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IN THE HIGH COURT OF CALCUTTA
Jyotirmay Bhattacharya and Debi Prosad Dey, JJ.
Reckitt Benckiser Health Care (India) Pvt. - Appellant
Versus
Emami Ltd & Ors. - Respondents
F.M.A. 2041 of 2015 (CAN 5406 of 2015)
Decided On : 16-7-2015
For the Appellants :Mr. C.M. Lall, Ms. N. Roy, Mr. Kausik Dey, Mr. Partha Basu and Mr. Sudhakar Prasad, Advocates.
For the Respondents:Mr. Pratap Chatterjee, Mr. Debnath Ghosh, Mr. Soumya Roy Chowdhury, Ms. Soma Rahaman and Mr. Sarosij Das Gupt, Advocates.
A comparison of products in an advertisement is not fair and truthful if the advertiser fails to prove that the additional ingredients in its product are active ingredients that contribute to reducing pain faster than the competitor's product.
Headnote:
TRADEMARK - SUIT FOR INJUNCTION - AIRING OF TELEVISION COMMERCIAL - COMPARISON OF PRODUCTS - FAIRNESS AND TRUTHFULNESS - DISPARAGEMENT OF TRADEMARK AND COPYRIGHT - FREEDOM OF COMMERCIAL SPEECH - ARTICLE 19(1)(A) AND ARTICLE 19(2) OF THE CONSTITUTION OF INDIA - SECTION 29(8) AND SECTION 30 OF THE TRADEMARKS ACT, 1999.
Fact of the Case:
Plaintiff sued defendant for infringement of trademark and disparagement under Section 29 read with Section 134 and 135 and the Trade Marks Act, 1999 and for infringement of Copyright under Section 55 and 62 of the Copyright Act, 1957. The suit was filed after the defendant aired a TV commercial comparing its product with the plaintiff's product and claiming that its product contained twice the number of active ingredients and was, therefore, more effective in relieving pain. The plaintiff contended that the advertisement disparaged its product and sought an injunction restraining the defendant from airing the advertisement.
Finding of the Court:
The court held that the comparison made in the advertisement was not fair and truthful as the defendant failed to prove that the additional ingredients in its product were active ingredients that contributed to reducing pain faster than the plaintiff's product. The court also held that the advertisement disparaged the plaintiff's product and its trademark and copyright as it sent a message to the public that the plaintiff's product was less worthy than the defendant's product.
Issues: Whether the comparison made in the advertisement was fair and truthful.
Ratio Decidendi: The court held that the comparison made in the advertisement was not fair and truthful as the defendant failed to prove that the additional ingredients in its product were active ingredients that contributed to reducing pain faster than the plaintiff's product. The court also held that the advertisement disparaged the plaintiff's product and its trademark and copyright as it sent a message to the public that the plaintiff's product was less worthy than the defendant's product.
Final Decision: The court dismissed the appeal and confirmed the injunction order passed by the trial court, restraining the defendant from airing the impugned advertisement.
Jyotirmay Bhattacharya, J.
This first miscellaneous appeal is directed against an order passed by the Learned Additional District Judge, 13th Court at Alipore on 28th May, 2015 in Title Suit No.1 of 2015 at the instance of the defendant No. 1/appellant.
2. In fact, by the impugned order, two applications were disposed of by the Learned Trial Judge. One of such applications was filed by the defendant No.1/appellant for rejection of the plaint under Order 7 Rule 11 of the Code of Civil Procedure. The learned Trial Judge held that the defendant's said application under Order 7 Rule 11 of the Code of Civil Procedure is misconceived.
3. Hence, the said application was rejected.
4. However, the other application filed by the plaintiff for injunction under Order 39 Rule 1 and 2 of the Code of Civil Procedure was allowed by the learned Trial Judge. By the said order temporary injunction was passed restraining the defendant No.1 from displaying and/or playing and/or telecasting and/or airing the impugned advertisement for "MOOV" with the frames showing the product of the plaintiff (ZANDU BALM) in its unique shape, colour and design along with "MOOV" and the words "Jisme hai promukh balm ke mukable do guna jaida active ingredients", till the disposal of this case.
5. In the present appeal, the legality and/or propriety of the order of injunction which was passed by the learned Trial Judge as mentioned above is under challenge before us. The appellant has also filed a revisional application challenging the other part of the impugned order by which the application filed by the defendant No.1/appellant for rejection of the plaint under Order 7 Rule 11 of the Code of Civil Procedure was rejected. The said revisional application is not before us. However, since the defendant/appellant contested the plaintiff's application for temporary injunction by filing affidavit, raising a question regarding maintainability of the suit on identical grounds made out by it in its application under Order 7 Rule 11 of the Code of Civil Procedure and further since fate of the injunction proceeding, to some extent, is dependent upon the defendant's said application under Order 7 Rule 11 of the Code of Civil Procedure, this Court thought that both the appeals and the revisional application should be heard by a common Bench so that possibility of conflict of decision may be avoided. Accordingly a suggestion was given to the learned Counsel appearing for the parties for approaching the Hon'ble Chief Justice for getting all these matters assigned to a common Bench so that both the appeal and the revisional application can be decided by a common Bench. Finally Mr. Lall, learned Counsel, appearing for the appellant refused to accept such suggestion of the Court as according to him the process for assignment of these two matters to a common Court may cause some delay in deciding the present appeal and as such he invited this Court to dispose of the present appeal by concentrating on the legality of the order passed on the injunction application filed by the plaintiff without entering into the objection raised by the defendant/appellant regarding maintainability of the said suit, which his client intends to thrash out exhaustively in the revisional application pending before the other Bench separately. Under such circumstances we felt that presently we need not discuss the maintainability of the present suit though such an objection is raised by the defendant/appellant in its affidavit filed in connection with the injunction proceeding. We thus, concentrate on the legality of the injunction order passed by the learned Trial Judge which is impugned in this appeal.
6. Before entering into the merit of this injunction order we like to mention here that it is rightly pointed out by Mr. Lall, Learned Advocate for the appellant, that the learned Trial Judge, whil
