(Prayer in O.A.No.737 of 2021: This Original Application is filed under Order XIV Rule 8 of Original Side Rules r/w. Order 39 Rule 1 and 2 of CPC praying to grant an order of interim injunction restraining the Respondent, its men, servants, agents, assigns, directors, officers, any person claiming through or under it from issuing/circulating/publishing/telecasting/streaming the offending advertisement filed as Plaint Document No.2, or other similar advertisement in any media and in any language and thereby, disparaging/denigrating the Applicant’s product Vicks Cough Drops by making false, injurious and misleading representations, either directly or indirectly, or in any other manner whatsoever pending disposal of suit.)
1. This Original Application is filed to restrain the respondent from issuing, circulating, publishing, telecasting or screening the impugned advertisement or any similar advertisement in any media and thereby disparaging or denigrating the applicant’s product, Vicks Cough Drops.
2. The applicant is a company engaged in the manufacture and sale of consumer staples, which are otherwise referred to as fast moving consumer goods. One of the products manufactured and marketed by the applicant is Vicks Cough Drops. This product is available in three flavours, namely, menthol, honey and ginger. The menthol flavoured Vicks Cough Drops is sold in the form of a caramel brown colour lozenge in a blue pillow pack. The applicant asserts and alleges that the respondent released an advertisement with regard to its product ‘Strepsils’ in the Tamil media recently, which maliciously disparages Vicks Cough Drops. The applicant asserts that the advertisement refers to Vicks Cough Drops as an ordinary tablet (satharana mathirai), as opposed to medicated ‘Strepsils’. According to the applicant, the fact that the applicant’s product is being targeted in the advertisement is clear from the blue pillow pack, which is shown both in the opening frame and in the comparative frame, and in the caramel brown lozenge which is shown while the voice over describing it as an ordinary tablet is played.
3. The applicant also points out that the advertisement shows a lady television presenter with a sore throat condition taking out a blue coloured pillow pack resembling that of the menthol flavored Vicks Cough Drops. An expert is shown questioning her choice by deprecatingly referring to it as an ‘ordinary tablet’. The next frame of the visual shows the lady’s condition deteriorating from a sore throat to a cough to a condition wherein she has red eyes and nose and appears dishevelled. The applicant states that the advertisement continues by showing the expert opining that a sore throat could be a symptom of major illnesses and that the lady should take ‘Strepsils’. Thereafter, the visual is in the form of a split frame which depicts ‘Strepsils’ as a bright orange tablet in the oral cavity, which heals and provides long lasting relief. On the contrary, the split frame compares and contrasts this by depicting a caramel brown ‘ordinary tablet’ (satharana mathirai) shown along with a blue pillow pack, which has no positive effect at all. The applicant points out that the Vicks Cough Drops have about 66% market share in the relevant category and that the disparaging advertisement of the respondent is designed to unfairly wean away its customers by denigrating the product. In support of this contention, the applicant relies upon a survey conducted amongst potential customers and the report prepared on the basis thereof.
4. The applicant also points out that the targeted product is clearly that of the applicant since blue pillow packs are not used by persons manufacturing similar products. The applicant points out that the only other blue pillow packs in the market are used by manufacturers of products such as mentos and center fresh which constitute a distinct category. Likewise, it is pointed out that the only other lozenges, which are brown in colour are toffees such as alpen liebe. In support of these contentions, the applicant relied upon the following judgments:
1. Hindustan Unilever Ltd. v. Reckitt Benckiser (India) Ltd. MANU/WB/0528/2013 (paragraphs 50, 66 and 75)
2. Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Others, MANU/DE/0896/2003 [paragraphs 13 to 17]
3. Gillette India Limited v. Reckitt Benckiser (India) Private Limited, MANU/TN/1910/2018 [paragraphs 95 to 98 and 107]
4. Hindustan Unilever Limited v. Reckitt Benckiser (India) Private Limited, MANU/DE/3826/2021 [paragraph 34]
5. Reckitt Benckiser (India) Private Ltd. v. ITC Limited, O.S.A (CAD) Nos.98 to 100 of 2021 (paragraphs 17 & 18).
5. On the basis of the above judgments, the applicant contended that a competitor is permitted to release an advertisement which makes claims, included inflated or puffed up claims, about the quality and standard of its products. However, a competitor is not permitted to denigrate the products of its competitor by pointing to an alleged defect or demerit in the products of its competitor.
6. These contentions were strongly refuted by the respondent. According to the respondent, a single colour such as blue is not entitled to protection under the Trade Marks Act, 1999 (the Trade Marks Act). The respondent contended that the Trade Marks Act enables the registration of a combination of colours as a trademark but not a single colour. In fact, the respondent pointed out that the applicant does not have a trademark registration in respect of the blue pillow pack or the caramel brown lozenge since neither of the above satisfies the requirement of distinctiveness. The respondent also pointed out that the applicant sells Vicks Cough Drops in three flavours, each of which has a different coloured pillow pack. Thus, the pillow pack is not a source identifier; instead, it is a flavour identifier. By drawing reference to Section 29(8) of the Trade Marks Act, the respondent contended that an advertisement infringes a registered trademark only under the circumstances set out therein. In this case, the advertisement is not detrimental to the distinctive character of the registered trademark of the applicant. With specific reference to the blue pillow pack, the respondent pointed out that the front of the pillow pack is not predominantly blue. Similarly, the lozenge is not chocolate brown but light brown.
7. The respondent also contended that the advertisement is targeted at non-medicated products and not medicated products such as Vicks Cough Drops. The use of the expression ‘ordinary tablet’ or Satharana mathirai should be understood from that perspective. In order to buttress this contention, the respondent pointed out that the advertisement was made originally in the Hindi language, and the expression used therein is sadharan goli. The word ‘goli’ refers to any round object and is not restricted to medicinal products. The respondent also referred to previous advertisements of a similar nature where the expression ‘maamooli goli’ was used. By drawing attention to the Vicks Cough Drops of the applicant, the respondent pointed out that it is translucent and triangular in shape unlike the round product depicted in the split frame segment of the advertisement. In fact, the respondent pointed that similar advertisements were released in the years 2015 and 2019 and these advertisements are still being telecast. In support of these contentions, the respondent referred to and relied upon the following judgments:
1. Tata Press Ltd. v. Mahanagar Telephone Nigam Ltd & Others [(1995) 5 SCC 139] (Tata Press)[paragraphs 23 and 24]
2. Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd. [(1999) 7 SCC 1] [paragraph 40]
3. Lakhanpal National Limited v. M.R.T.P. Commission [(1989) 3 SCC 251] [paragraph 7]
4. Puro Wellness Pvt. Ltd. v. Tata Chemicals Ltd. [2019 SCC Online Del 10766] [paragraphs 9, 11 and 12]
5. Phillips India Pvt. Ltd. v. Shree Sant Kripa Appliances Pvt. Ltd. [2015 SCC Online Del 6609] [paragraph 7]
6. Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd. [2006 SCC OnLine Del 199] [Paragraphs 4 to 6]
7. Hindustan Unilever Ltd. v. Cavincare Private Ltd. [2010 Indlaw DEL 3247] [paragraphs 3,4,10 and 12]
8. By way of rejoinder, the applicant submitted that the advertisement has to be viewed as a whole and not as a series of disjointed frames while deciding whether the advertisement is disparaging or not. With specific reference to the use of the words ‘ordinary tablet’, the applicant stated that the word ‘tablet’ is not used in respect of un-medicated products. The applicant also pointed out that it is improbable that an educated TV anchor, such as the lady depicted in the impugned advertisement, would use un-medicated products such as mentos for a sore throat. With regard to the judgments relied upon by the respondent, the applicant contended that Tata Press is on commercial speech and not in the context of disparagement. By relying strongly on the recent judgment of the Division Bench of this Court in Reckitt Benckiser (India) Private Ltd. v. ITC Limited, the applicant pointed out that the court concluded that an advertiser may say that its goods are better than its competitors, but cannot say that the competitors goods are bad. If so, it amounts to slander of the goods of the competitor. On such basis, in that judgment, an order of injunction was granted.
9. The applicant also asserted that the advertisement should not be examined with a magnifying glass so as to discern minor differences between the product of the applicant and the product depicted in the advertisement. The contention of the respondent on the basis of a venn diagram was contested by saying that such venn diagram was not an accurate depiction of the fact situation in the present case. The applicant concluded submissions by pointing out that the balance of convenience is clearly in favour of granting an interim injunction because irreparable loss would be caused to the applicant if an interim injunction is not granted, whereas the respondent has the option of tweaking the advertisement or continuing to advertise its products by making and broadcasting a non-disparaging advertisement.
10. Upon taking note of the rival contentions, at the outset, it is necessary to set out the basis on which the impugned advertisement should be judged. All the judgments cited at the bar indicate that the advertisement should be examined as a whole, and not by breaking it up into disparate elements. While examining the advertisement as a whole, it is necessary to assume a potential consumer of the relevant product - who is reasonable, in contrast to unduly suspicious or hypersensitive - of average intelligence and imperfect recollection. The advertisement should be judged from the perspective of a person meeting the above description. The fact that the impugned advertisement in the audio-visual medium comprises a series of moving images and not still frames is also relevant. It is also important to bear in mind that the target of the application is the Tamil advertisement. In the Tamil advertisement, the TV anchor is shown taking a product in a blue pillow pack. In the subsequent frames of the advertisement, this product is described as a satharana mathirai. In Tamil, the expression ‘mathirai’ is not used for un-medicated products. The respondent contended that the applicant’s cough drops are available in three different pillow packs depending on the flavour. This submission is borne out by records. However, the fact that the applicant’s product is available in three different coloured pillow packs is per se not a complete defence to the charge of disparagement. To put it differently, if it is concluded that the target of the advertisement is any one of the three pillow packs used by the applicant and it is further concluded that the advertisement is prima facie disparaging, an interim injunction should be issued notwithstanding the fact that the applicant also uses pillow packs in two other colours, which are not targeted in the impugned advertisement.
11. The other contention of the respondent is that the applicant’s lozenge is translucent and triangular in shape, whereas the lozenge depicted in the advertisement is round and dark brown. As set out earlier, the standard to be applied to judge whether the advertisement is disparaging is by assuming a reasonable person, in contrast to, for instance, an unduly suspicious or hypersensitive person, of average intelligence and imperfect recollection. Therefore, one should not examine the advertisement with a magnifying glass in order to discern possible differences between the applicant’s product and the product depicted in the advertisement. Instead, the applicant’s product should be examined from a macro perspective by comparing it with the product depicted in the advertisement. It also bears repetition that the advertisement should be looked at as a whole so as to consider its impact on a reasonable person of average intelligence and imperfect recollection. While undertaking such exercise from the perspective indicated above, it stands to reason that an advertisement founded on comparison would ordinarily be understood by a viewer as a comparison between products in the same category unless the advertisement contains an indication to the contrary.
12. Although the respondent asserted that the original Hindi version of the advertisement uses the expression ‘sadharan goli’, this application is focused on the advertisement in Tamil which uses the expression ‘satharana mathirai’. As stated earlier, the expression ‘mathirai’ is not used for un-medicated products in Tamil. Thus, the use of the expression “mathirai” in the Tamil advertisement reinforces and certainly does not rebut the assumption of a reasonable viewer of average intelligence and imperfect recollection of a comparative advertisement that two products in the same category are being compared. When viewed
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from the perspective outlined above, the depiction of the blue pillow pack when seen in combination with a brown tablet leads to the prima facie inference that the target of the advertisement is the menthol flavoured version of Vicks Cough Drops. The self-evident position is that the targeted product is described as an ordinary and ineffective tablet. Hence, as regards the advertisement in Tamil, prima facie, the advertisement is disparaging. 13. The balance of convenience and hardship remain to be considered. If the respondent is permitted to continue to air the advertisement, it is possible that potential consumers may believe that the applicant’s product is ineffective. As a consequence, it is likely that many such consumers would stop using the applicant’s product, and may opt for the respondent’s product. This could cause significant loss to the applicant, and such loss would be difficult to remedy subsequently. By contrast, if an interim injunction is granted as regards the advertisement in Tamil, the respondent would have the option of withdrawing the advertisement and releasing a new non-disparaging advertisement or even tweaking the existing advertisement in such manner as to make it non-disparaging. In either case, it would only have a marginal cost impact on the respondent. Therefore, the balance of convenience is clearly in favour of the applicant. 14. For all these reasons, the applicant is entitled to succeed. Consequently, there shall be an order of interim injunction as prayed for in respect of the advertisement in Tamil.