By Rima Majumdar and Aditi Umapathy
Introduction
In the brand disparagement dispute between the Hindustan Unilever Limited (hereinafter, “Plaintiff”), and an American company, Abbott Laboratories (hereinafter, “Defendant”), and related persons, the Hon’ble Bombay High Court has delivered an Order in favor of the Plaintiff while declaring Defendant’s use of the Plaintiff’s products as part of its advertising campaign as disparagement of the Plaintiff’s product and brand.
Background of the Dispute
- This case is an action for injunction against the acts of disparagement, denigration and slander of the Plaintiff’s nutritional beverage Horlicks Diabetes Plus, infringement of trademark and infringement of copyright. The Plaintiff is India’s largest fast moving consumer goods (FMCG) company, with leadership in Home & Personal Care Products and Foods & Beverages.
- The Plaintiff’s trademark ‘HORLICKS’ has been a popular brand in Indian market since 1930s. It is stated that the first registration of the mark ‘HORLICKS’ in India dates back to 17th March, 1943 under number 13528 in class 29 and the same continues to be valid and subsisting till date.
- It is stated that the ‘HORLICKS’ trademark was recognized as a well-known trademark by Delhi High Court vide order dated February 01, 2002 in the matter of Horlicks Limited and Ors. vs. Bimal Khamrai & Anr., 2002 SCC OnLine Del 128.
- The product “
”, that is, Horlicks Diabetes Plus is the subject matter of the suit. It is alleged that the Defendants are circulating an
advertisement in Malayalam language in relation to the Defendant’s product viz. “Ensure Diabetes Care” which belittles Plaintiff’s said product as also infringes its registered trademarks. - It is alleged that the Plaintiff’s product is partially blurred, but is clearly visible and identifiable as the Plaintiff’s said product. The protagonist pushes away the Plaintiff’s product and places the Defendants’ product. It is alleged that this act of the protagonist puts the Plaintiff’s product in negative light.
Contentions of Plaintiff
- The Plaintiff contended that the impugned advertisement creates a negative impression amongst the members of trade and public that Plaintiff’s product is ineffective or of inferior quality.
- The Plaintiff further contended that the gesture of the protagonist pushing away the Plaintiff’s product gives a clear message that the said Product is inferior and is being rejected.
- That the Defendants could have very well used an unbranded product with a plain packaging and/or an unrelated packaging. However, the Defendants have deliberately chosen to show the Plaintiff’s said product in a negative light in the impugned advertisement to influence the Plaintiff’s customer base / promoters.
- That the impugned advertisement specifically targets and blatantly disparages and denigrates the said Product by insinuating the said Product is of inferior quality and further, such depiction of the said Product has caused deception amongst the pharmacy owners and trading channels which tends to influence doctors and further likely to affect behavior of the consumers.
Observations of the Court
- The Hon’ble Court pointed out that the Plaintiff’s Product
can be easily seen and identified behind the blurring filter in the Impugned Advertisement as can be seen from below table:-
| Blurred image of Plaintiff’s product used in impugned advertisement | Actual image of Plaintiff’s product |
 |
 |
- The Hon’ble Court noted that the basic premise of the impugned advertisement is to denigrate and slander the Plaintiff’s said Product. The act of pushing away the Plaintiff’s product ‘ ’ and substituting it with the Defendant’s product ‘
’followed by the explanation given by the protagonist about the Defendant’s product gives a clear message that the Plaintiff’s said Product is inferior and is therefore not being recommended. - The Hon’ble Court further observed that “applying the well settled principles of disparagement to the present case and after considering the manner, intent and message conveyed by the impugned advertisement, I prima facie find that the Impugned advertisement denigrates and disparages the Plaintiff’s said product.”
Principles of disparaging advertisement – The Hon’ble court also highlighted some of the well-established principles in cases for disparagement as follow:-
- A person may declare his own goods or services as best in world or that it is better competitor’s goods or services. The prohibition is on declaring the competitor’s products as bad. The act of denigrating the competitor’s goods would come under the disparagement.
- If the manner of commercial is ridiculing or condemning the product of the competitor, it amounts to disparagement. The following factors are essential to judge the question of disparagement, three factors are crucial –
- Intent of the commercial
- Manner of the commercial
- Storyline of the commercial and the message sought to be conveyed by the commercial.
Order of the Court
In light of the facts of the case and above-mentioned principles of disparaging advertisement, the Hon’ble High Court of Bombay, after being satisfied that there exists a prima facie case in favor of Plaintiff, opined that Plaintiff will suffer irreparable loss if the relief is not granted and balance of convenience is also in the favor of Plaintiff. Consequently, the Hon’ble Court granted an ex- parte ad-interim injunction against the Defendant, thereby restraining her from circulating the impugned advertisement and disparaging or denigrating the Plaintiff’s product in any manner.
Author’s Note
The implication of this case extend beyond the parties involved in the matter. Adoption of ethical standards in advertising not only fosters a fair and competitive market but also protects the individual’s intellectual property and goodwill. The Court has rightly passed an ex-parte ad-interim order against the Defendant because shrugging off and pushing away Plaintiff’s product implies pushing away its hard-earned goodwill and reputation which is against the principles of fair competition.
Aashi Nema, Junior Associate Advocate at S.S. Rana & Co. has assisted in the research of this article.