Dabur India Ltd v. Wipro Limited, Bangalore

Madan B. Lokur, J.

1. IA No. 608/2006 is an application filed by the plaintiff under Order 39 Rules 1 and 2 of the CPC in which it has prayed for an injunction restraining the defendant from telecasting the impugned Wipro Sanjivani Honey TV commercial during the pendency of the suit.

2. By an ad interim ex parte order dated 19th January, 2006, the injunction as prayed, was granted.

3. The defendant has since filed IA No. 2042/2002 for vacating the ad interim ex parte injunction. Both these applications are being disposed of by a common order.

4. The plaintiff is a manufacturer of a wide range of pharmaceuticals, toiletries and medicinal preparations including Ayurvedic medicines and formulations. The products of the plaintiff are marketed under its registered trade mark Dabur.

5. One of the products manufactured by the plaintiff is Dabur Honey. According to the plaintiff it has an annual turn over of about Rs. 50 crores in respect of this product and promotional expenses in this regard are to the tune of about Rs. 3.4 crores.

6. The plaintiff says that its honey is sold in bottles of various sizes and it has acquired a design registration of its bottle under the provisions of the Designs Act and this bears Design No. 177843 with effect from 1998. The plaintiff says that it has a market share of more than 50% in branded honey.

7. The defendant also manufactures and markets honey under its brand name Wipro Sanjivani. According to the plaintiff, the defendant started airing a TV commercial in respect of its product with a view to disparage and denigrate the plaintiffs product. Of course, it is not possible to precisely indicate the details of the commercial but according to learned Counsel for the plaintiff the total visual impact and the voice over of the commercial are important as are the first few frames in which one Mrs. Paradkar is shown holding a bottle of honey, which is in fact the plaintiffs bottle (without the label) and the voice over is to the effect that the bottle was purchased two years ago but it has remained the same (jaisi ki waisi). In comparison one Mrs. Rao purchased Wipro Sanjivani Honey, which got consumed almost immediately. The plaintiff has annexed as Schedule I to the plaint relevant photographs of the commercial and learned Counsel for the defendant has shown the commercial to learned Counsel for the plaintiff as well as to me on a CD.

8. Learned Counsel for the plaintiff submitted that a consumer will recognise the bottle of honey with Mrs. Paradkar as that of the plaintiff because of its distinctive shape and size for which it holds a design registration. Consequently, an unwary consumer watching the TV commercial is likely to be misled into believing that the product, shown in the commercial in poor light, is the product of the plaintiff. It was submitted by learned Counsel that the law does not require the product of the plaintiff to be directly disparaged but even a disparaging insinuation is enough reason to injunct the defendant.

9. Learned Counsel for the defendant refuted the submissions of learned Counsel for the plaintiff.

10. During the course of hearing of the injunction application on 14th, 16th, 17th and 20th March, 2006, learned Counsel for the defendant stated that in the commercial, in connection with the honey purchased by Mrs. Paradkar, his client is prepared to delete the reference to the two year period for which the honey was not consumed and replace it with an unspecified period. This concession on the part of the defendant was not acceptable to learned Counsel for the plaintiff.

11. Learned Counsel for the parties referred to several judgments on the subject, the first of them being a decision of the Calcutta High Court in Reckitt and Colman of India Ltd. v. M.P. Ramachandran and Anr., 1999 PTC (19) 741. In that decision, the law on the subject is stated as follows:

(a) A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue.

(b) He can also say that his goods are better than his competitors, even though such statement is untrue.

(c) For the purpose of saying that his goods are the best in the world or his goods are better than his competitors he can even compare the advantages of his goods over the goods of others.

(d) He, however, cannot, while saying that his goods are better than his competitors, say that his competitors goods are bad. If he says so, he really slanders the goods of his competitors. In other words, he defames his competitors and their goods, which is not permissible.

(e) If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.

12. What is really relevant for the present purposes are conclusions (d) and (e) mentioned above, which effectively mean that an advertiser can say that his goods are better than his competitors but he cannot say that his competitors goods are bad because that would amount to slandering or defaming the competitor and its goods, which is not permissible. But if there is no derogatory reference at all to the goods or to the manufacturer, no action lies against that advertiser. In that case, the High Court concluded that in the advertisement, the competitors product was stated to be of an inferior quality.

13. The decision of the Calcutta High Court was followed by a learned Single Judge of this Court in Reckitt and Colman of India Ltd. v. Kiwi T.T.K. Ltd., 63 (1996) DLT 29 [LQ/DelHC/1996/447] =1996 PTC (16) 393. It was held that the general principle is that the Courts will injunct an advertiser from publishing or circulating an article if the dominant purpose is to injure the reputation of the plaintiff. An advertiser is not entitled to say that his competitors goods are bad so as to promote his goods. If an action lies for defamation, an injunction may be granted. It was further held that though a comparative advertisement is permissible, the same shall not, in any manner, be intended to disparage or defame the product of the competitor.

14. The decision of the learned Single Judge was carried in appeal and by an order dated 23rd September, 1996, the Division Bench expressed the opinion that the advertisement was prima facie disparaging to the Plaintiffs product. The advertisement may proclaim that the advertised product is the best in the market but it cannot be permitted to condemn the other products available in the market. On 12th July, 2001, since there was no appearance on behalf of the appellant, the appeal was dismissed.

15. In Dabur India Ltd. v. Emami Limited, 125 (2005) DLT 502 [LQ/DelHC/2005/1679] =2004 (29) PTC 1 (Delhi), the offending voice over of the advertisement, as translated into English, was forget Chyawanprash in summers, eat Amritprash instead (Garmion mein Chyawanprash bhool jao, Himani Sona Chandi Amritprash khao). In that case, the learned Judge held that in the advertisement there is an insinuation against using of Chyawanprash during the summer months and since Chyawanprash in its generic sense is being disparaged, the plaintiff therein being a manufacturer of Dabur Chyawanprash is also being disparaged.

16. Similarly, in Dabur India Ltd. v. Colgate Palmolive India Ltd., 115 (2004) DLT 667 [LQ/DelHC/2004/1152] =2004 (29) PTC 401 (Delhi), the competing products were Lal Dant Manjan tooth powders. The advertisement showed a cine star stopping purchasers of Lal Dant Manjan powder and informing them of its ill effects by rubbing it on a pair of spectacles. The rubbing process left marks on the spectacles, which were termed as akin to sandpapering. As against this, the advertisers product was endorsed as 16 times less abrasive and non-damaging to the spectacles. The cine star is heard telling the purchaser that it is easy to change spectacles but not the teeth. This was held to be disparaging the plaintiffs product and an injunction was granted against airing the advertisement. The learned Single Judge reiterated the principle that while praising its product, an advertiser cannot describe the competitors product as inferior, thereby damaging its reputation.

17. Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr., 2003 (27) PTC 305 (Delhi) (DB), was a case decided by the Division Bench of this Court in which it held that to decide the question of disparagement, the following factors have to be kept in mind

(i) intent of the commercial;

(ii) manner of the commercial;

(iii) story line of the commercial and the message sought to be conveyed by the commercial.

18. After considering the offending advertisement in its entire perspective, the Division Bench held that the message conveyed by the advertisement disparages the product of the competitor.

19. Learned Counsel for the defendant did not dispute the conclusions arrived at in these decisions to the extent that an advertiser cannot disparage the goods of its competitor and hope to get away with it. However, while relying upon Reckit Benckiser (India) Ltd. v. Naga Ltd. and Ors., 104 (2003) DLT 490 [LQ/DelHC/2003/54] =2003 (26) PTC 535 (Delhi), it was submitted that if an advertiser makes a consumer aware of the truth, there is nothing wrong with it. The reason for this is that a party cannot be held liable for libel when all that has been stated is the truth, which is a complete defence against any assault or challenge regardless of whether any damage is sustained as a result of it. Presently, I am not really concerned with the truth or otherwise of the contents of the offending advertisement this is a matter that will have to be considered (if it at all arises) at the stage of trial but until then the defendant cannot be allowed to go on defaming the plaintiff on its submission that what it is saying is the truth.

20. Learned Counsel for the defendant relied upon Tata Press Ltd. v. Mahanagar Telephone Nigam Ltd., AIR 1995 SC 2438 [LQ/SC/1995/754] to contend that advertising is commercial speech and it is, therefore, protected by Article 19 (1) (a) of the Constitution. While this may be so, freedom of speech and expression does not permit defamation and I think it would be a little far-fetched to say that an advertiser has the liberty to disparage the product of its competitor without any check, under the garb of freedom of speech.

21. Under these circumstances, applying the law enunciated by the Calcutta High Court and consistently followed by this Court, as well as the factors that the Division Bench says should be kept in mind, it is necessary to consider the overall audio-visual impact of the advertisement.

22. 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 disparage the product of the plaintiff it merely compares the two brands of honey and proclaims that the product of the defendant is superior. It seems to me that it is one thing to say that the defendants product is better than that of the plaintiff and it is another thing to say that the plaintiffs product is inferior to that of the defendant. The commercial clearly intends to say (and so it does) that as compared to the product of the plaintiff, the product of the defendant is far 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, as accepted by this Court, 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.

23. In comparative advertising, a consumer may look at a commercial from a particular point of view and come to a conclusion that one product is superior to the other, while another consumer may look at the same commercial from another point of view and come to a conclusion that one product is inferior to the other. Disparagement of a product should be defamatory or should border on defamation, a view that has consistently been endorsed by this Court. In other words, the degree of disparagement must be such that it would tantamount to, or almost tantamount to defamation. In the present case, 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.

24. Learned Counsel for the defendant objected to the use of the bottle of Dabur Honey, which is its registered design and submitted that the use of this bottle in the commercial leaves no manner of doubt that the product sought to be compared by the advertiser is Dabur Honey. While this may be so, the bottle of Dabur Honey is shown for a fleeting moment and this is immediately followed by another unnamed and undisclosed brand of honey whose bottle cannot even be located. In other words, the idea behind the commercial is that Wipro Sanjivani Honey is better than any other honey in the market and even if the insinuation is that it is better than Dabur Honey, there is nothing wrong in the defendant saying so as long as there is no disparagement (in the sense of defamation) of the product of the plaintiff. This disparagement is lacking in the commercial.

25. A manufacturer of a product ought not to be hypersensitive in such matters. It is necessary to remember that market forces are far stronger than the best advertisements. If a product is good and can stand up to be counted, adverse advertising may temporarily damage its market acceptability, but certainly not in the long run.

26. On an anxious consideration of the commercial, I do not find anything disparaging in it and, therefore, dismiss the application for injunction.

27. It may be noted that learned Counsel for the defendant stated that his client would be agreeable to delete the voice over having reference to two years in the second frame of Schedule I to the plaint. The defendant will be bound by this statement made on its behalf and is now free to air the commercial Wipro Sanjivani Honeywith the above modification.

28. The injunction is vacated and both applications are disposed of. No costs.

29. Needless to say, any finding given is only for the purposes of disposal of the applications and will not bind the parties in the trial of the case.