In the recent case of Emami Limited v Dabur India Limited, the Calcutta High Court dealt with broadcast content consisting of a disparaging advertisement created by the respondent. The advertisement targeted the petitioner’s talcum powder products, labelling them as sadharan or ordinary in various outlets, including social and print media.
The petitioner company manufactured and marketed health, beauty and personal care products. It owned well-known and recognised brands and trademarks including Dermi Cool and Navratna. The former was put on the market in 1998 as prickly heat powder and has been widely used to provide relief from that condition and its effect on the skin. Dermi Cool powder contained natural ingredients such as menthol and neem, providing antibacterial benefits and ensuring the skin stayed protected and comfortable. Navratna, a talcum powder, was launched in 2006. It was renowned for its cooling properties and was particularly popular in hot and tropical climates.
The container and cap in which Dermi Cool was sold was distinctive and had been registered under the Designs Act, 2000. Ermani had spent more than INR4.32 billion (USD51.45 million) buying the Dermi Cool mark in 1998 and some INR480 million advertising and publicising it. The Navratna trademark had a distinctive green and white get-up. The petitioner had obtained registration of the Navratna mark and its get-up in 2006 under the Trade Marks Act, 1999 (act).
The petitioner objected to a commercial by the respondent for its talcum powder brand, Cool King. The commercial showed Emami’s products as ineffective. The respondent also published advertisements in print media with false claims of “defeating heat with up to 12 hours freshness and cooling”, which the petitioner claimed were not only factually incorrect but also maliciously intended to buttress the similar claims on television and social media.
The petitioner referred to a particular commercial in which an unhappy looking person was shown holding the petitioner’s Dermi Cool container, hot and sweating even after using the product. The respondent called the petitioner’s product sadharan or ordinary in the commercial.
The petitioner argued that the statements in the advertisement were false and misleading. A comparison of the percentage of menthol in its Navaratna and Dermi Cool products with Dabur’s Cool King had revealed that Emami’s products either matched or exceeded that in Cool King. Emami contended that Dabur’s advertisement was malicious and lacked logical reasoning, with the container in the advertisement deceptively similar to its own protected packaging design. The petitioner claimed that the unique packaging and get-up of its products had achieved a secondary meaning and was well known by consumers and the trade alike.
The petitioner contended that the advertisement eroded the goodwill and reputation of its brand and submitted that the respondent’s acts amounted to trademark infringement under section 29(8) of the act. The petitioner argued that this was malicious, intended to increase sales of the respondent’s product. The petitioner relied on the case of Dabur India Limited v Colgate Palmolive India Limited as authority for the principle that disparaging competing products by referring specifically to the competitor’s product was not acceptable.
The respondent complained that the petitioner had not sent a legal notice giving it a chance to rectify the advertisement. The respondent agreed to remove the offending bottle from its advertisements in print and on television in due course. The respondent submitted that the petitioner’s objection was restricted to the bottle in the advertisement and that broadcasting the advertisement itself could not be barred, because it was protected free speech under article 19(1)(a) of the constitution.
The court found that the silhouette in the advertisement and the petitioner’s physical products were deceptively similar. The court relied on Hindustan Unilever Limited v Reckitt Benckiser Private Limited, which held that it was not permissible to claim that one’s goods were superior to a competitor. Emami had made out a prima facie case and the balance of convenience was in its favour. The court issued an injunction restraining Dabur from depicting Emami’s containers in their advertisements until further notice.
