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2014 Supreme(Del) 2339
High Court of Delhi
MANMOHAN SINGH, J.
Reckitt Benckiser (India) Ltd. & Another
Versus
Dabur India Ltd.
CS(OS). No. 1829 of 2014
Decided on: 31-10-2014
For the Plaintiffs:C.M. Lall, Nancy Roy, Advocates.
For the Defendant:Sudhir Kumar Makkar, Meenakshi Singh, Advocates.
Headnote:
In a suit for permanent injunction and damages for trademark and copyright infringement, passing off and unfair trade practices, the court held that the plaintiff failed to make out a prima facie case for the grant of a temporary injunction. The court found that there was no similarity between the plaintiff's and defendant's trademarks, that the defendant's use of the plaintiff's copyrighted advertisement was a fair use, and that there was no likelihood of confusion or deception on the part of consumers. The court also found that the balance of convenience favored the defendant, as the plaintiff would not suffer irreparable harm if the injunction was not granted, while the defendant would suffer significant harm if it was.
Fact of the Case:
The plaintiff, Reckitt Benckiser Group PLC, is a manufacturer of various consumer and healthcare products, including the antacid Gaviscon. The defendant, Dabur India Limited, is a manufacturer of various Ayurvedic and non-prescription medicines, including the antacid Pudin Hara Lemon Fizz. The plaintiff alleged that the defendant's advertisement for Pudin Hara Lemon Fizz infringed its trademark, copyright, and passing off rights in its Gaviscon advertisement. The plaintiff also alleged that the defendant's advertisement was unfair trade practices.
Finding of the Court:
The court found that there was no similarity between the plaintiff's and defendant's trademarks. The court also found that the defendant's use of the plaintiff's copyrighted advertisement was a fair use. Finally, the court found that there was no likelihood of confusion or deception on the part of consumers.
Issues: Whether the defendant's advertisement infringed the plaintiff's trademark, copyright, and passing off rights; Whether the defendant's advertisement was unfair trade practices.
Ratio Decidendi: The court held that the plaintiff failed to make out a prima facie case for the grant of a temporary injunction. The court found that there was no similarity between the plaintiff's and defendant's trademarks, that the defendant's use of the plaintiff's copyrighted advertisement was a fair use, and that there was no likelihood of confusion or deception on the part of consumers. The court also found that the balance of convenience favored the defendant, as the plaintiff would not suffer irreparable harm if the injunction was not granted, while the defendant would suffer significant harm if it was.
Final Decision: The court dismissed the plaintiff's application for a temporary injunction.
Manmohan Singh, J.
1. By this order I propose to decide the application filed by the plaintiffs bearing I.A. No.11442/2014 under Order 39 Rules 1 and 2 CPC in a suit for permanent injunction and damages for trademark and copyright infringement, passing off and unfair trade practices.
2. Brief facts as per the plaint are that the plaintiffs are members of the Reckitt Benckiser Group PLC which is stated to be an internationally renowned corporation that operates in many countries around the world through its subsidiaries. The plaintiffs are into the business of various consumer and healthcare products including antiseptic liquid, toilet care products, surface care products, pharmaceuticals, insecticides and food products which bear famous trademarks including Strepsils, Gaviscon, Clearasil, Mortein, Dettol, Harpic, Vanish, Durex and Cherry Blossom.
3. It is stated that Reckitt Benckiser is the owner and manufacturer of the globally acclaimed and well known non- prescription drug for heartburn and gastro-oesophageal reflux disease in many countries, traded under the brand GAVISCON. The history of GAVISCON dates back to the year 1960 and in a span of over four decades, as per the plaintiffs, GAVISCON became a household name and the most preferred medicine for patients suffering from heartburn and gastro-oesophageal reflux diseases, this being the medicine of its first kind available in various countries to treat the said medical condition. The plaintiffs marketed and sold GAVISCON in the global markets including United Kingdom, Ireland, Benelux, France, Germany, Spain, Italy, Poland, Austria, Switzerland, etc.
4. It has been stated that the antacid and anti-reflux action of GAVISCON inspired the plaintiffs’ Group to conceptualize the unique and original script based on fire-fighting for the advertisement and marketing. In the year 2006 the plaintiffs devised, adopted and commenced the use of FIREMAN DEVICE in the advertisement to market their said product GAVISCON. It is averred that owing to its popularity and distinctiveness, the plaintiffs are extensively using the FIREMAN DEVICE which has now become synonymous with GAVISCON.
5. The original fire-fighting script and FIREMAN DEVICE which are primarily and prominently the base theme of each and every advertisement or commercial relating to the plaintiffs’ product GAVISCON, are the integral part of the GAVISCON trade dress and advertisement, promotional and marketing strategies relating to plaintiffs’ highly preferred medicine. Plaintiffs are the owner of the copyright in the said advertisement.
6. It is stated that the plaintiffs use the unique fire-fighting concept and the fireman device uniformly and extensively across global markets. Also, the terms “fire-fighting” and “fireman” are suggestive of the plaintiffs’ product GAVISCON. The FIREMAN DEVICE is depicted and is used in the course of trade, marketing, promotion and advertisement by the plaintiffs in various manners including inter alia the following:
“IMAGES”
7. The storyboard of plaintiffs’ conceptualized script is that the fire-fighters, which are replicas of the FIREMAN DEVICE, are treating the heartburn and other gastro-oesophageal reflux diseases by sprinkling GAVISCON on the oesophagus and the stomach walls. This script was conceptualized to depict the effect and working of GAVISCON once it is consumed by the consumer.
8. The plaintiffs also advertise and promote its product GAVISCON on its websites such as www.gaviscon.com, www.gaviscon.co.uk, www.gaviscon.co.au, www.gaviscon.ca etc. that are active and accessible throughout the world including India. It has been stated that a general online image search on Google for the terms “GAVISCON” and “FIREMAN” reveals various images of the plaintiffs’ conceptual advertisement and the FIREMAN DEVICE.
9. The plaintiffs have procured/applied for registration of the FIREMAN DEVICE as a trademark in various jurisdictions. The said FIREMAN DEVICE was registered in India in favour
