In what seems to be India’s first reported coronavirus related IP dispute, Hindustan Unilever (HUL) took Reckitt Benckiser (RB) to Bombay High Court over RB’s recent Dettol Handwash advertisement, alleging that it disparages HUL’s Lifebuoy soap trade mark.
Background of the issue:
HUL (plaintiff) took RB (defendant) to court when they came across the defendant’s advertisement promoting its Dettol handwash, which portrayed that bar/solid soaps aren’t as effective as liquid soap for washing hands. The plaintiff’s contention was two-fold. Firstly, the plaintiff contended that the Dettol handwash ad disparaged Lifebuoy soaps by showing a soap with the same shape, configuration and color as HUL’s registered red Lifebuoy soap and secondly, the plaintiff contended that the defendant has also copied HUL’s advertisement. HUL in its plaint stated that it had published ads across various media, trying to promote the washing of hands to fight the spread of COVID-19.
The plaint states that Dettol came out with a similar ad that cast Lifebuoy soap in bad light, stating that “…TV commercial of the Defendant for promotion of its ‘Dettol Liquid Hand Wash’ by which the defendant purported to disparage, denigrate the ‘Lifebuoy soap’ and/or the plaintiff’s red ‘Lifebuoy’ soap in its distinctive shape and/or the plaintiff’s said product and/or infringe the registered trade mark of the plaintiff’s Lifebuoy soap which is primarily red in color and having a distinct shape, figure and configuration, and that the displayed soap is identical and/or deceptively similar to the registered trade mark and design of the plaintiff’s soap ‘Lifebuoy’ and the same is unambiguously understood and registered in the minds of the viewer by a simple glance at the advertisement. The malice of the defendant becomes evident and obvious by the fact the defendant in its advertisement purports to show a soap (having shape, configuration and color as that of the plaintiff’s red soap bearing the registered mark ‘Lifebuoy’) which does not remove any germs and is an ineffective, useless and unreliable product.”
The Plaintiff further stated that the issue assumes greater significance at a time when preventive measures are being taken to curb the spread of COVID-19, stating that “when the world is struggling to control Corona Virus outbreak, the guidelines prescribed by the WHO clearly recommend that washing hands with soap and water is one of the essential and most effective way to protect yourself from such a virus. Other products such as alcohol-based sanitizers, are recommended only when soap and water is not available. Moreover, nations across the world are communicating just the opposite and asking people to wash their hands with soap and water, whereas defendant is creating scare amongst the general public by falsely propagating that soap are useless by maligning the market leader in the soap’s category. When the need of the hour is for everyone to come together and work towards common good, the defendant’s action is irresponsible and against public morality. Such advertisement is detrimental particularly in a country like India where larger population is traditionally not using multiple products for their hygiene needs but relying predominantly on soap alone.”
Thus, the plaintiff prayed that the defendant be restrained by a perpetual injunction from broadcasting the advertisement in question. An injunction against the disparagement of the plaintiff’s ‘Lifebuoy’ soap products was also sought, along with damages to the tune of Rs. 1 crore.
Before the suit could venture into substantial claims and averments, the defendant agreed to suspend its advertisement from 12PM on March 22, 2020 to 5PM on April 21, 2020 for a period of one month.
Precedents:
Keeping in mind the various precedents with respect to comparative advertising, for a disparagement claim to succeed,
there must be a misleading/false claim regarding the plaintiff’s product,the claim leads to the deception of the consumer andthe same is likely to affect consumer behavior.
In ‘Reckitt Benckiser (India) Ltd. vs. Hindustan Lever Limited,’[1] the Delhi High Court held that an ‘orange soap bar’ could easily be identified as the plaintiff’s product, the Dettol soap and hence held in favor of the plaintiff in a disparagement case, similar to the current case.
In ‘Gujarat Co-operative Milk Marketing Federation Ltd. vs. Hindustan Unilever Ltd.’,[2] the Bombay High Court held in favor of the plaintiff, wherein the plaintiff carried on the business of manufacturing and selling Fast Moving Consumer Goods, including frozen desserts and ice cream under the mark “Kwality walls” and the defendant is engaged in the marketing of various dairy and dairy based products including ice creams under the mark “Amul” and was a competitor of the plaintiff, wherein it was the case of the plaintiff that two impugned television commercials advertised by the defendant had an effect of disparaging frozen dessert manufactured by the plaintiff. As per the plaintiff, the commercials showed that the product of the defendant was manufactured by suing 100% milk whereas frozen desserts are manufactured using Vanaspati (hydrogenated vegetable oil). The court in this case looked into what effect a claim based on common parlance can have on the public. The plaintiff held that a more particular and precise claim will have a higher and more serious effect on public.
In the case of ‘Colgate Palmolive Company & Anr vs. Hindustan Unilever Ltd’[3], the Supreme Court held that in comparative advertising, a certain amount of disparagement is implicit and as long as it is limited to puffing, there is no actionable claim against the same. Therefore, the comparison between products can be positive and negative. Positive comparison, wherein one shows their products or services to be superior to their competitors is allowed. However, negative comparison where one compares their products or services with the competitor’s which belittle or denigrates the competitor’s products or services amounts to negative comparison. The positive comparison is what is called comparative advertising, which is allowed to a certain extent. However, the negative comparison is of showing the competitor’s products or services in negative light amounting to disparagement, which is not allowed since it violates the goodwill of the competitor. Therefore, the advertisement has to be seen as a whole, with its true intent.
Is there a prima facie case?
Given the claims of the plaintiff, a question arises if the defendant’s puffery of its products is permitted, given Section 30 of the Trade Marks Act, which allows comparative advertisements as long as there is no detrimental effect to a rival’s registered mark. HUL has claimed that Dettol has made a false claim that bar soaps are not effective, which in turn leads to the deception of the consumer, and in turn, leading them not wanting to use bar soaps during pandemic, thus fulfilling all the three requirement of affecting consumer behavior. Making a claim that deviates the public from washing hands with soap, may indeed affect the consumer behavior.
However, the above argument is speculative in nature, based on the facts of the case available in public domain. We shall therefore have to wait till April 20, 2020, the date to which the parties consented the matter to be pushed, to hear about the actual judgement in the case.
[1] CS (OS) 1359/2007
[2] APPEAL NO.340 OF 2017
[3] FAO (OS) No. 396/2013
The article was originally posted on www.lexology.com on March 31, 2020 and can be accessed here.