X X X X
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