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Paras Pharmaceuticals Ltd. Versus Ranbaxy Laboratories Ltd. and 2 Ors.

2008 (2) TMI 932 - GUJARAT HIGH COURT

Appeal from Order No. 397 of 2007 and Civil Application No. 14306 of 2007 - Dated:- 21-2-2008 - K.A. Puj, J. For the Appellant/Petitioner/Plaintiff: Mihir Joshi, Sr. Adv. and Y.J. Trivedi, Adv. For the Respondents/Defendant: Mihir J. Thakore and Pranav G. Desai, Advs. JUDGMENT K.A. Puj, J. 1. The appellant-Original Plaintiff has filed this Appeal From Order under Order 43 Rule 1(r) of the Civil Procedure Code challenging the order dated 25th October, 2007 passed in the application Exh. 6/7 filed .....

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pellant that the appellant is a Company incorporated under the Companies Act, 1956 and engaged in the business of manufacturing and marketing pharmaceutical products and some prominent products of the appellant company are; 1. MOOV a pain reliever ointment 2. Stopache-ache reliever tablets 3. Itchguard-a itch reliever ointment, amongst others. 4. All the products of the appellant-Company are quite popular and widely accepted in the market and all the products are such popular that even the simil .....

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ct respectively. The appellant is, therefore, having exclusive right as provided under the Trademarks Act and Copyright Act and any person uses any identical or deceptively similar label, mark, trade dress or making substantial or material reproduction, is liable for infringement of the statutory right granted in favour of the appellant. 6. The appellant has developed the said product since the year 1986-87 and since then it has acquired reputation in the market. As far as sale promotion expense .....

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e business of medicinal preparation and have started manufacturing of the pain reliever ointment known as VOLINI. The said product is being used by the respondents since long time. However, as they could not get the desirable market share and as they realized that the product of the appellant is day by day increasing the market share and very much popular in the market, the respondents decided to capture the market by way of negative advertisement whereby the product MOOV can be disparaged and d .....

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nceived box of pain reliever to denounce the product of the appellant as shown in the third, sixth and seventh frames of the TV commercial. The third frame of the TV commercial shows a lady (MOM) explaining about suffering from the ache, she takes out a box of pain reliever product, is clearly identical with the box used by the appellant for marketing its product MOOV as the said box is having distinctive artistic work and colour scheme. The appellant submits that in the fourth, fifth, sixth and .....

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he various aches, as mentioned above, if they continue to use the appellant's product, so the respondent's product, namely, VOLINI, is better and a true pain reliever. The TV commercial, in question, contains a subtle message and suggestion that the product shown in the advertisement are ineffective as ache reliever and the viewer shall thus, switch to the product of the respondents. 9. It is, therefore, the case of the appellant that the message and suggestion seeks to disparage and is .....

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of the appellant. 10. It is also the case of the appellant that the product of the appellant MOOV is being marketed by the appellant in distinctive artwork and colour scheme for which the appellant holds statutory right. The distinctive artwork and colour scheme in relation to the product MOOV is associated in the minds of consumers and the general public and unwary consumers and the general public watching the respondent's TV commercial which is aired throughout India including city of Ahme .....

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urt at Ahmedabad and initially ex-parte interim relief was granted and by way of that interim relief the respondents, their agents, servants, dealers, distributors were restrained from demonstrating or advertising their product VOLINI in any manner including telecasting which disparages and denigrates, and directly or indirectly refers to the product of the appellant MOOV. On returnable date i.e. on 25.10.2007, the respondents appeared through their Counsel. However, the respondents did not file .....

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the respondents that the said advertisement was only a comparison and does not amount to disparage or denigrate the appellant's product MOOV. The case of the appellant before the Court was that from the prints of the advertisement, it is undoubtedly and evidently clear that the product which is disparaged or denigrated in the said advertisement is having identical colour scheme, arrangement, general trade dress with that of the appellant's product MOOV. Despite these facts, the learned C .....

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oduct i.e. pain reliever ointment. ii. The trade dress, colour scheme and other arrangement of the get up of the said product/box is identical and/or similar to appellant's product MOOV in all respects. iii. The said advertisement does convey a message that the product of the respondents is only STRUE PAIN RELIEVER as compared to entire other class. iv. The appellant is the registered proprietor of the trade mark as well as of the copy right of the entire trade dress, which does include colo .....

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d as not controverted in any manner by the respondents. Admittedly, the respondents have neither submitted any reply/written statement nor sought time for filing the same nor reserved the liberty to file the same in future in any manner. By short circuiting of the mandatory requirements as provided under the Code of Civil Procedure as well as the Ahmedabad City Civil Court Rules, 1961, the respondents directly submitted the story board of the advertisement. However, in any case, the same otherwi .....

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nd any doubt. Hence, the learned City Civil Judge ought not to have passed the impugned order, and therefore, the same deserves to be quashed and set aside. 16. Mr. Mihir Joshi has further submitted that the learned City Civil Judge, Ahmedabad has failed to appreciate that the respondents are not restrained from advertising or manufacturing or using their product or brand. The only grievance of the appellant is not to advertise the product in a manner which disparages or denigrates the appellant .....

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he respondents have used the mark without any license or permission from the appellant, therefore, as per the provisions of Section 29 of the Act, the respondents are liable for infringement. In view of the provisions contained in Section 29(4), 29(6), 29(7) and 29(8) of the Trade Marks Act, 1999 the respondents are using the appellant's trade mark and hence, respondents are liable for infringement. 17. Mr. Mihir Joshi has further submitted that respondents have committed infringement of cop .....

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en tends to denigrate the goods or services of another party, is accountable in common law suit for disparagement...and the statement about the competitor's goods which is untrue or misleading and is made to influence or do not influence the public not to buy. This fact is not appreciated by the learned City Civil Judge, Ahmedabad. 18. Mr. Joshi has further submitted that the phrase in the advertisement, another lady who recommends the respondent's product VOLINI Gel and says "YOU N .....

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bmitted that the respondents have not given any explanation as to why they have adopted the art work or label in their advertisement, and hence, it tantamounts to a fraud on the part of the respondents as laid down in the case of Midas Hygiene reported in 2005(3) SCC 1990. As per the said decision, without giving any explanation, if the respondent start or switch over to similar get up, colour scheme, they are liable for the infringement of the trade mark and copyright and are required to be res .....

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nt and it was suggested that if they change the colour of the cartoon shown, then also the appellant has no objection. This aspect was not considered by the learned City Civil Judge, Ahmedabad while deciding the injunction application. 21. Mr. Joshi has therefore urged that the order passed by the learned City Civil Judge, Ahmedabad deserves to be quashed and set aside and the prayers made by the appellant in the injunction application is required to be granted. 22. Mr. M.J. Thakore, learned Sen .....

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nt's product MOOV in the advertisement, rather the product shown in the advertisement is completely different product which is not even remotely connected with the appellant's products. He has further submitted that this would be more than evident if the clippings are shown in the size in which they would be displayed on the television. The minimum TV screen size on which the advertisement would appear would be about 20¬. He has further submitted that despite knowledge, false stateme .....

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T.V. Commercial shows a lady comes to MOM and boy and suggesting her for another remedy and speaks STAKE THIS, YOU NEED A TRUE PAIN RELIEVER. At the same time, a lady gives VOLINI Gel to MOM, who is having MOOV in her hand. 23. He has further submitted that in the Item No. 3 of the list in clipping No. 3 & 7 which is produced along with the notice of motion, false statement is made that the advertisement contains applicant's product MOOV. The appellant is seeking to improve upon the ple .....

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g to any back ache and muscular pain. There is no remark against the product of the appellant in the advertisement suggesting that its product is inferior. The advertisement of VOLINI product does not tantamount to any act of disparagement or infringement of applicant's rights under the Trade Marks Act, 1999. He has further submitted that there is no similar get up or trade dress which has been adopted by the Respondent while projecting the product SPACE¬ which is not even remotely conne .....

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the Appellant and therefore, by construing that the Respondent is showing the product which is distinctively seen as PACE is completely wrong and without any substance. 26. Mr. Thakore further submitted that it is settled law that one cannot claim any copy right on the use of basic colour which is always treated as common colour. The customers are not persuaded by the basic colour and no one goes to the retailer or chemist shop asking for a particular colour of the carton by which he will be ind .....

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ain message of the product of appellant is devoid of any merits and it cannot be considered to be a case of disparagement and denigration of the product of the Appellant. He has further submitted that violet colour is a common colour and is used commonly in the trade which cannot be monopolized by any of the parties and therefore, the appellant cannot claim exclusive right on the use of the colour. 27. Mr. Thakore has further submitted that there is no balance of convenience which lies in favour .....

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nce of convenience does not lie in favour of the Appellant as alleged. He has, therefore, submitted that appeal is without any merit and cause of action, improper and is liable to be dismissed. 28. Mr. Thakore, in support of his submission that the advertisement actually makes a comparison and provides an information that the product of respondent is having qualities in curing the ailment relating to any back ache and muscular pain and there is no remark against the product of the appellant in t .....

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V commercial was only comparing the two products and showing its own product as superior. There was no disparagement of the plaintiff's product. The Court held that no interim injunction against TV commercial can be granted. The Court took the view that the intent of the commercial is to suggest that the product of the defendant, that is, Wipro Sanjivani Honey is far superior to that of the plaintiff, that is, 'Dabur Honey'. While doing so, the commercial does not denigrate or dispar .....

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better. The hidden message in this may be that the product of the plaintiff is inferior to that of the defendant but that will always happen in a case of comparison while comparing two products, the advertised product will but naturally have to be shown as better. The law is that it is permissible for an advertiser to proclaim that its product is the best. This necessarily implies that all other similar products are inferior. The Court further held that in comparative advertising, a consumer ma .....

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that the overall audio-visual impact does not leave an impression that the story line of the commercial and the message that is sought to be conveyed by it is that 'Dabur Honey' is being denigrated, but rather that 'Wipro Sanjivani Honey' is better. 29. Mr. Thakore has submitted that the decision of the Delhi High Court in the case of Karamchand Applicances Private Limited v. Shri Adhikari Brothers and Ors. 2005 (2) R.A.J. 570 (Delhi.) relied on by Mr. Joshi is distinguishable o .....

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at the telecast of the modified commercial is liable to be restrained not only because the commercial disparages the product manufactured and marketed by the plaintiff but also because the claim made by the defendant about any technological advantage justifying the disparagement are not substantiated and hence, the defendants were restrained from telecasting the commercial advertisements in its original form or in the modified form. The Court lays down certain principles for deciding the matter .....

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a claim is factually incorrect, and (2) that while a claim that the goods of a manufacturer or the tradesman are the best may not provide a cause of action to any other trader or manufacturer of similar goods, the moment the rival manufacturer or trader disparages or defames the goods of another manufacturer or trader, the aggrieved trader would be entitled to seek reliefs including redress by way of a prohibitory injunction. After considering these principles, the Court took the view in the fac .....

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s even for making it. But in order to puff up the product, the defendant may be entitled to boast no matter unjustifiably about the efficacy of the device and the speed which the mosquitoes would flee from it. Parliament may in the larger interests of the consumer public by law provide a mechanism to regulate and/or prevent the making of such exaggerated claims. But in an action against a wrong caused by a disparaging advertisement, the question as to how and to what extent the claim made in the .....

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itted that the similar provisions are there in English Act. Section 10(6) of the Trade Marks Act, 1994 provides that nothing in the preceding provisions of this Section shall be construed as preventing the use of registered Trade Mark by any person for the purpose of identifying the goods or services as those of the proprietor or a licensee. But any such use otherwise than in accordance with the honest practices in industrial or commercial matters, shall be treated as infringing the registered m .....

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e of a competitor's mark was 'honest'. Thus the proviso should not be construed in a way which would effectively prohibit all comparative advertising. 2. The onus was on the plaintiff to show that the factors indicated in the proviso existed. 3. If use of the registered mark was Snot in accordance with honest practices in industrial or commercial matters, there would be infringement. This was an objective test which depended on whether the use would be considered honest by members of .....

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auged against what was reasonably expected by the relevant public of advertisements for the goods or services in issue. 5. The final words of the proviso, that the use of the mark must take unfair advantage of, or be detrimental to, the distinctive character or repute of the trade mark at most meant that the use must either give some advantage to the defendant or inflict some harm on the character or repute of the registered mark so as to be above the level of deminimis. 6. The leaflet and table .....

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eyed the message that the package of 15 features taken as a whole was believed by the defendant to offer the customer a better deal. 8. The plaintiff was therefore unlikely to win the action and this was a major factor to be taken into account when deciding whether or not to grant interlocutory relief. The comparative triviality of the benefit that would be obtained by the plaintiff and the small amount of damage the plaintiff would suffer in the light of other competitors' advertising were .....

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erage, Orange users save 20 Pound every month compared with the Vodafone equivalent tariffs. The plaintiffs had a registered trade mark Vodafone covering the services offered by the defendant. The plaintiffs sued the defendant for malicious falsehood and trade mark infringement. On the malicious falsehood claim, the plaintiffs argued that the advertising slogan would be interpreted by the public either as meaning (i) that users of the Vodafone network would have to pay 20 Pound more per month th .....

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meanings. The defendant argued that the public would take the statement at face value and on that basis, making reasonable assumptions, it was true. One such assumption was the elasticity of price and consumption, that is to say that fewer calls are generally made on a more expensive tariff. They also suggested that the statement was true even on the plaintiffs' interpretation. They denied malice. The parties agreed that the judge should apply the one meaning rule in libel when considering .....

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statement, the Judge as notional jury had to decide upon a single natural and ordinary meaning of the words used. 2. In determining this ordinary meaning, the Judge had to take into account the fact that the public expect a certain amount of hyperbole in advertising. The more precise and specific the claim, the more likely it was that the public would take it seriously. 3. A comparative advertisement used a trademark otherwise than in accordance with honest practices if it was objectively misle .....

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e slogan was meaningless if no one had heard of Vodafone. 5. The ordinary man would have interpreted the slogan at face value; he would not have assumed that the 20 Pound saving would apply to every customer, just to an average customer (in the sense of an arithmetic mean). 6. The single meaning for the purposes of malicious falsehood was that if Orange users had been on Vodafone making the same usage as they made on Orange, on arithmetic average they would have paid 20 Pound more per month, inc .....

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ariff the 'elasticity' of price and usage. 8. There was no convincing evidence of malice. 9. The calculation of the 20 Pound figure was not so inherently flawed as to be false irrespective of meaning all the assumptions made were reasonable and the only factors left out of the analysis would not have made a significant difference to this figure. 10. The statement was not false on the defendant's meaning when all relevant considerations were taken into account. On the plaintiffs' .....

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rice package with those of the plaintiff's price packages. The plaintiff issued a writ claiming malicious falsehood and trade mark infringement and obtained an ex parte injunction. The defendant filed some evidence in order to prevent the continuation of the injunction but indicated that it was not the totality of the evidence it wished to file. At the suggestion of the Court, the plaintiff restricted its claim to trade mark infringement and the defendant restricted its defence accordingly. .....

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ng in accordance with honest practices. 2. The test of honesty was an objective one in the sense that the question to be asked was whether a reasonable trader could honestly have made the statements he made based on the information he had. 3. A trader could have a defence if it turned out that the information he had was wrong in some way or other but he would have to stop the acts complained of when further credible information that he was wrong became available. 4. On the evidence the statement .....

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DIVISION in the case of British Airways Plc v. Ryanair Limited (2001) F.S.R. 541 wherein the defendant ran two advertisements in which it compared its return air fare prices to a number of European destinations with those of the claimant. The first was headed SEXPENSIVE BA....DS and the second Expensive BA and each featured two columns of prices headed Ryanair from and SBA from and then the respective prices. The first advertisement was withdrawn after a short run after the ASA upheld a complain .....

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he price comparisons were said to be unfair because the defendant's midweek return was compared with the claimant's return same week fare and not with its lower return fare which required a Saturday night stay. The Frankfurt comparison was said to be unfair because the defendant's flights went to a secondary airport which was further out from Frankfurt than Frankfurt International to which the claimant's planes flew. The defendant claimed the comparisons were not misleading and r .....

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ective of October 6, 1997 on Comparative Advertising (97/55). While dismissing the action, the Court held that: 1. The defence of use of a trade mark as a description provided by Section 11(2)(b) of the Trade Marks Act 1994 extended to the use of a description by way of use of a trade mark to describe goods. 2. The Comparative Advertising Directive was not intended to amend the Trade Marks Directive and it would follow that it was not intended to amend or affect the interpretation of any nationa .....

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ied by the Directive. 4. The test as to whether the advertisements were misleading was whether they were misleading to the average consumer. 5. The fact that the first advertisement was offensive did not render it actionable as trade mark infringement. 6. The first advertisement was merely vulgar abuse and was not a malicious falsehood. 7. The price comparisons were not misleading. The average consumer would expect there to be some sort of conditions and the small print made it clear. 8. The omi .....

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;s product is nothing but a comparison and there is no infringement of any trade mark of the appellant and hence, no injunction can be granted. The appeal is, therefore, required to be dismissed. 35. After having heard learned counsels appearing for the respective parties and after having gone through the memo of the appeal, affidavit-in-reply filed by the respondent and the impugned judgment and order passed by the learned City Civil Judge, Ahmedabad and after having considered the relevant sta .....

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oduct shown in the objected clips is that of the appellant, the only objectionable part in such advertisement can be denigrating and disparaging the product of the rival and showing the product to be better than the rival, even if it is not so, is permissible and in further arriving at the conclusion that the appellant has no prima facie case and balance of convenience is not in their favour and that considerable hardships would be caused to the respondents if the injunction is granted. 36. The .....

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part in that TV commercial is the colour of the product pack which is akin or similar to the product pack of the appellant. It is also to be seen that the respondent has not filed any reply to the suit before the City Civil Court and only the list of documents is filed and it was contended before the learned City Civil Judge that voiced words indicated are totally different and whole TV commercial was based on comparison and there was no intention or an attempt to denigrate or disparage the pro .....

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that the TV commercial was only depicting a symbolic comparison with other non-existent product, namely, PACE, all these Judgments become inapplicable. The comparison can always be made between two existing things and in all these judgments, comparisons are made only between two existing things. There is no question of comparing the respondent's product with any non-existent product. Even if the respondent had to choose any non-existent product, the same cannot be in the same colour pack i.e .....

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l reference to the provisions contained in Section 29(8) of the Trade Marks Act, 1999. This section states that registered Trade Mark is infringed by any advertising of that Trade Mark, if such advertising (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or (b) is detrimental to its distinctive character, or (c) is against the reputation of the Trade Mark. By quoting Section 10(6) of the Trade Mark Act, 1994 and citing judgments of the Englis .....

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of Mr. Thakore as there appears to be no honest practice of comparing one's product with a non-existent product. By adopting a violet colour which is adopted by the appellant to cover up its product and the appellant's product is by and large known in the general public with that colour, and since the appellant's product is much popular amongst the general public as a pain reliever, the respondent has tried to take unfair advantage which may amount to an infringement of the Trade Ma .....

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, the basic criteria is test of average consumer or the objective test is that of reasonable audience. The average consumer or the reasonable audience would normally go by the colour which is shown on the TV commercial. In a country like India, lacks of people are illiterate and they are in need of pain reliever at every stage. The figures given by the appellant indicate that the turnover of the appellant's product MOOV is on a very large scale and the TV has reached to the remote villages a .....

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