Disparagement means “criticising someone in a wrong way” [Eveready Industries India Ltd Vs. Gillette India Ltd. (A. P. O. No.320 of 2012 & 321 of 2012; C. S. No.59 of 2012)]
Disparagement is “to speak of slightingly, undervalue, to bring discredit or dishonour upon, the act of depreciating, derogation, a condition of low estimation or valuation, a reproach, disgrace, an unjust classing or comparison with that which is of less worth” [The New International Webster Comprehensive Dictionary].
Comparison lies at the root of modern advertising [Cornish, Intellectual Property, Fourth Edition]. Comparative advertising is a widely used form of commercial advertising in many countries. This type of advertising intends to influence consumer behavior by comparing the features of the advertiser’s product with that of the competitor’s product. Companies use comparative advertisements to promote, compare and highlight the superiority of their product with respect to that of the competitor.
While comparative advertisement based on honest (i. e. not misleading) comparison of the factors of one trader’s product with those of another is perfectly legal, certain safeguards are necessary to prevent unfair and misleading advertising.
The Advertising Standard Council of India (“ASCI”), established in 1985, has adopted a Code for self-regulation in advertising, amongst other things, providing guidelines for comparative advertisements. It provides that “advertisements shall neither distort facts nor mislead the consumer by means of implications or omissions.” Comparison between rival products must be factual and capable of substantiation and should not distort facts or mislead customers either with respect to the advertised product or with the one it is compared. ASCI Code also states that such advertisement must not denigrate, attack or discredit other products.
Settled Legal Principle regarding comparative advertisements
I) A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue.
II) He can also say that his goods are better than his competitors’, even though such statement is untrue.
III) For the purpose of saying that his goods are the best in the World, or his goods are better than his competitors’, he can even compare the advantages of his goods over the goods of others.
IV) He, however, cannot, while saying that his goods are better than his competitors’, say that his competitors’ goods are bad. If he says so, he really slanders the goods of his competitors. In other words, he defames his competitors and their goods, which is not permissible.
Thus, there is a thin yet shifting line between comparative advertisement and product disparagement/disparaging advertisement and the extent to which competitors may legally use their creativity to promote the superiority of their products without denigrating rival products based on inaccurate and misleading facts.
Some precedents dealing with the issue of disparaging advertisement
Reckitt & Coleman Vs M P Ramachandran [1999 (19) PTC 741] – Robin blue vs. Ujala
Facts
The plaintiff is a manufacturer of whitener under the brand Robin Blue. The defendants are a manufacturing whitener under the brand Ujala.
The concerned advertisements have depicted as follows:
- the product of the petitioner is shown by intentionally showing the container in which the product of the petitioner is sold and in regard to which container the petitioner has a registered design.
- By showing that the product contained in the said container is priced at Rs. 10/- the respondents in no uncertain terms have identified the product of the petitioner since the only blue whitener priced at or around Rs. 10/- is the product of the petitioner.
- In the advertisement it has been contended that the blue is uneconomical.
- It has then been contended that at Rs. 10/-, the average blue is the most expensive to whiten your clothes.
- Then it has been added “what is more, you have to use lots of blue per wash”. While making the said comment the container of the petitioner has been shown up-side- down and it has further been shown that the liquid is gushing out. The object is obviously to show that the product of the petitioner priced at Rs. 10/- gushes out as a squirt and not in drops while using and therefore, it is an expensive way to whiten clothes.
- It has then been shown in the advertisement that blue is a product of obsolete technology and therefore, it cannot dissolve completely in water and as such forms sediments at the bottom of the wash bucket.
- Blue leaves dirty blue patches on clothes because it forms sediments. The insinuation, therefore, is sediment of blue leaves blue patches on freshly washed cloths since blue cannot dissolve in water.
Held
The whole impact of the advertisement is to project that the expensive product of the petitioner by reason of its container gushes out uncontrollably and therefore causes wastage and then it cannot dissolve in water and leaves sediments, which sediments cause blue patches on freshly washed cloths. It appears to me that the object of the advertisements is to project to the existing and future customers of the petitioner that in spite of spending large sums of money for whitening freshly washed clothes what you are getting is blue patched clothes by using the petitioner’s product. If this is not saying that the petitioner’s product is rubbish in a sophisticated manner then what it is? The answer must; be it is so.
In a suit of this nature one has to look at whether the advertisement merely puffed the product of the advertiser or in the garb of doing the same directly or indirectly contended that the product of the other trader is inferior. There cannot be any dispute that in the concerned advertisements blue was stated to be of inferior quality. Although, for having depicted the container and the price in the advertisement together it is difficult to proceed on the basis that the defendant No. 1 was not referring to Robin Blue, but assuming in the advertisement insinuations are not made against Robin Blue and the same were directed to all blues as has been stated in no uncertain terms in the affidavits, can it be said that it was not made against Robin Blue? The answer is a definite “no”, because Robin Blue is also a blue.
Dabur India Ltd Vs. Wipro Limited [2006(32) PTC 677]- Dabur Honey Vs. Wipro Sanjivani Honey
Facts
The Plaintiff manufactures honey under the brand “Dabur”. The Defendant also manufactures honey under the brand “Wipro Sanjivani”.
The concerned advertisements have depicted as follows:
One Mrs. Paradkar is shown holding a bottle of honey, which is in fact the plaintiff’s bottle (without the label) and the voice over is to the effect that the bottle was purchased two years ago but it has remained the same (jaisi ki waisi). In comparison one Mrs. Rao purchased Wipro Sanjivani Honey, which got consumed almost immediately.
According to the plaintiff, the said TV commercial in respect of its product disparages and denigrates the plaintiff’s product.
Held
The intent of the commercial is to suggest that the product of the defendant, that is, Wipro Sanjivani Honey is far superior to that of the plaintiff, that is, Dabur Honey. While doing so, the commercial does not denigrate or disparage the product of the plaintiff – it merely compares the two brands of honey and proclaims that the product of the defendant is superior. It seems to me that it is one thing to say that the defendant’s product is better than that of the plaintiff and it is another thing to say that the plaintiff’s product is inferior to that of the defendant. The commercial clearly intends to say (and so it does) that as compared to the product of the plaintiff, the product of the defendant is far better. The hidden message in this may be that the product of the plaintiff is inferior to that of the defendant but that will always happen in a case of comparison – while comparing two products, the advertised product will but naturally have to be shown as better. The law, as accepted by this Court, is that it is permissible for an advertiser to proclaim that its product in the best. This necessarily implies that all other similar products are inferior.
Disparagement of a product should be defamatory or should border on defamation, a view that has consistently been endorsed by this Court. The degree of disparagement must be such that it would tantamount to, or almost tantamount to defamation. In the present case, the overall audio-visual impact does not leave an impression that the story line of the commercial and the message that is sought to be conveyed by it is that Dabur Honey is being denigrated, but rather that Wipro Sanjivani Honey is better.
Reckitt and Colman of India Ltd. v. Kiwi T.T.K. Ltd. [1996 PTC (16) 393] – Shoe Polish- Cherry Blossom Vs. KIWI
It was held that the general principle is that the Courts will injunct an advertiser from publishing or circulating an article if the dominant purpose is to injure the reputation of the plaintiff. An advertiser is not entitled to say that his competitor’s goods are bad so as to promote his goods. If an action lies for defamation, an injunction may be granted. It was further held that though a comparative advertisement is permissible, the same shall not, in any manner, be intended to disparage or defame the product of the competitor.
Dabur India Ltd. v. Emami Limited [2004 (29) PTC 1 (Delhi)] – Chyawanprash – Dabur Chyawanprash Vs Himani Sona-Chandi Amritprash
The offending voice over of the advertisement, as translated into English, was`forget Chyawanprash in summers, eat Amritprash instead’ (Garmion mein Chyawanprash bhool jao, Himani Sona Chandi Amritprash khao). In that case, the Learned Judge held that in the advertisement there is an insinuation against using of Chyawanprash during the summer months and since Chyawanprash in its generic sense is being disparaged, the plaintiff therein being a manufacturer of Dabur Chyawanprash is also being disparaged.
Dabur India Ltd. v. Colgate Palmolive India Ltd. [2004 (29) PTC 401 (Delhi)] – Tooth powder – Dabur Vs Colgate
The competing products were Lal Dant Manjan tooth powders. The advertisement showed a cine star stopping purchasers of Lal Dant Manjan powder and informing them of its ill effects by rubbing it on a pair of spectacles. The rubbing process left marks on the spectacles, which were termed as akin to sandpapering. As against this, the advertiser’s product was endorsed as 16 time less abrasive and non-damaging to the spectacles. The cine star is heard telling the purchaser that it is easy to change spectacles but not the teeth. This was held to be disparaging the plaintiff’s product and an injunction was granted against airing the advertisement. The Learned Single Judge reiterated the principle that while praising its product, an advertiser cannot describe the competitor’s product as inferior, thereby damaging its reputation.
Factors to be kept in mind while deciding the question of disparagement
- Intent of the Commercial.
- Manner of the Commercial.
- Storyline of the Commercial and the message sought to be conveyed [Pepsi Co Inc. & Ors. Vs. Hindusthan Coca Cola Ltd-2004 (3) CHN (CAL) 527].
Relevant provision of the Trade Mark Law
Section 29((8) of the Trade Marks Act, 1999 – A registered trade mark is infringed by any advertising of that trade mark if such advertising—
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark.
Possible Defences against a disparagement action
- Truth is an absolute defence in an action for disparagement.
- Freedom of Speech under Article 19(1) of the Constitution of India-There can be an argument that advertisement is a commercial speech protected under right to freedom of speech and expression guaranteed under Article 19(1) of the Constitution of India.
However, commercial speech which is deceptive, unfair, misleading and untruthful would be hit by Article 19(2) of the Constitution of India and can be regulated/prohibited by the State.
- Section 30 (1) of the Trade Marks Act, 1999 – Nothing in section 29 shall be preventing the use of registered trademark by any person with the purposes of identifying goods or services as those of the proprietor provided the use. A.) Is in accordance with the honest practices in industrial or commercial matters, and B.) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
The latest TV Commercial of Reckitt Benckiser
In the backdrop of the above discussion let us consider the recent TVC of Reckitt Benckiser (India) Pvt Ltd (Reckitt) advertising their product, hand wash, under the trademark “Dettol” comparing the same with the red soap of Hindustan Unilever Ltd. (HUL) under the trademark “Lifebuoy”. The said TVC is the subject matter of a suit before the Hon’ble Bombay High Court between HUL and Reckitt.
Story Board
What the TVC is showing
1. If the doctor has to be kept away this type of soap has to be kept at bay 2. Shows red coloured soap and mentions “Ordinary soap” 3. Takes the red coloured soap away and put Dettol hand wash in place of such soap 4. Dettol hand-wash provides 10 times better protection than red soap which is ordinary 5. Red soap should be discarded and Dettol should be preferred over red soap.
What the TVC suggests
(a) Reckitt deliberately chosen the colour Red only in an attempt to lower the goodwill and reputation of HUL’s Red soap under the trademark “Lifebuoy” [Being the market leader in red soap under the trademark “Lifebuoy”.
(b) Reckitt purported to assert that the Red colour soap manufactured by HUL are ordinary and inferior and has lesser efficacy compared to Dettol hand wash.
(c) The TVC of Reckitt purports to convey that Dettol hand wash is 10 times more effective compared to HUL’s red soap and as such the same is ordinary.
(d) By the said TVC Reckitt has sought to suggest that HUL’s Red soap cannot perform in a satisfactory and/or effective manner as that of the Reckitt’s Dettol hand wash and by suggesting as such Reckitt has sought to act in a manner which is detrimental to the distinctive character to HUL’s soap bearing the colour Red.
(e) The said TVC of Reckitt is to dilute the goodwill and reputation of HUL’s Red soap and is aimed to work against the goodwill and reputation attached thereto.
(f) The Reckitt has sought to deliberately juxtapose information in the said advertisement to create confusion and deception in the minds of the general public and the members of the trade and by acting as aforesaid have resorted to unfair trade practice and competition.
(g) By the aforesaid advertisement Reckitt is purported to create an impression that HUL’s soap bearing the colour ‘red’ cannot perform satisfactorily, as Reckitt’s Dettol hand wash performs much better than the ’red’ soap.
No formal order appears to have been passed in the matter yet. However, applying the settled principles of law regarding comparative advertisement and considering the case laws discussed above it appears that the Dettol TVC of Reckitt amounts to disparagement of the red Lifebuoy soap of HUL. Apart from disparagement the TVC also amounts to infringement of trademark “Lifebuoy” under Section 29(8) of the Trade Marks Act, 1999 [Assuming that the shape of the red shop as shown in the TVC is registered in favour of HUL]. Further, the TVC is also contradictory to the directive of WHO [World Health Organisation] which recommends washing of hand with soap preferably and with handwash only if soap is not available. It is pertinent that Reckitt itself submitted in Court that it would suspend the TVC for one month.
This Article is written by Mr. Gautam Banerjee. He has been practicing extensively in the field of Intellectual Property Law for the past about 20 years. He has vast experience in attending and advising client; formulating strategy, search, filing and prosecution of Trade Mark, Patent, Design & Copyright applications; Revocation of Trade Marks, Patents, Designs and Copyright before the Registrar/Controller and also before the Intellectual Property Appellate Board (IPAB); Drafting Agreements, handling domain name issues; IP Litigation both Civil and Criminal.
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