Reckitt & Colman Of India Limited v. Kiwi T.t.k.limited

S.K. Mahajan, J.

1. The plaintiff company is engaged in manufacture and sale of consumer products and one of the products of the plaintiff is liquid shoe polish being manufactured and marketed by them under the name and style of Cherry Blossom Premium Liquid Wax Polish. Shoe polish in the liquid form is stated to have been introduced by the plaintiff about 10 years back and it comprises of natural wax available, namely, Carnauba wax allegedly being imported from Brazil for purposes of making this polish. Defendant is also engaged in the manufacture of polish and one of the brand being manufactured and marketed by the defendant is KIWI brand of liquid polish. It is alleged that the liquid polish being marketed by the defendant and some other manufacturers have much less wax contents and more acrylic contents as compared to the liquid polish of the plaintiff. The acrylic base allegedly tends to form a film on the footwear which over a period of rime is liable to crack and thus damage the footwear. It is, therefore, stated that the liquid polish of the plaintiff having wax rich formula is better than the other polishes. The liquid polish of the plaintiff is sold and marketed in angle neck bottles which is alleged to have easy application of the polish to the footwear. An imported applicator is alleged fitted on to the bottle which is strengthened by chemical flocking on the surface as also by riveting the sponge on to the plastic applicator base. The plaintiff has claimed its product to be superior than the similar product of the other competitors in every respect and it is stated that the plaintiff has 68% market share of the liquid shoe polish whereas the defendant has only 20% of such share.

2. The defendant with a view to promote its product is displaying an advertisement through the electronic media. The advertisement of the defendant shows a bottle of KIWI from which the word KIWI is written on white surface which does not drip as against another bottle described as OTHERS which drips. The product shown to have been flowing from the bottle of OTHERS is from a bottle marked Brand X and allegedly looks like the bottle of the liquid shoe polish of the plaintiff for which the plaintiff allegedly has a designed registration granted in 1993 under design No. 165756. The bottle of OTHERS marked Brand X also has a red blob on its surface which allegedly represents CHERRY which appear on the bottle of the plaintiffs product. Besides the advertisement in the electronic media, defendant had also been circulating a point of sale poster material at shops and marketing outlets selling similar products. It is alleged that in the said poster material circulated by the defendant, the bottle shown as OTHERS with a faulty applicator allegedly resembles the applicator of the plaintiff.

3. That being aggrieved by the aforesaid advertisement of the defendant in the electronic media as well as Point of Sale poster material at the marketing outlets, the plaintiff has filed the present suit for an injunction restraining the defendant from advertising the products in the manner they had been doing.

4. The averments made in the plaint are that the said advertisement in the electronic media as well as circulation of Point of Sale poster material is clearly designed to malign the product of the plaintiff. In the said advertisement, the defendant claims that its product has more wax than any other liquid polish. The said claim of the defendant is alleged to be completely false and it is alleged in the plaint that the defendant by the said advertisement has been making a false claim that its product does not drip but the products of OTHERS (Brand X) do drip. The case of the plaintiff, therefore, is that in case the advertisement is allowed to be circulated in the electronic media or by circulation of Point of Sale posters, the same shall not only damage the plaintiffs market share but would also cause irreparable loss to its reputation, goodwill, brand, equity, etc. The advertisement is also stated to be defamatory and malicious and is bound to create an adverse impact upon the consumers. The plaintiff, therefore, contends that the defendant cannot be allowed to disparage the goods of the plaintiff by issuing the impugned advertisements. Along with the suit, an application under Order 39, Rules 1 and 2 CPC has been filed for ad interim order of injunction restraining the defendant from displaying the impugned advertisements and issuing Point of Sale posters till the decision of the suit. By this order, I am disposing of this application of the plaintiff for the grant of ad-interim injunction.

5. The defendant has filed a counter affidavit by way of written statement and it is alleged that there is nothing disparaging or defamatory conveyed through the said advertisements against the plaintiff, as no reference whatsoever has been made to Cherry Blossom Premium Liquid Wax Polish in any of the advertisements in question. In the alternative, it is suggested by the defendant that even if a reference in the advertisement can be related to the plaintiff, there was nothing unlawful about the statement made by the defendant in the said advertisement as it was a true statement of fact and substance and, according to the defendant, no injunction can be granted against the said defendant. It is alleged that defendant had not made any false or misleading statement for the following reasons:

(a) The claim made by the defendant is that KIWI has more natural wax than any other brand or liquid shoe polish. KIWI is richer and thicker and gives you better shine.

(b) It is correct that more natural wax leads to better shine.

(c) It is correct that KIWI liquid shoe polish has 2.07% of more natural wax than CHERRY liquid shoe polish.

(d) The laboratory test establishes that viscosity of KIWI Classic Instant liquid shoe polish is 3.9 centistockes as compared to 2.8 centistockes of CHERRY liquid shoe polish.

6. It is stated that the defendant had introduced its KIWI liquid shoe polish in 1993 and the monopoly which the plaintiff had in the said polish prior to the introduction of the defendants liquid shoe polish, started diminishing substantially in the liquid polish segment. It is alleged that prior to the introduction of angular neck container by the defendant in 1993, plaintiff was marketing shoe polish in a cylindrical form container without the angular neck and it is, therefore, alleged that it is the plaintiff who has copied the defendants concept of angular neck and not the vice-versa. It is stated that the facts stated in the advertisement have been duly confirmed by the evidence based upon analytical laboratory reports alleged to have been obtained by the defendant. It is further alleged that unsaphonifiable matter due to presence of hydrocarbon based synthetic waxes is higher in CHERRY polish by 2.07% compared to the KIWI polish which ultimately results in the presence of natural wax higher in the case of KIWI by about2.07%. It is further stated that similar advertisement campaigns are carried on by the defendants associate companies in other countries such as Indonesia, Spain, etc. without any objection or demur and the advertisement in question is only a natural extension to India. Moreover, it is stated that the advertisement in question is in conformity with the normal practice of competitive/ comparative advertising followed in the advertising field. Some of the illustrations of the competitive/comparative advertisements ;have been given as in the cases of Rin v. Ariel, Captain Cook v. Tata Salt, Pepsi v. Coke, etc. It is stated that defendant has got the container specially manufactured for being shown on the electronic media which is not identical to any liquid shoe polish containers in the market. The container of OTHER manufacturer appears in the commercial for a fleeting moment and could not possibly be identified or noticed for its details pertaining to its design, contours, brand or wax and the same, therefore, could not be identified with the plaintiffs product; that the plaintiffs Cherry Blossom Liquid Shoe Polish container is not shown in the advertisement and, therefore, it is alleged that the advertisement being wholly educative in nature, defendant had every right to exhibit its quality and characteristics of its product and the same cannot be said to be disparaging or defamatory to the plaintiff nor can it be said to be an exaggeration of the quality of the product of the defendant.

7. At the outset, however, the defendant has agreed to withdraw the Point of Sale posters which were circulated at the retail outlets and the markets and has also agreed to delete the red blob on the surface of Brand X which, according to the plaintiff, represent the Cherry on the bottle of the plaintiffs products. With the withdrawal of the Point of Sale posters and the deletion of the red blob on the surface of Brand X, allegedly representing the Cherry appearing on the bottle of the plaintiff, the question which remains to be considered is whether the bottle which is shown in the commercials in the electronic media can still be said to resemble the bottle of the liquid shoe polish of the plaintiff and circulation of the said commercial is an attempt on the part of the defendant to disparage and defame the product of the plaintiff so as to restrain the defendant from circulating the said advertisement in the electronic media.

8. At the outset, Mr. V.P. Singh, Sr. Advocate, appearing on behalf of the plaintiff expressed the willingness of the plaintiff to undergo any chemical test to prove that the product of the plaintiff had more natural wax than the defendants product. According to him, Carnauba is the hardest wax and is four times costlier than Montana, which is used by the defendant and Montana is used only as a substitute for Carnauba. The contention, therefore, is that the defendant is totally misrepresenting the consumer that it has more natural wax than the product of the plaintiff and this representation, according to him, is wholly derogatory and disparaging to the product of the plaintiff. According to him, the liquid polish bottle is not a writing instrument and the intention of the defendant in writing with the bottle is, therefore, totally mala fide. According to him, humour in advertisement is totally different than the derogation of the product by the competitor.

9. The contentions of the plaintiff would naturally have a force in case the advertisement of the defendant represents to the general public that its products are superior to those of the plain tiff not only for the reason that it had more natural wax but also on account of its other qualities. The question is whether the product which has been shown as others is a product of the plain tiff or can make the general public believe that this product belongs to the plain tiff or in any way can be connected with it. Incase, the advertisement can be related to the product of the plain tiff or in any case has a reference to it, may be that a case is made out for injunction against the defendant The general principle, in my opinion, is that the Courts will injunct the defendant from publishing or circulating an article if the dominant purpose is to injure the reputation of the plaintiff.

10. Mr. Singh has placed reliance upon an unreported judgment delivered on 19th February, 1996 in suit No. 31/96, Reckttt & Colman v. M.S. Ramachandran and Another, in support of his contention that the defendants have not only disparaged the products of the plaintiff but also have tried to impress upon the consumers that their products are better than the plaintiffs and plaintiff, according to him, is, therefore, entitled to an injunction. The Calcutta High Court had, in that case, injuncted the defendant from publishing their advertisement whereunder the product of the plaintiff was shown in a disparaging and defamatory manner. The facts in the said case were that the plaintiff was the manufacturer of blue whitener under the name and style of Robin Blue, The defendant had also started manufacturing blue whitener and with a view to promote their products they issued an advertisement allegedly making disparaging representations to the plaintiffs Robin Liquid Blue. The defendants had depicted the product of the petitioner showing the container in which the product of the petitioner was sold and in regard to which the petitioner had a registered design. It was further shown in the advertisement that the product contained in the said container was priced at Rs. 10. By giving the price, the respondent had in no uncertain terms identified the product of the petitioner since the only blue whitener sold in the market at the relevant time priced at around Rs. 10 was the product of the petitioner. It was con tended in the advertisement that the said blue was uneconomical and it was then contended that at Rs. 10 the average blue is the most expensive to whiten your clothes. Thereafter it was added What is more, you have to use lots of blue per wash. By making this comment the container of the petitioner had been shown upside-down and had been further shown that the liquid was gushing out. The object was obviously to show that the product of the petitioner priced at Rs. 10 gushed out as a squirt and not in drips while being used and, therefore, it was expensive way to whiten the clothes. It was in these circumstances that the Court held that the assertion made in the advertisement was clearly related to the product of the petitioner in that case and was made with a view to disparage and defame the petitioners product. The Court had based its decision mainly on the fact that the price of the container shown in the advertisement was Rs. 10 and no other blue whitener except that of (he petitioner was at the relevant time priced at Rs. 10 and it, therefore, held that the advertisement was directly related to the product of the petitioner. The Court, therefore, in that case restrained the respondent from issuing the advertisement in question.

11. Five principles laid down by the Court to decide as to whether a party is entitled to an injunction were as under:

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

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

(iii) 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.

(iv) He, however, cannot while saying 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.

(v) 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. The settled law on the subject appears to be that a manufacturer is entitled to make a statement that his goods are the best and also make some statements for puffing of his goods and the same will not give a cause of action to other traders or manufacturers of similar goods to institute proceedings as there is no disparagement or defamation to the goods of the manufacturer so doing. However, a manufacturer is not entitled to say that his competitors goods are bad so as to puff and promote his goods. It, therefore, appears that if an action lies for defamation an injunction may be granted. It is in this background that I have to see whether there is any disparagement or defamation to the goods of the plaintiff in the advertisement in question.

13. The advertisement appears on the electronic media for a few seconds and it shows a bottle of KIWI from which the KIWI is written on the white surface which does not drip as against another bottle described as OTHERS which drips. The bottle of OTHERS is shown as Brand X. The allegations are that this Brand X looks similar to the bottle of the liquid shoe polish of the plaintiff for which the plaintiff allegedly has a design registered in its name. There is a red blob on the surface of this bottle which allegedly represents CHERRY which also appears on the bottle of the product of the plaintiff. I have been shown in Court the original bottle of Brand X which, according to the defendant, has been specially prepared for purposes of showing in the advertisement. Though with the presence of the red blob on its surface, an impression may be gathered that this red blob is a CHERRY which appears on the bottle of the plaintiff as well, however, after the defendant had made a statement in Court that it will remove the red blob appearing on the bottle, to my mind, a consumer who watches this advertisement on the electronic media only for a fleeting moment may not get the impression that the bottle is the bottle of the plaintiff. At this initial stage, I am not deciding the question as to whether product of the defendant is better than that of the plaintiff or it has more natural wax so as to justify the issue of the advertisement, as these are the questions which will be decided during the trial of the case. The defendant has given instances of certain comparative advertisements which appear in the electronic media to justify its stand that such comparative advertisement is admissible to be issued by a manufacturer, however, as I have already held above that though a comparative advertisement is admissible, the same should not in any manner be intended to disparage or defame the product of the competitor. I am, in any case, not going into the question as to what is the effect of the issue of other advertisements of the similar nature by the manufacturer of other products. Prima-facie, I am of the opinion that after the removal of the red blob from the bottle of Brand X, the same cannot be linked to die product of the plaintiff and consequently, in my opinion, there will not be any question of disparaging or defaming the product of the plaintiff.

14. In view of the foregoing, I modify the interim order passed on 2nd February, 1996 to the extent that I restrain the defendant from in any manner printing, circulating or distributing the point of sale posters at the consumer outlets or in the market place, where such goods are sold or in any manner publishing the impugned advertisement on the electronic media or at any other place with red blob on the bottle of Brand X.

With these observations, the application is disposed of.

Any observation made in this order, however, will not affect the merits of the case.