Free flow of commercial information or overstepping the grey area of advertising?

By Rupin Chopra and Soumya Sehgal

HARPIC v. DOMEX

Reckitt Benckiser (“Plaintiff”) recently filed a lawsuit seeking a temporary injunction against Hindustan Unilever Limited (“Defendant”) from telecasting, broadcasting, publishing or putting in public domain five advertisements with respect to their product “DOMEX” that allegedly disparaged the goodwill and reputation of the Plaintiff and their products under the trade mark “HARPIC.” The Hon’ble Delhi High Court’s decision in the case has brought about a much needed and relevant dialogue on comparative advertising and product disparagement, which is discussed herein below[1].

ABOUT THE PARTIES

1. The Plaintiff

Reckitt Benckiser is a UK based company involved in the manufacturing of nutrition, health and hygiene products. The Plaintiff has been manufacturing and selling the well-known toilet cleaner “HARPIC” in India since 2001.

The Defendant

Hindustan Unilever Limited (HUL) is India’s largest fast-moving consumer goods company.

The “DOMEX” toilet cleaner is one of the Defendant’s well-known brands.

CONTENTIONS

The Contentions of the Plaintiff

The Defendant has launched 5 advertisements, all of which vilify, degenerate and defame the Plaintiff’s well-known toilet cleaner HARPIC, as they declare it to be ineffective and useless.

• The 1^st Advertisement (a Television Commercial i.e., TVC) begins with a woman picking up a bottle of HARPIC in a store when her son inquiries about the brand’s ability to kill toilet stink. At this point, the famous television actress, Ms. Divyanka Tripathi explains that DOMEX employs fresh guard technology to eliminate toilet stink, which the other brand is unable to achieve. Thus, it portrays that use of HARPIC leads to bad odour and smell in the bathroom, and prompts the consumers to shift their preferences from HARPIC to DOMEX.
• The 3^rd Advertisement (Print) explicitly draws a comparison between HARPIC and DOMEX, and portrays DOMEX as the preferred choice for fighting bad smell for longer. Screenshot of the advertisement is attached below for reference:

• The 2^nd, 4^th and 5^th Advertisements (YouTube Videos/Social Media) showcase a bottle that can be clearly identified as HARPIC, and imply that the same is an ordinary toilet cleaner. The shape of the bottle has been registered by the Plaintiff, therefore the Defendant has infringed the Plaintiff’s registered trade mark “HARPIC” (Registration No. 347055). Screenshots of the advertisements are attached below for reference:

The Contentions of the Defendant

The Defendant’s DOMEX product has a unique patented technology (Patent No. 368377) which is better at fighting bad odour. The claim is backed by a testing done by TUV SUD South Asia Pvt Ltd, a known independent laboratory.

• 1^st Advertisement only portrays the benefits and special features of the product, and does not disparage or degenerate the Plaintiff’s product.
• 3^rd Advertisement merely informs the public that Defendant’s product fights bad smell for longer, and does not say anything negative about HARPIC.
• 2^nd, 4^th and 5^th Advertisements show the generic shape of a toilet cleaner bottle and do not make any specific reference to HARPIC.

ISSUE FRAMED

Whether the advertisements (TVC, Print and Social Media) degenerate or disparage the product ‘HARPIC’ of the Plaintiff?

FINDINGS OF THE COURT

In its analysis, the Hon’ble Delhi High Court relied upon and referred to two important judgments, which are given below:

In Colgate Palmolive (India) Ltd v Hindustan Unilever Ltd (2013 (SCC) OnLine Del 3186) it was held that “A trader can certainly compare the advantages of his goods over the goods of the competitor. What is prohibited is for the trader to say that his competitor’s goods are bad”.

In Dabur India Ltd. vs M/S Colortek Meghalaya Pvt. Ltd, the Hon’ble Delhi High Court explained the factors which are required to be considered while deciding the question of disparagement:

1. Intent of the advertisement- This can be understood from the storyline and the message sought to be conveyed to an average consumer (present or potential). An average person cannot be assumed to be gullible and is presumed to have the ability to ignore puffery. However, the average viewer is more inclined to trust factual representations provided by advertisements if they are presented as serious statements of truth rather than hyperbole.
2. Overall effect of the advertisement- Does it promote the advertiser’s product or does it disparage or degenerate a rival product? While promoting, the advertiser may make an unfavorable comparison, however it may not have an overall effect.
3. Manner of advertising- Truthful disparagement is permissible, however, false disparagement is not.

On the basis of the same, the court made the following observations:

1. Print Advertisement (3^rd Advertisement)

• An interim injunction was passed in respect of the 3^rd advertisement on July 30, 2021 on the basis of the following grounds:
• The advertisement certified the product of the Defendant as superior to that of the Plaintiff and thus, tends to degenerate HARPIC branded products.
• The advertisement prime facie appears to disparage Plaintiff’s products.

2. Television Commercial (1^st Advertisement)

• The TVC seeks to claim that to remove bad odour, DOMEX is a better solution, however, it does not denigrate, disparage or malign the Plaintiff’s product, HARPIC.
• No prima facie case established against the Defendant.

3. Social Media/Youtube Videos (2^nd, 4^th and 5^th Advertisements)

• The bottle shown in the advertisements is prima facie deceptively similar to the registered trade marks of the Plaintiff (Registration No. 3491010, 3491007 and 3491009).
• The point of the Defendant that their product is patented and has unique technology is a disputed question of fact, and the onus lies on the Defendant to prove it at the evidence stage.
• The advertisements announce that the cleaner portrayed in the advertisements is an ordinary toilet cleaner and is unable to remove the stains and malodor in a toilet. Therefore, they degenerate and malign the Plaintiff’s product HARPIC.

CONCLUSION

The Indian courts have repeatedly held that while free flow of commercial information is indispensable and that an advertisement is a facet of commercial speech under Article 19(1) (a) of the Constitution of India, a manufacturer cannot discredit or degenerate the trade mark or trade name of his competitor by launching an advertisement which is inaccurate, misleading, unfair or deceptive, i.e., make a declaration that the product is terrible, inferior, or unappealing, while praising its own. Despite this, prominent brands have often attempted to degenerate the goods of each other by launching or broadcasting comparative advertisements in order to establish their ‘supremacy’ in the market, which serves no material purpose because such advertisements usually end up in court rooms and ultimately get removed/withdrawn.

In light of these reasoning, in the present matter, the Hon’ble court issued a temporary injunction prohibiting the Defendant from publishing four advertisements (print and social media) on any medium until all references to HARPIC and the deceptively similar bottle have been deleted. With respect to the television commercial (“TVC”), the Hon’ble Court refused to issue an injunction because the TVC’s intent and overall effect, according to the Hon’ble Court, were not to degrade, disparage, or malign the Plaintiff’s product, HARPIC, but rather to establish that DOMEX is a better solution for eradicating odour. Thus, while the Hon’ble court granted injunction with respect to the print and social media advertisements, it also protected the Defendant’s liberty to advertise by refusing to pass injunction against the television commercial.

One point which is especially noticeable in the present matter is of protecting the consumer interest. The Hon’ble Delhi High Court has followed the judicial trend of giving paramount importance to the consumer interest, as also held in the case of Colgate-Palmolive (India) v. Anchor Health & Beauty Care Pvt Ltd, wherein the Hon’ble Madras Court had held that “To permit two rival traders to indulge in puffery, without denigrating each other’s product, would benefit both of them, but would leave the consumer helpless. If on the other hand, the falsity of the claim of a trader about the quality and utility value of his product, is exposed by his rival, the consumer stands to benefit by the knowledge derived out of such exposure. After all, in a free market economy, the products will find their place, as water would find its level, provided the consumers are well informed. Consumer education, in a country with limited resources and a low literacy level, is possible only by allowing a free play for the trade rivals in the advertising arena, so that each exposes the other and the consumer thereby derives a fringe benefit. Therefore, it is only on the touchstone of public interest that such advertisements are to be tested”. Thus, an ideal advertisement has three main attributes, firstly, it highlights the market performance of the concerned product, secondly it makes sure that intellectual property rights of other entities is not violated and lastly and most importantly, the consumers are conveyed correct information about the product.

To sum up, as held in several cases, it is critical to find a balance between the interests of the manufacturer advertising its product and the interests of the consumers, so that the latter can benefit from the advertisement and make an informed decision.

[1] Reckitt Benckiser India Private Limited v Hindustan Unilever Limited (CS(COMM) 420/2021)

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Titiksha Sinha, Junior Associate at S.S. Rana & Co. has assisted in the research of this article.