Calcutta High Court
Emami Limited vs Dabur India Limited on 17 January, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL DIVISION
ORIGINAL SIDE
IA NO. GA-COM/1/2024
IA NO. GA-COM/2/2024
In IP-COM/18/2024
Emami Limited
Vs
Dabur India Limited
For the plaintiff : Mr. Ranjan Bachawat, Senior. Advocate
Mr. Debnath Ghosh, Senior. Advocate
Mr. Subhasis Sengupta, Advocate
Mr. Biswaroop Mukherjee, Advocate
Ms. Pubali Sinha, Advocate
Ms. Mini Agarwal, Advocate
For the defendant : Mr. Sudipto Sarkar, Sr. Advocate
Mr. Sourojit Dasgupta, Advocate
Mr. Abir Debnath, Advocate
Mr. Nilankan Banerjee, Advocate
Mr. Pradipta Bose, Advocate
Judgment on : 17.01.2025
Ravi Krishan Kapur J.
1. In a suit for disparagement and infringement, the petitioner seeks interim
orders of restraint against the respondent, inter alia, from telecasting,
displaying, airing, disseminating a television commercial launched by the
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respondent on 28 June, 2024 for its product "Dabur Cool King Icey Perfume
Talc" (the impugned advertisement).
2. Briefly, the petitioner is inter alia engaged in the Fast Moving Consumer
Goods (FMCG) sector and manufactures talcum powder sold under the mark
'Navratna' and 'Dermi Cool'. It is alleged that the market share of both the
above products of the petitioner is approximately 17% and 25.5%
respectively. It is contended that the colour combination of sea green and
white colour skin in relation to talc and the distinctive bottle and cap design
alongwith the green and white colour combination in respect of prickly heat
powders are exclusively associated with the petitioner's products. The
respondent is a trade rival and manufacturer of FMCG products including
talcum powder.
3. The story board of the offending commercial is as follows:
THE SCENE OPENS WITH A GROUP OF GIRLS FIRING HEAT
WAVES
GROUP OF GIRLS FIRING HEAT WAVES
THE HEAT IS TERRIBLE AND PEOPLE ARE LOOKING
UNCOMFORTABLE IN THE HEAT
DIALOGUE STARTS
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VO:"KOI NAHI BACH PAYEGA,"
CLOSE UP SHOT OF PERSON SWEATING
VO; "GARMI AUR PASEENE SE,"
A PERSON APPLYING TALC and SEEN UNHAPPY
WITH THE RESULTS
THIS PERSON AFTER SPRINKLING PRICKLY HEAT POWDER
STILL LOOKS HOT AND SWEATY, AS IF THE TALC APPLIED IS
NOT EFFECTIVE
VO:"KAHAN HAI TUMHARA DABUR COOL KING'SUDDENLY
GET SURPRISED, HEAR SOME NOISE AND LOOKUP
DABUR COOL KING TALC APPEARS FROM THE TOP AND
BACKGROUND MUSIC STARTS PLAYING
BACKGROUND MUSIC CONTINUES TOPLAY, THE PACK LANDS
ON THE GROUND
IT IS SHOWN, APPARENTLY COOL WAVE HITS PEOPLE, AS IF
THIS NEW TALC(DABUR COOL KING TALC) IS PERCEIVED TO
DELIVER SUPERIOR COOLING THAN TALC SHOWN EARLIER IN
THE FILM
GIRLS CONTINUE STARING AT THE DABUR COOL KING PACK
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BACKGROUND MUSIC IN CREASES, REACHING A
CRESSENDO
THE TALC BOTTLE DOOR OPENS, RANBIR KAPOOR
APPEARS
RANBIR KAPOOR COMES OUT OF DABUR COOL KING
TALC, WALKING ON THE STREET
THE SCREEN TITLS, ALONGWITH THIS THE SONG STARTS
GIRLS START LOOKING AT DABUR COOL KING,
SONG CONTIUES-BACHNAAE HASEENO
RANBIR KAPOOR HOLDS UPTO THE DCK TALC TO
INTRODUCE IT – SONG CONTINUES – DABUR COOL KING
TALC AA GAYA
RANBIR KAPOOR APPLIES THE PRODUCT
THE APPLIED TALC, THEN TRANSLATES INTRO
COOLING CRYSTAL LIKE UNITS WHICH ARE THEN
SHOWN TO BE FLYING OUT IN THE STREET
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RANBIR KAPOOR IS THEN SHOWN TO BE
RECOMMENDING AND GIVING DABUR COOL KING TALC
TO A PERSON EARLIER USING THE PRODUCT
MUSIC CONTINUES
THE PEOPLE THEN SEE THE DABUR COOL KING
PRODUCT SHOT
THE CONSUMER IS THEN SHOWN APPLYING DABUR
COOL KING TALC AND HAS A LOOK OF RELIEF ON HIS
FACE
THE DABUR COOL KING TALC, THEN TRANSLATES INTO
COOL CRYSTALS OF ICE AND IT IS SHOWN THAT THE
PERSON FEELS ICEY COOL WITH ALL ICE AND MENTHOL
BACKGROUND-SONG CONTINUES-MENTHOL CRYSTALS KE
WE THEN SEE RANBIR KAPOOR DANCING WITH THE
SONG,SONG CONTINUOUS-ICEY PERFUME CHA GAYA
THEN A COOL SWIRL OF ICE AND MENTHOL GETS FOR
MED AROUND RANBIR KAPOOR, AND THE SONG
CONTINUES-COOLING KA AASHIQ
RANBIR KAPOOR THEN THROWS SOMETHING LIKE A
COOL BLAST OF ICE ON TO THE HEAT WAVE, SONG
CONTINUES-GARMI KA DUSHMAN
COOL WAVE OF DABUR COOL KING AND THE GIRLS
FIRING HEAT WAVES COLLIDES
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THE COOL WAVE FREEZES OVER THE HEAT WAVES
THE GIRLS THEN FEEL A SENSATION OF ICEY CRSTAL
AND THEIR HAIR TURNS BLUE, WHEN COLLIDING WITH
DCK TALC’S COOL WAVE
BACKGROUND VO NAYA DABUR COOL KING PERFUME
TALCUM POWDER PACK IS SHOWN AGAINST A BACK
GROUND OF COOLING CRYSTALS
RANBIR KAPOOR APPLIES DCK TALC
THE POWDER TURNS INTO CRYSTALS OF ICE VO-ICEY
MENTHOL COOLING CRYSTALS RAKHE 12 GHANTE
TAAZA
RANBIR THEN COMPARES THE PRICKLY HEAT POWDER
CALLING IT OUT “SADHARAN” AND INDICATES THAT
DABUR COOL KING TALC HAS SUPERIOR COOLING
RANBIR DIAGLOUE “SAADHARAN” NAHI, SIRF DABUR
COOL KING DE SUPER ICEY COOLING
THE AD ENDS WITH RANVEER SURRONDED BY THE
WOMEN AND EVERY ONE IS SURROUNDED BY
ICE COOLING CRYSTAL LIKE UNITS
4. It is contended that the impugned advertisement makes a direct reference to
the products of the petitioner. The same feature, configuration, design and
colour of the container bottle with the unique cap depicted in the impugned
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advertisement which is only identifiable with the petitioner’s product. It is
also contended that the word ‘sadharan’ displayed on the bottle in the
impugned advertisement in white colour with a green coloured cap having a
distinctive tapered notch end can only be identified with the petitioner’s
products. The use of the word ‘sadharan’ also reflects poorly on the
petitioner’s products. In conclusion, the impugned advertisement seeks to
convey that the products of the petitioner are ineffective and useless.
5. It is contended that the impugned advertisement has also been deliberately
and intentionally conveyed in the electronic and social media which has a
higher impact and outreach and has been displayed more than 2000 times
over different media formats including You Tube and Instagram. As such, by
airing the impugned advertisement the respondent has particularly identified
the petitioner’s product while also seeking to run down the entire class of
talcum and prickly heat powders.
6. In such above circumstances, by specifically identifying the petitioner’s
product and describing them as ‘ordinary’ or ‘sadharan’, the idea conveyed
in the mind of any reasonable consumer is that the petitioner’s products are
bad. The respondent is also guilty of denigrating and disparaging all other
powder products by describing the entire class of talcum powders to be
ordinary, ineffective and useless. As such, the impugned advertisement also
disparages the genus of talcum and prickly heat powders in general and
specifically targets the products of the petitioner. In support of its
contentions, the petitioner relies on the decisions in Hindustan Unilever
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Limited vs. Reckitt Benckiser (India) Pvt. Ltd. MANU/DE/2447/2023, Pepsi
Co. Inc. vs. Hindustan Coca Coal Ltd. 2003 SCC OnLine Del 802,
Annamalayar Agencies vs. WS & Sons Pvt. Ltd. 2007 SCC OnLine Mad 1645,
Dabur India Limited vs. Colgate Palmolive India Ltd. 2005 (79) DRJ 461, Parle
Products Private Limited vs. Britannia Industries Ltd. 2022 SCC OnLine Del
4141, Procter & Gamble Hygiene and Healthcare Limited vs. Reckitt Benckiser
(India) Pvt. Ltd. 2022 SCC Online Mad 1747, Dabur India Limited vs. Emami
Limited 2004 (75) DRJ 356, Dabur India Limited vs. Colgate Palmolive India
Ltd. 2004 (77) DRJ 415, Marico Limited vs. Dabur India Limited
MANU/WB/1083/2022.
7. On behalf of the respondent it is contended that word ‘sadharan’ can never
per se be disparaging and has only been used in a comparative sense
without any sense of malice. The entire case of generic disparagement is also
untenable. In any event, the petitioner themselves have on numerous
occasions in selling and marketing their products used the word ‘ordinary’
and this is common in the industry. In support of their contentions, the
respondent relies on Hindustan Unilever Limited vs. Emami Limited 2019 SCC
OnLine Del 7809, Dabur India Limited vs. Emami Limited 2019 SCC OnLine
Del 9022, Reckitt Benckiser (India) Pvt. Ltd. vs. Gillete India Limited 2016 SCC
OnLine Del 4737, Eveready Industries India Limited vs. Gillete India Limited
2012 SCC OnLine Cal 12500, Tata Sons Pvt. Ltd. & Anr. Vs. Puro Wellness
Private Limited & Anr. 2023 SCC OnLine Del 6338, Procter & Gamble Home
Products Pvt. Ltd. vs. Hindustan Unilever Limited 2017 SCC OnLine Del 7072
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and Dabur India Limited vs. WIPRO Limited, Bangalore 2006 SCC OnLine Del
391.
8. Upon filing of this suit, an ad interim order dated 11 July 2024 was passed
inter alia restraining the respondent from telecasting the impugned
advertisement. The ad interim order dated 11 July 2024 is as follows:
“In view of the above, the respondent, its men, servants, agents,
representatives and/or anyone claiming through the respondent is
restrained from displaying and/or playing and/or airing and/or
telecasting in their advertisement “Cool King” by showing the
bottle/container of “Dermi Cool” and “Navratna” of the petitioner by
referring the same as “sadharan” till 9th August, 2024.”
9. Thereafter, the respondent filed GA 2 of 2024, inter alia seeking modification
of the impugned order on the ground that the respondent was willing to vary
the impugned advertisement by changing the design of the bottle and by
removing the green cap as well as any other reference to the colour green.
Despite repeated opportunities, the parties were unable to arrive at any
consensus. The primary bone of contention being that the use of the word
‘ordinary’ even in the modified advertisement was not acceptable to the
petitioner.
10. It is true that the concession made on behalf of the respondent at the ad
interim stage to remove the bottle in the impugned advertisement and the
colour green is not binding. However, in view of the offer to modify the
impugned advertisement by changing the unlabelled white & green container
shown in the impugned advertisement alongwith the cylindrical bottle any
further discussion on this aspect of the matter with reference to the
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impugned advertisement is academic at this stage. Once the reference to the
products of the petitioner is removed in the impugned advertisement both by
colour and by the shape of the bottle, the only question which remains for
consideration is whether the word ‘ordinary’ or ‘sadharan’ per se can attract
any prohibition.
11. It is necessary to add a touch of reality in such matters. Consumers are not
ignorant. In someways, trade mark law and for that reason all intellectual
property law is primarily meant to protect the public from confusion or
deception. It is not the role of trade mark law to pander to illusion and
amplify the image of any product. Undoubtedly, the role of advertising or
marketing cannot be undermined. The use of words like ordinary, extra-
ordinary, exceptional or unexceptional without any reference to a particular
manufacturer or particular product are adjectives, descriptors or attributes
which only add to puffery by any manufacturer and no rival can afford to be
hypersensitive. It is also necessary to consider the context in which the word
ordinary or sadharan has been used. Prima facie, the word ‘sadharan’ or
‘ordinary’ is being used more in a neutral sense without any negative
connotation. An underlying interest which also needs to be balanced is the
freedom of speech enshrined in Article 19(1) of the Constitution of India. In
such circumstances, the use of the word ‘ordinary’ per se without any
reference to a particular manufacturer cannot be interpreted to be
defamatory, disparaging or offensive. [Tata Sons Private Limited vs. Puro
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Wellness Private Limited & Anr 2023 SCC OnLine Del 6338 and Dabur India
Ltd. vs. Wipro Limited Bangalore 2006 SCC OnLine Del 391].
12. There is also no merit in the case of generic disparagement. Significantly, the
respondent is a rival manufacturer and distributor of talcum powders. Both
the petitioner and respondent are trade rivals selling the similar genus of
goods. In any event, keeping in mind the size of the class targeted, the
generality of the charge and the extravagance of the accusation there is no
basis to the allegation of generic disparagement. (Knuffer vs. London Express
Newspaper Ltd. [1944] 1 ALL ER 495).
13. Similarly, there is no substance in the argument that the identification in
the impugned advertisement is so pervasive that even if all references to the
petitioner’s products are removed, the viewers and prospective customers
would immediately associate and identify any modified advertisement with
the petitioner’s product. Admittedly, the impugned advertisement has
neither been telecast nor broadcast for nearly six months. The creation of
such advertisements is time consuming and expensive. In some cases, it
may be more practical and commercially prudent to modify an existing
advertisement rather than conceive of a new advertisement. In view of the
above, there is no merit in the contention of recall value and the same
stands rejected.
14. There is also no question of pre-approving any proposed TVC as contended
by the petitioner. It is true that the modified or changed advertisement is not
the subject matter of this suit. Nevertheless, the contention that a modified
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advertisement can never be looked into is unsustainable. In order to do
complete justice between the parties and bring a quietus to litigation, Courts
when adjudicating such matters do take into consideration modifications,
alterations and variations to the impugned advertisement in order to come
out of the mischief of the restraint orders or negate any possible element of
disparagement. [Hindustan Unilever Limited vs. Emami Ltd. 2019 SCC OnLine
Del 7809, Dabur India Ltd. vs. Emami Ltd. 2019 SCC OnLine Del 9022, Reckitt
Benckiser (India) Pvt. Ltd. vs. Gillete India Ltd. 2016 SCC OnLine Del 4737,
Reckitt & Coleman of India Ltd. vs. Kiwi TTK Ltd. 1996 (16) PTC 393 (Del) and
Eveready Industries India Ltd. vs. Gillete India Ltd. 2012 SCC OnLine Cal
12500].
15. The authorities cited by the petitioner on the aspect of ordinary or sadharan
are distinguishable and inapposite. In Hindustan Unilever Limited vs. Reckitt
Benckiser (India) Private Limited (2023) 95 PTC 239 (Del), the Court had
arrived at a finding that the impugned advertisement clearly indicated an
intention to compare the two rival products i.e. ‘Domex Freshguard’ and that
of ‘Harpic Power Plus 10x Max Clean’. It was held that the clear inference
from impugned advertisement which could be drawn by a customer viewing
the impugned video is that the product of the defendant ‘Harpic’ was
ineffective. Similarly, in Parle Products Pvt. Ltd. vs. Britania Industries 2022
SCC OnLine Del 4141, it was held that the use of the letter ‘G’ in the print
advertisement as also the use of the similar looking packaging in the
impugned video left no matter of doubt that it was the defendant’s product
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which was being identified and compared. Moreover, in Dabur India Limited
vs. Colgate Palmolive India Ltd. 2005 (79) DRJ 461, the interpretation of the
word ‘sadharan’ was in the facts and circumstances of that case comparing
Chawanprash with Lal Danta Manjan. Hence, the genus of the two products
were distinct, separate and altogether different and the above decision has to
be read in that context. In such circumstances, none of the above decisions
support the proposition that the use of the word ‘ordinary’ or ‘sadharan’ per
se without any identification can be interpreted to be defamatory or
disparaging.
16. In view of the above, the petitioner has been able to demonstrate a strong
prima facie case on merits insofar as the impugned advertisement is
concerned. The balance of convenience and irreparable injury is also in
favour of orders being passed as prayed for by the petitioner.
17. In view of the above, the ad interim order dated 11 July 2024 is modified to
the extent that there shall be an interim order of restraint of the impugned
advertisement. It is made clear that the order of restraint is limited to the
impugned advertisement as a whole and not to any particular portion or any
particular word in the impugned advertisement. With the above directions,
both the applications being GA 1 of 2024 and GA 2 of 2024, stand disposed
of.
(Ravi Krishan Kapur, J.)