w w w . L a w y e r S e r v i c e s . i n



Reckitt Benckiser Health Care (India) Pvt V/S Emami Ltd. and Others

    F.M.A. 2041 of 2015 (CAN 5406 of 2015)

    Decided On, 16 July 2015

    At, High Court of Judicature at Calcutta

    By, THE HONORABLE JUSTICE: JYOTIRMAY BHATTACHARYA AND THE HONORABLE JUSTICE: DEBI PROSAD DEY

    For Petitioner: C.M. Lall, N. Roy, Kausik Dey, Partha Basu and Sudhakar Prasad And For Respondents: Pratap Chatterjee, Debnath Ghosh, Soumya Roy Chowdhury, Soma Rahaman and Sarosij Das Gupta



Judgment Text

1. This first miscellaneous appeal is directed against an order passed by the Learned Additional District Judge, 13th Court at Alipore on 28th May, 2015 in Title Suit No. 1 of 2015 at the instance of the defendant No. 1/appellant.

2. In fact, by the impugned order, two applications were disposed of by the Learned Trial Judge. One of such applications was filed by the defendant No. 1/appellant for rejection of the plaint under Order 7 Rule 11 of the Code of Civil Procedure. The learned Trial Judge held that the defendant's said application under Order 7 Rule 11 of the Code of Civil Procedure is misconceived.

3. Hence, the said application was rejected.

4. However, the other application filed by the plaintiff for injunction under Order 39 Rule 1 and 2 of the Code of Civil Procedure was allowed by the learned Trial Judge. By the said order temporary injunction was passed restraining the defendant No. 1 from displaying and/or playing and/or telecasting and/or airing the impugned advertisement for "MOOV" with the frames showing the product of the plaintiff (ZANDU BALM) in its unique shape, colour and design alongwith "MOOV" and the words "Jisme hai promukh balm ke mukable do guna jaida active ingredients", till the disposal of this case.

5. In the present appeal, the legality and/or propriety of the order of injunction which was passed by the learned Trial Judge as mentioned above is under challenge before us. The appellant has also filed a revisional application challenging the other part of the impugned order by which the application filed by the defendant No. 1/appellant for rejection of the plaint under Order 7 Rule 11 of the Code of Civil Procedure was rejected. The said revisional application is not before us. However, since the defendant/appellant contested the plaintiff's application for temporary injunction by filing affidavit, raising a question regarding maintainability of the suit on identical grounds made out by it in its application under Order 7 Rule 11 of the Code of Civil Procedure and further since fate of the injunction proceeding, to some extent, is dependent upon the defendant's said application under Order 7 Rule 11 of the Code of Civil Procedure, this Court thought that both the appeals and the revisional application should be heard by a common Bench so that possibility of conflict of decision may be avoided. Accordingly a suggestion was given to the learned Counsel appearing for the parties for approaching the Hon'ble Chief Justice for getting all these matters assigned to a common Bench so that both the appeal and the revisional application can be decided by a common Bench. Finally Mr. Lall, learned Counsel, appearing for the appellant refused to accept such suggestion of the Court as according to him the process for assignment of these two matters to a common Court may cause some delay in deciding the present appeal and as such he invited this Court to dispose of the present appeal by concentrating on the legality of the order passed on the injunction application filed by the plaintiff without entering into the objection raised by the defendant/appellant regarding maintainability of the said suit, which his client intends to thrash out exhaustively in the revisional application pending before the other Bench separately. Under such circumstances we felt that presently we need not discuss the maintainability of the present suit though such an objection is raised by the defendant/appellant in its affidavit filed in connection with the injunction proceeding. We thus, concentrate on the legality of the injunction order passed by the learned Trial Judge which is impugned in this appeal.

6. Before entering into the merit of this injunction order we like to mention here that it is rightly pointed out by Mr. Lall, Learned Advocate for the appellant, that the learned Trial Judge, while passing the impugned order of temporary injunction, did not at all consider the contention of the defendant/appellant made out in its affidavit filed against the plaintiff's application for injunction before the learned Trial Court. On perusal of the impugned order we find that the learned Trial Judge in fact, was considering as to whether in the absence of the defendant/appellant, any ad interim order of injunction could be passed in the said suit or not. That may be the reason for which the learned Trial Judge did not consider the defendant's objection filed against the plaintiff's application for injunction. Though the learned Trial Judge came to a conclusion that this was a fit case where some ad interim order of injunction was required to be passed but in fact, the plaintiff's application for temporary injunction was disposed of by the learned Trial Judge by granting temporary injunction which is impugned in this appeal. This in our view is not a mere irregularity but a patent illegality in the impugned order.

7. Mr. Chatterjee, learned Senior Counsel, appearing for the plaintiff/respondent informs us that, as a matter of fact, both the said applications i.e., application filed by the defendant for rejection of the plaint and the application for injunction filed by the plaintiff were fixed for hearing on 28th May, 2015. Affidavits were exchanged between the parties in connection with both the proceedings. But since the learned lawyer representing the defendant No. 1 refused to participate in the injunction proceeding though he participated in the hearing of the dependant's application for rejection of plaint, the learned Trial Judge while, disposing of the plaintiff's application for temporary injunction, probably did not consider the affidavit-in-opposition filed by the defendant No. 1 to the plaintiff's application for temporary injunction.

8. It is no doubt true that the Court was not required to consider the affidavit filed by the defendant No. 1 in connection with the plaintiff's application for injunction and the written submission submitted by the defendant's lawyers, as the defendant did not participate in the hearing of the injunction proceeding. As such the learned Trial Judge probably cannot be accused for not dealing with the contention raised by the defendant/appellant in its affidavits filed in connection with the injunction proceeding and/or the written submission which was submitted before the Trial Court by the learned lawyer of the defendant dealing with the merit of the plaintiff's application for injunction. However, we have no hesitation to hold that under such circumstances the learned Trial Court, instead of disposing of the plaintiff's application for temporary injunction as a whole, could have passed an ad interim order of injunction by deferring the hearing of the plaintiff's application for temporary injunction, as the learned advocate appearing for the defendant expressed his inability to conduct hearing of the plaintiff's application for temporary injunction in the absence of the Senior Advocate.

9. Be that as it may since affidavits have already been exchanged between the parties, we were invited by the learned Counsel appearing for the parties to consider the pleadings of the respective parties filed in connection with the temporary injunction proceeding and dispose of the plaintiff's application for temporary injunction on its merit. Accordingly, instead of remanding the plaintiff's application for temporary injunction back to the learned Trial Judge for reconsideration, we have considered the merit of the plaintiff's application for temporary injunction in the light of the pleadings of the respective parties filed before the learned Trial Judge.

10. Let us now consider the merit of the plaintiff's application for temporary injunction in the facts of the instant case.

11. Prior to the filing of the present suit, the plaintiff filed another suit in the Court of the learned Civil Judge (Senior Division), 4th Court being Suit No. 23783 of 2014 under the common law of tort for disparagement. By an ad interim order passed in the said suit, telecasting of television commercial of "MOOV" was suspended and a receiver was also appointed by an ad interim order for taking custody of the device used for the disputed advertisement and publicity of '"MOOV". When those two applications were posted for final hearing, the defendant/appellant filed two applications; one under Order 7 Rule 10 of the Code of Civil Procedure and the other under Order 7 Rule 11 of the Code of Civil Procedure. According to the defendant since the suit was framed under the scheme of Section 29(8) of the Trade Marks Act, 1999, such a suit is not maintainable before the Court of the Civil Judge (Senior Division) in view of the provision contained in Section 134 of the Trade Marks Act, 1999 which provides that such a suit for infringement of trade mark is not entertainable by any other Court inferior to a District Court having jurisdiction to try such suit. Without disposing of those two applications filed by the defendant, the learned Trial Judge, extended the interim order passed earlier and thus, the ad interim injunction and/or order of appointment of ad interim receiver were extended.

12. Feeling aggrieved by the said order passed by the learned Trial Judge, a Miscellaneous Appeal was filed before this Hon'ble Court. While disposing of the said Miscellaneous Appeal, this Hon'ble Court after considering the pleadings of the plaintiff formed a prima facie opinion that the said suit as it was framed indicates that the plaintiff in fact, sued the defendant for infringement of trademark under the scheme of Section 29(8) of the Trade Marks Act, 1999 and thus, the said Bench after expressing its prima facie doubt about the maintainability of such a suit before the Court of the Civil Judge (Senior Division), vacated the order of ad interim injunction and the order of ad interim receiver passed by the learned Trial Judge and directed the learned Trial Court to decide the defendant's application under Order 7 Rule 10 and Order 7 Rule 11 of the Code of Civil Procedure finally. Before the defendant's those two applications were finally disposed of, the plaintiff herein filed an application before the learned Trial Judge for permitting the plaintiff to withdraw the said suit for suing afresh before the competent Court and such leave having been granted by the learned Trial Judge on 26th February, 2015, the instant suit was filed for infringement of trademark and disparagement under Section 29 read with Section 134 and 135 and the Trade Marks Act, 1999 and for infringement of Copyright under Section 55 and 62 of the Copyright Act, 1957, before the Court of the learned District Judge at Alipore which was subsequently transferred to the Court of 13th Additional District Judge at Alipore.

13. In this background, let us now narrate briefly the cause of action pleaded by the plaintiff in the plaint of the present suit. The plaintiff and the defendant No. 1 are business competitors. Both of them produce and sell ayurvedic remedy for headache, backache and cold. The plaintiff's product is manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU". The defendant's product is manufactured and marketed under the trade name "MOOV". The plaintiff started manufacturing its product for providing relief for headache, backache and cold in the year 1935 after making extensive research and development work and since then it has been marketing its product not only in India but also in several other countries. The product of the plaintiff i.e., "ZANDU BALM"/"ZANDU" is sold in a distinctive packaging being predominantly green in colour with combination of white. The green and white colour scheme is identified with the plaintiff's product manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU". The package, colour combination of the container of the plaintiff's product is registered under the Trade Marks Act, 1999. The package and the original artistic work of the plaintiff's product marketed under the name "ZANDU BALM"/"ZANDU" is also registered under the Copyright Act, 1957. Any adaptation and/or slavish imitation of the plaintiff's Copyright and/or trademark under the Copyright Act and/or Trade Marks Act is prohibited. The bottle shape and the configuration of the bottle of the plaintiff's product is also registered under the Designs Act, 2000. The plaintiff, thus, has taken all possible measures so that the goodwill of its Trademark and/or Copyright is not infringed by any of its competitors in the same business field. As per the report of A C Nielsen, the products sold under the trade mark "ZANDU BALM"/"ZANDU" contributes 44.3% of balm sub-segment (by Value Market Share) of rubefacient category for the period October 2013 to September, 2014 (All India Urban & Rural). Thus, the plaintiff is accepted as the leading producer of balm and its product is bought by the majority of the consumers of the balm sub-segment.

14. On or about 11th November, 2014, the plaintiff came to know from its various marketing agents, customers and trade associates that the defendant No. 1 had launched a new TV commercial for promotion and sale of its product "MOOV". Such TV Commercial is being aired in the channel "Colors" owned by the defendant No. 2. The frame of the TV Commercial is as follows:--

"The TV commercial opens with a lady entering into the lawn of her neighbour. The lady is seen holding a ball while playing with her husband and kid and in the voiceover it is being said that "parivar ki ek hi reed ki haddi hoti hain". In the next frame it is shown that the lady while playing with her kid is holding her back and the voiceover says "Kitna bhi sata lo". Then it is shown that the husband while coming down the stairs loses his balance and is about to fall and the lady rescues him and the voiceover says "hasi khusi jhel hi leti hai". Then the lady is shown arranging all her luggage and while doing so she feels an intense pain in the back and screams with backache and the voiceover says "par yeh pahaad nahi pith hain ...... Aaah .... Dukh bhi jati". In the next shot it is shown that the husband is holding a Moov pack and a balm and asks her for her choice and the lady points at Moov for her backache and the voiceover says "Isliye peeth dard ke liye ...... yeh bharosa karti hain Moov pe". Thereafter it is being shown that the husband is applying "MOOV" on the lady and massages her back and "2X" on the screen appears prominently and the voiceover says "Jismein hai pramukh balm ke mukable do guna Zyada active ingredients". As a result she is relieved of pain and the family goes for a drive at the end with the jingle of "MOOV" playing. The storyboard of the "MOOV" TV Commercial shown in the advertisement is impugned in the said suit. According to the plaintiff, by airing the impugned advertisement, the defendant purported to intentionally cast an aspersion on the plaintiff's product, manufactured and marketed under the trade name "ZANDU BALM"/"ZANDU" and/or its merchandise, and thereby severely affecting the goodwill and reputation of the plaintiff's product manufactured and marketed under the Trade Mark "ZANDU BALM"/"ZANDU". The plaintiff further alleges that while airing the impugned advertisement, the husband holds a "MOOV" pack and a bottle having the shape and configuration of the plaintiff's bottle having a direct association and/or connection with the plaintiff's registered Trade Mark "ZANDU BALM"/"ZANDU" and asks his wife for her choice. The lady points towards "MOOV" for her backache. Then the husband massages "MOOV" gel on her back and the voiceover says "Jismein hai pramukh balm ke mukable do guna Zyada active ingredients". Immediate after rubbing and/or massaging "MOOV" on the back of the lady, she got relief and then the family goes for a drive happily. At the end, the voiceover says that " Moov Aaaha se Aahatak"."
15. According to the plaintiff, by airing the said advertisement the following message was sent to the public:--

"(a) The product manufactured and marketed by the plaintiff under the trademark "ZANDU BALM"/"ZANDU" is less effective in providing effective relief from backache than the defendant's product "MOOV" and has been shown in bad light.

(b) The defendant No. 1's product is twice as effective as that of the plaintiff's product manufactured and marketed under the trade mark "ZANDU BALM"/"ZANDU" because it contains double the amount of active ingredients than that of the plaintiff's;

(c) In a given situation the product of the plaintiff manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU" is unable to give relief from pain to a person while on the other hand "MOOV" does the same easily and effectively. Such purported claim of the defendant is actuated by malice.

(d) The plaintiff's products manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU" is bad and is inferior in quality as compared to "MOOV" and as such is not a proper choice for countering backache.

(e) The product manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU" by the plaintiff is neither effective nor efficient and does not provide useful solution which is easily provided by "MOOV".

(f) The product manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU" is not a proper solution for countering backache and the same has been proved by comparing the effectiveness of the plaintiff's products with the defendants' product "MOOV".

(g) No useful purpose would be served by application of the product of the plaintiff under the trademark "ZANDU BALM"/"ZANDU" during backache and other pain and the same can only be cured by use and application of "MOOV"

(h) The bottle bearing green and white get up is shown in the advertisement which is intended and meant to be identified as the plaintiff's product, manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU" and by portraying such image in the advertisement of the defendant and by demonstrating that the product is not useful in curing of back pain and other diseases, the plaintiff's product under the trademark "ZANDU BALM"/"ZANDU" has been shown in bad light and the said predict has been ridiculed, defamed and disparaged and such act on the part of the defendants amounts to slander of the goods of the plaintiff, which is not permissible in law."

16. The plaintiff thus claims that the act of airing the impugned advertisement by the defendant has been actuated by malice and and/or malicious falsehood and/or injurious falsehood. The false and misleading statement in the voiceover causes loss and damage to the plaintiff and its goods marketed under the trade mark "ZANDU BALM"/"ZANDU". The impugned advertisement is being telecast all over India regularly and continuously and thus, the defendant No. 1 has been wrongfully denigrating the product of the plaintiff by way of continuously airing of the said advertisement in TV. Accordingly the instant suit was filed on the basis of the resumption of the impugned advertisement by the defendant after withdrawal of the earlier suit which according to the plaintiff gave fresh right to the plaintiff for filing a fresh suit on the renewed cause of action. Accordingly, this suit for infringement as well as disparagement of the plaintiff's product was filed against the defendant praying for perpetual injunction for restraining the defendant and/or their men and agents from causing infringement of the registered trade mark "ZANDU BALM"/"ZANDU" of the plaintiff by displaying and/or playing and/or distributing and/or telecasting and/or displaying the impugned advertisement developed by the defendant for "Moov", in any manner whatsoever and other advertisement which purports to disparage and/or defame the plaintiff and/or its product manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU" and/or otherwise in any manner whatsoever. Other incidental reliefs by way of prohibitory injunction in different forms have also been prayed for in the said suit. Mandatory order of injunction has also been sought for against the defendant for destruction of all electronic media CDs, DVDs, templates, posters, articles, device containing the impugned advertisement developed by the defendant for "MOOV", as shown in the storyboard annexed to the plaint. An enquiry into the loss and damages including special damages suffered by the plaintiff for the act of disparagement and/or defamation and/or slander and/or libel committed by the defendant in airing the impugned advertisement was also sought for with a prayer for passing a decree for such sum as may be found to be payable to the plaintiff upon such enquiry been made.

17. In such a suit the plaintiff filed an application for temporary injunction claiming identical interim injunction so that the defendant cannot air the impugned advertisement during the pendency of the suit. Ad interim relief in similar form was also prayed by the plaintiff in the said suit. The defendant No. 1 filed affidavit-in-opposition in connection with the plaintiff's application for injunction denying the material allegations made out by the plaintiff in its said application. Though an impression was sought to be given by the said defendant in the said affidavit that the defendant No. 1 has not disparaged and/or denigrated the plaintiff's product manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU" and/or the defendant's copyright over its packaging and/or artistic work as the defendant has not displayed either the packaging and/or artistic work which were registered by the plaintiff under the Trade Marks Act and/or Copyright Act in course of airing the said advertisement, but if the entire affidavit of the defendant is read particularly with reference to the averment made by it in paragraph 22 (XL), then it goes without saying that while airing the impugned advertisement the defendant has shown the design of the bottle which is exactly identical to the shape and colour of the bottle of the plaintiff which is registered under the Designs Act, 2000. If the sub-paragraphs of the said paragraph are read minutely then it will appear that in fact, both the container "MOOV" and the plaintiff's registered designed bottle were shown in the advertisement for the purpose of making a comparison of the product of the defendant No. 1 with the plaintiff's product for conveying a message to the public that the "MOOV" being the product of the defendant No. 1 is much more effective than the plaintiff's product as it contains double the active ingredients than that of the plaintiff's product, which according to the said defendant was done without disparaging and/or denigrating the plaintiff's product. A comparative chart about the ingredients used for production of the plaintiff's product and that of the defendant's product has also been mentioned in paragraph 16 of the said affidavit wherein it is mentioned that the plaintiff's product contains only two ingredients, namely, Mentha Ssp-Satva and Gaultheria Fragrantissima OL while in the defendants product four ingredients, namely, Mentha Virdis, Gaultheria Gragrantissima OL, Pinus Roxburghiand and Eucalyptus Globulus are used.

18. The said defendant thus claimed that since number of active ingredients which are used in the its product are double the number of ingredients used in the plaintiff's product, the defendant's product is much more effective in relieving pain quickly. Thus, according to the defendant, the impugned advertisement is not disparaging at all as the claims made in the said advertisement are truthful and permissible under law. The defendant, thus, claims that such truthful comparison is protected under Article 19(1)(a) of the Constitution as well as Section 29(8) and Section 30(1) of the Trade Marks Act 1999. The defendant categorically denied that the impugned advertisement developed by the defendant No. 1 shows that the intent of the commercial, the manner of the commercial and the story of the commercial, the message sought to be conveyed by the commercial speech at all aimed at disparaging, ridiculing and/or defaming the product of the plaintiff manufactured and/or marketed under the trademark "ZANDU BALM"/"ZANDU". The defendant also denied that by airing such advertisement, the plaintiff's goodwill and/or reputation has been injured in any manner whatsoever and as such it claims the plaintiff is not entitled to any damages and/or special damages and/or other reliefs which the plaintiff has claimed by way of injunction in the said suit. The dependant thus, prayed for dismissal of the plaintiff's application for temporary injunction.

19. Mr. Lall, learned counsel appearing for the dependant No. 1/appellant relied upon the following decisions of the Hon'ble Supreme Court, as well as of different High Courts to support his submission that the comparison of two products which is done in the impugned advertisement does not cross the permissible boundary of Article 19(1)(a) of the Constitution of India and Section 30 of the Trade Marks Act, 1999.

"(1) In the case of Tata Press Ltd. v. Mahanagar Telephone Nigam Limited & Ors. reported in : AIR 1995 SC 2438.

(2) In the case of Reckitt & Colman of India Ltd. v. Jyothi Laboratories Ltd. & Ors. reported in : (1999) 2 CALLT 230 (HC).

(3) Unreported decision of the Delhi High Court in the case of Dabur India Ltd. v. M/s. Colortek Meghalaya Pvt. Ltd. & Anr. FAO (OS) No. 625 of 2009

(4) In the case of Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd. reported in : 2006(32) PTC 307(Del)"

20. Besides citing the aforesaid decisions, Mr. Lall, has also drawn our attention to the provision contained in Article 19(1)(a) and Article 19(2) of the Constitution of India and the provision contained in Section 29(8) and Section 30 of the Trademark Act, 1990 to support his submission that honest comparison of truthful facts for promotion of one's products through advertisement is permissible inasmuch as such comparison is beneficial for the public at large as it helps them to select which one out of those products is more acceptable by the public. He contended that since the freedom of commercial speech is a fundamental right guaranteed under Article 19(1)(a) of the Constitution of India, exercise of such right cannot be prevented by way of injunction so long as it does not transgress its permissible limit as provided under Article 19 (1)(a) of the Constitution of India.

21. He further contended that though the shape of the plaintiff's goods could have been registered under Trade Mark Act and/or the Copyright Act but the plaintiff instead of registering the shape of its product under any one of those two Acts, registered the packaging, colour combination and the artistic mark under these two Acts. According to him, since the shape of the plaintiff's product is not registered under any of the said Acts, the plaintiff cannot complain of infringement of the plaintiff's trademark and copyright ownership for using a bottle of like design of the plaintiff. By referring to the pleadings of the plaintiff as well as the certificates of registration which are annexed to the plaint, Mr. Lall pointed out that only the packaging and or the colour combination and/or the artistic mark of "ZANDU BALM"/"ZANDU" were registered under the Trade Marks Act, and/or the Copyright Act. According to him, since neither the packaging of the plaintiff's product which was registered under the Trademarks Act nor the artistic mark "ZANDU BALM"/"ZANDU" over which the plaintiff is claiming its ownership under the Copyright Act, has been shown in the advertisement which was aired by the defendant No. 1, the plaintiff cannot complain of infringement of its Trademark and/or Copyright as such advertisement was aired for promoting its product "MOOV" by making honest and truthful comparison of its product with the product of the other leading company without disparaging and/or denigrating that product. He thus, argued that when the plaintiff has failed to prove that airing of such advertisement by the defendant No. 1 was actuated by malice to denigrate and/or disparage plaintiff's product and/or the plaintiff's trademark, according to him, in the present set of facts no relief can be granted to the plaintiff even by interim measure during the pendency of the suit. He thus invited this Court to vacate the interim order passed by the learned Trial Judge.

22. Mr. Chatterjee, learned Senior Counsel appearing for the plaintiff/respondent No. 1 refuted such submission of Mr. Lall by submitting that undisputedly the defendant No. 1, while airing the impugned advertisement made a comparison of its product "MOOV" with the product of plaintiff "ZANDU BALM"/"ZANDU" for sending a message to the public at large that the product of the defendant No. 1 "MOOV" is much more effective than the plaintiff's product as it contains twice the number of active ingredients than that of the plaintiff's product. Mr. Chatterjee, without disputing the proposition of law that under Article 19 (1)(a) of the Constitution of India, freedom of commercial speech is guaranteed as a Fundamental Right of the citizen, contended that Article 19(1) does not confer unfettered freedom of commercial speech, as exercise of such Fundamental Right is controlled by Article 19 (2) of the Constitution of India. He further submits that fair and truthful comparison between two products is permissible under Section 30 of the Trade Marks Act but such comparison should not be actuated by malice for conveying the message to the public that the product of the other company is not at all effective and should be discarded. He contended that if it is found that the comparison between two products is unfair and not truthful then such comparison should be stopped by way of injunction to prevent conveying a wrong message to the public and unless it is so done the public will be in a dilemma to select the best amongst those two comparable units shown in the advertisement. By showing the photographs and/or the video of the TV commercial, Mr. Chatterjee tried to impress upon us that the bottle which was displayed by the husband in his left hand is exactly identical with the bottle design of the product of the plaintiff, registered under the Design Act, 2000. He thus argued by referring to the pleadings of the defendant that in view of the stand taken by the defendant in its said affidavit, the defendant most probably can not deny that while airing the said advertisement the plaintiff's product was compared with the product of the defendant No. 1 in order to promote the sale of the defendant's product by conveying a message to the public that the defendant's product is much more effective than the plaintiff's product, as the defendant's product contains double the number of ingredients than that of the plaintiff's product.

23. Mr. Chatterjee further submits that though while airing this advertisement it is mentioned in the script that "do guna number of active ingredients" are used in the defendant's product than that of the plaintiff's product but in the voiceover "double the number of active ingredients" was not mentioned. Mr. Chatterjee further submitted that for establishing that the defendant made fair comparison on truthful basis, the defendant must prove that in fact, the additional ingredients which are used for production of the defendant's product, are really active ingredients which are more effective for reducing headache, backache or cold rapidly than that of the plaintiff's product or alternatively for not using those two additional ingredients in the plaintiff's product, the plaintiff's product became ineffective in reducing headache, backache and cold.

24. He thus contended that unless the defendant succeeds in proving that these two additional ingredients which are used in the defendant's product are really active ingredients for giving quick relief of pain, the comparison which the defendant made in the said advertisement cannot be accepted as a fair and truthful comparison. He thus, concluded by submitting that if a comparison is not fair and truthful and is found to have been actuated by malice to denigrate and disparage the product of the plaintiff then certainly injunction should be passed. Mr. Chatterjee ultimately supports the order of injunction, passed by the learned Trial Judge by relying upon the decision of this Hon'ble Court in the case of Hindustan Unilever Ltd. Reckitt Benckiser (India) Ltd. reported in : 2014(2) CHN (CAL) 1 which was also affirmed in appeal by the Division Bench of this Hon'ble Court in the case of Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. reported in 2014 CHN (CAL) 5277. He has also relied upon a decision of the Hon'ble Supreme Court in the case of Midas Hygiene Industries (P) Ltd. & Anr. V. Sudhir Bhatia and Ors. reported in : (2004)3 SCC 90 wherein it was held that in case of infringement, either of trademark or of copyright, normally an injunction must follow, as grant of injunction becomes necessary when it prima facie appears that the adaptation of the mark was itself dishonest.

25. Relying upon the said decision of the Hon'ble Supreme Court Mr. Chatterjee invited us not to interfere with the impugned order.

26. Let us now consider the submissions of the learned Counsel of the respective parties in the facts of the instant case. Reading the pleadings of the respective parties, particularly the averments made by the defendant No. 1 in its affidavit in paragraph 22(XL), we have no hesitation to hold that the plaintiff's product was shown while airing the said advertisement by the defendant No. 1 for comparing its product with the plaintiff's product to send a message to the public that its product is much more effective than the plaintiff's product as the defendant's product contains twice the number of active ingredients than that of the plaintiff's product and as such the plaintiff's product is acceptable as a quick pain reliever.

27. Undisputedly the plaintiff's product is manufactured and marketed under Trademark "ZANDU BALM"/"ZANDU" its packaging colour combination and its artistic work "ZANDU BALM"/"ZANDU" are also registered under the Copyright Act. The design of the bottle shape and the colour combination i.e., predominantly green with a white border with green cap has also been registered under the Designs Act. It clearly appears from the affidavit filed by the defendant that the defendant No. 1 by airing the said advertisement was seeking to promote its product admittedly by making a comparison of its own product "MOOV" with the plaintiff's product which is manufactured and marketed under the trademark "ZANDU BALM"/"ZANDU", for conveying a message to the public that its product is much more effective than the product of the plaintiff as it contains twice more active ingredients than that of the plaintiff's product.

28. Let us now examine as to whether exercise of such freedom of "commercial speech" has transgressed the border line of Article 19(1)(a), of the Constitution in the light of the provision contained in Article 19(2) of the Constitution of India.

29. Article 19(1) of the Constitution of India no doubt guarantees the freedom of commercial speech but exercise of such Fundamental Right guaranteed under Article 19(1)(a) of the Constitution of India is subject to the limitation prescribed under Article 19(2) of the Constitution of India. While considering the case of Tata Press Television Nigam Ltd. & Ors. (supra), the Hon'ble Supreme Court considered the aforesaid provisions of the Constitution of Indian and held as follows:--

"Paragraph 22

"Advertising as a "commercial speech" has two facets. Advertising which is no more than a commercial transaction nonetheless dissemination of information regarding the product advertised. Public at large is benefited by the information made available through the advertisement in a democratic economy tree. How of commercial information is indispensable. There cannot be honest and economical marketing by the public at large without being educated by the information disseminated through advertisement. The economic system in a democracy would be handicapped without there being freedom of "commercial speech" in rotation to the publication and circulation of newspapers, this Court in Indian Express Newspaper's Case : [1986) 159 ITR 856(SC) Sakal Paper's case : [1962] 3 SCR 842 and Bennet Coleman's Case : [1973] 2 SCR 757 has authoritatively held that any restraint of curtailment of advertisement would affect the Fundamental Right under Article 19(1)(a) on the aspects of propagation, publication and circulation".
Paragraph 23

Examined from another angle, the public at large has a right to receive the "commercial speech". Article 19(1)(a) not only guarantees freedom of speech and expression, it also protects the rights of an individual to listen, read and receive the said speech. So far as the economic needs of a citizen are concerned, their fulfilment as to be guided by the 'information disseminated through the advertisements. The protection of Article 19(1)(a) is available to the speaker as well as the recipient of the speech. The recipient of "commercial speech" may be having much deeper interest in the advertisement that the businessman who is behind the publication. An advertisement giving information regarding a life saving drug may be of much more importance to general public to the advertiser who may be having purely a trade consideration.
Paragraph 24

We therefore, hold that "commercial speech" is a part of the freedom of speech and expression guaranteed under Article 19(1)(a) of the Constitution.
Paragraph 27

Right to freedom of speech and expression guaranteed under Article 19(1)(a) of the Constitution can only be restricted under Article 19(2) .........." -In paragraph 17 of the said judgment the Hon'ble Supreme Court stated as follows:--
Paragraph 17

"Unlike the First Amendment under the United States Constitution, our constitution itself lays down in Article 19(2) the restrictions which can be imposed on Fundamental Right guaranteed under Article 19(1)(a) of the Constitution. The "commercial speech" which is deceptive, unfair, misleading and untruthful would be hit by Article 19(2) of the Constitution and can be regulated/prohibited by the State."
30. The Division Bench of this Hon'ble Court while deciding the case of Rekitt Colman of India Ltd. v. Jyothi Laboratories Ltd. & Ors. (supra) held by referring to the decision of the Hon'ble Supreme Court in Tata Press Ltd. V. Manager Television Nigam Ltd. reported in : AIR 1995 SC 2438 that Constitution Guarantees the Fundamental Right to freedom of "commercial speech" but the Right to Freedom of Speech is not an unrestricted one as it is controlled by Article 19(2) of the Constitution. It was held therein that using words with the knowledge that the words are false or inaccurate is evidence of malice. While interpreting the provision contained in Section 30 of the Trade Marks Act, 1999 a learned Single Judge of this Hon'ble Court in his judgment delivered in the Hindustan Reckitt Benckiser (India) Ltd. reported in : 2014(2) CHN (CAL)1 held as follows:--

"Paragraph 58

"A trader is permitted to compare his goods with those of another trader. He can make this comparison by highlighting the qualities and efficaciousness of his goods without stating or commenting on the qualities and efficaciousness of his rival's goods. Take the example of Reckitt lauding its product, Dettol and at the same time showing the mark of the product VIM in the advertisement without making any comment on it. They are permitted to do so (See Timothy White v. Gustav Mellin and Reckitt & Colman of India Ltd. v. M.P. Ramchandran & Anr. reported in : 1999 (19) PTC 741. See also the case of Heinz India v. Glaxo Smithkline reported in 2009 (2) CHN 179)".
Paragraph 59

"This is a kind of comparative advertisement conceptualised in section 30 of the Trade Marks Act, 1999. But the provision warns that such depiction shall not, inter alia, be unfair or detrimental to the "repute" of the trademark. (See Lorreal SA v. Belhre NV [2010] RPC 23) in other words the reputation of the goods cannot be lowered. Moreover the use of the mark has to be honest. (See 307 Barclays Bank Pic v. RBS Advanta reported in [1996] R.P.C 307)".
Paragraph 63

Hence, a trader should not be permitted to advertise facts, data, figures, deficiencies etc. of the products of another, especially a rival, directly or indirectly by an innuendo. This is so, because, one must presume a constant bias in the mind of such a trader towards his rival. When one presumes this constant bias, one would expect that the representations that are made, seriously about a rival's product are bound to be false, misleading, unfair or deceptive. This is more so because one is not in a proper position to make an impartial appraisal of a rival's product.
Paragraph 64

Madan B. Lokur, J in Dabur India Ltd. v. Wipro Limited reported in : 2006(32) PTC 677 (Del) accepted the proposition that if a trader claimed his product to be superior directly or indirectly he had to claim his rival's product to be inferior. But it is the degree of defamation which mattered. The person aggrieved should not be too sensitive in these matters. This decision is about puff tolerance levels being within reasonable limits."
31. The Division Bench of our High Court in the case of Hindustan Unilever Ltd. v. Procter & Gamble home products Ltd. reported in : 2010 (43) PTC 460 held that mere puffing of one's product is not expected to be taken seriously by the public watching the advertisement but the advertisement ceases to be a mere puff when the advertisement claims that what is stated in the advertisement is correct. It was further held therein that in such circumstances the advertisement makes an assertion on behalf of the advertiser and does not remain mere puff.

32. Keeping in mind the aforesaid principles laid down by the Hon'ble Supreme Court, as well as various High Courts including our High Court we will have to examine as to whether the comparison which was made by the defendant No. 1 between its own product "Moov" and the plaintiff's product which is manufactured and marketed under the trademark under the trademark of "ZANDU BALM"/"ZANDU" is a fair and truthful comparison or not. The defendant in its affidavit in paragraph 16 thereof depicted a comparative chart regarding the ingredients used in the defendant's product and the ingredients used in the plaintiff's product to justify that such comparison was fair as it was made on truthful basis. Paragraph 16 of the said affidavit is thus, set out hereunder.

"Paragraph 16

"Furthermore the advertisement of the defendant contains truthful representation of facts. It is a fact that the defendants "MOOV" has twice the number of active ingredients when compare to other balms in particular the plaintiff's balm. The comparison of the active ingredients in to products is shown hereinbelow.



On account of the above, the defendant claimed that the impugned advertisement is truthful and this is protected by Article 19(1)(a) of the Constitution of India.

33. We have mentioned above that though in the advertisement it is mentioned that the defendant's product contains two times more the number of active ingredients versus leading balm as per Nielsen o2, 2014 and a symbol is shown onscreen with "2X" in the middle and "more active" on top and "ingredients" in the bottom, but in the voiceover the number of active ingredients was not uttered while airing the said advertisement. From the Video of the commercial display we find that the husband arrived at the conclusion that "MOOV" is better than the plaintiff's product "ZANDU BALM"/"ZANDU" as it contains two times more active ingredients than the plaintiff's product. It is thus clear that the said conclusion was drawn by the husband as more active ingredients were used in the product of the defendant No. 1 than that of product of the plaintiff. It is not a case of the defendant that simply because some additional ingredients are used in the defendant's product, the product of the defendant No. 1 is more effective and active than the plaintiff's product in giving quick relief to pain. On the contrary, it is the definite case of the defendant that the additional ingredients which are used in the defendant's product are "active". We use the expression "active" in bold letter to lay emphasise on it. The expression "active" carries some meaning which we cannot overlook. In our understanding, "active" means effective ingredients which contribute largely in reducing pain i.e., backache, quickly. Since the defendant claims that the additional ingredients are effective, it is for the defendant to establish that those additional ingredients are really effective enough to reduce pain quickly or alternatively since those ingredients are not used in the plaintiff's product, the plaintiff's product is comparatively less effective than the defendants product. No expert opinion has been submitted by the defendant to substantiate its claim that the two additional ingredients which are used in the product of the defendant No. 1 are active ingredients which really contribute in reducing the pain faster than the plaintiff's product. In the absence of the expert opinion, it is not possible for the Court to come to the ultimate conclusion as to the effectiveness of those two additional ingredients which are used in the product of the defendant No. 1. But considering the nature of those two additional ingredients which are tarpene oil and eucalyptus oil we are of the prima facie view that those are not active ingredients which may contribute to reducing pain and backache quickly. When the defendant No. 1 states that comparison which is made while airing the advertisement with the plaintiff's product is fair and truthful, it was the duty of the defendant No. 1 to substantiate such contention by submission of expert's opinion, which the defendant has failed do.

34. Since no prima facie proof regarding the truthfulness in such comparison is forthcoming from the side of the defendant No. 1, we have no hesitation to hold that such comparison was in effect, actuated by malice to disparage and/or denigrate the product of the plaintiff by conveying a wrong and deceptible message to the public about the effectiveness of the plaintiff's product for which the plaintiff's product should be discarded and the product of the defendant No. 1 should be preferred over the plaintiff's product.

35. We have seen the storyboard and observed the video of such advertisement repeatedly. We find that the comparison made between these two products is not fair and healthy, because correct information about those two products are not conveyed to the public by the impugned advertisement. We may say that by making such comparison, a wrong information about the usefulness of the ingredients of those two products in reducing pain, is sent to the public.

36.

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In this context we are required to consider as to whether such comparison amounts to disparaging the plaintiff's product and/or affects the reputation of its trademark and/or copyright. The New International Webster's Comprehensive Dictionary defines "disparaging/disparagement" to mean "to speak of slightingly under value, to bring discredit or dishonor upon, to act of depreciating, derogation, a condition of low estimation or valuation, a reproach, disgrace, an unjust classing or comparison with that which is less worth and degradation." 37. The Division Bench of Delhi High Court in Pepsi Co Inc. & ors v. Hindustan Coca Cola Ltd. reported in 2014 (3) CHN (CAL) 527 held that certain factors have to be kept in mind while deciding the question of disparagement. These factors are : (1) intent of the commercial (2) manner of the commercial and (3) storyline of the commercial and the message sought to be conveyed. 38. By applying these three tests, let us consider as to whether the plaintiff's trademark and/or its product was disparaged by the impugned advertisement or not. 39. We have already held that the comparison was not fair and truthful, as the advertisement sent a message to the public that the products of the defendant No. 1 contains twice the more number of active ingredients than the plaintiff's product without explaining even in the voiceover as to whether those two additional ingredients are at all active in reducing pain rapidly or not. The expression "active" used in the said advertisement cannot be lightly accepted. Active has a meaning. It means effective. Does any one of these two additional ingredients play any role in reducing pain effectively and rapidly. Excepting the mere assertion made in the affidavit-in-opposition that these additional ingredients are active ingredients, which is denied by the plaintiff in its reply, the defendant has not produced any authentic opinion of any expert to support such assertion in its pleadings. Simultaneously we find that an impression is sent to the public that since these ingredients are absent in the plaintiff's product, it is less worthy than the defendants' product and by showing that the woman in the commercial chooses the defendant's product amounts to bringing discredit on the plaintiff's product. 40. This unhealthy comparison, in our prima facie view, amounts to disparagement of the plaintiff's product and its trademark and copyright. 41. Since a vast majority of the viewers of commercial advertisements aired very frequently through electronic media, are influenced by visual advertisement, we feel that the learned Trial Judge rightly passed the impugned order. 42. In our considered view, this type of comparison is not protected under Article 19(1)(a) of the Constitution of India as it surpasses the permissible limit. Here such advertisement is hit by the restrictive clause under Article 19(2) of the Constitution. Similarly, we also cannot hold that such comparison of the plaintiff's product with the product of the defendant's No. 1 is fair and/or is based on truth and thus, protected under Section 30 of the Copyright Act. In the facts of the circumstances as stated above we do not find any justifiable reason to interfere with the impugned order. 43. We thus, confirm that the impugned order which was passed by the learned Trial Judge will continue till the disposal of the suit. 44. The appeal thus, stand dismissed. 45. It is thus, made clear that while disposing of this appeal we have not entered into the merit of the revisional application filed by the appellant for challenging the legality of the first part of the impugned order by which the plaintiff's application under order 7 Rule 11 of the code of Civil Procedure was rejected. The said revisional application thus, will be disposed of independently without being influenced by the order passed hereinabove. 46. The appeal is thus, disposed of. 47. Urgent Photostat certified copy of this order, if applied for, be given to the parties as expeditiously as possible. Debi Prosad Dey, J. I agree. Jyotirmay Bhattacharya, J. Later After delivery of the judgment, the learned advocate appearing for the appellant prays for stay of operation of the order passed by this Court today. Such prayer for stay is opposed by the learned advocate appearing for the plaintiff/respondent. Since the injunction order is operating against the defendant No. 1/appellant since 28th May, 2015 uninterruptedly, this Court refuses to allow the appellant's prayer for stay as grant of such stay will make the injunction order ineffective and thereby the appellant will be permitted to resume telecasting of the impugned advertisement which will cause injustice to the respondent. Since the appeal is disposed of in the manner as aforesaid, no further order need be passed on the application being CAN 5406 of 2015. The application being CAN 5406 of 2015 is thus, deemed to be disposed of. Urgent Photostat certified copy of this order, if applied for, be given to the parties as expeditiously as possible Debi Prosad Dey, J. I agree.
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