2004 (9) TMI 603 - HC - Companies Law

Advertisement runs down all Lal Dant Manjan tooth powders as severely detrimental to dental health and in particular damaging the tooth enamel - Disparagement of Plaintiff's Product - Generic Disparagement - Violation of Intellectual Property Rights - Applicability of Section 29(8) of the Trade Marks Act, 1999 - Defense of Truth and Studies - Balance of Convenience and Irreparable Injury - HELD THAT - The view that generic disparagement of a rival product without specifically identifying or pin pointing the rival product is equally objectionable. Clever advertising can indeed hit a rival product without specifically referring to it. No one can disparage a class or genere of a product within which a complaining plaintiff falls and raise a defense that the plaintiff has not been specifically identified. In this context the plaintiff has rightly rejected the offer of the defendant to drop the container from its advertisement so as to avoid the averred identification of the plaintiff's product. The advertisement campaign on the visual media has an immediate impact on the viewers and possible purchaser's mind particularly when a well known cinestar is endorsing it. The plaintiff has thus made out a prima facie case of comparative strength particularly when the defendant does not deny that its campaign points out the deleterious effect of Lal Dant Manjan powder. The balance of convenience is also in the favor of the plaintiff as the effect of the advertisement aired cannot be repaired readily and easily. The averred right of the defendant to inform the purchasing public of the ill effects of the Lal Dant Manjan powder based on its commissioned study cannot tilt the balance of convenience in the favor of the defendant particularly when the plaintiff also seeks to rely upon studies commissioned by it to back up the merits of its product. Consequently, the non grant of an interim injunction would cause irreparable injury to the plaintiff not compensable in damages. The court granted an injunction, restraining the defendants from telecasting the TV commercial Colgate Tooth Powder as depicted in Annexure 'A' to the plaint. The interim relief application was disposed of accordingly.

Summary

Issues Involved:
1. Disparagement of the plaintiff's product.
2. Violation of Intellectual Property Rights.
3. Applicability of Section 29(8) of the Trade Marks Act, 1999.
4. Defense of truth and general criticism.
5. Balance of convenience and irreparable injury.
6. Prior similar advertisement campaign and estoppel.

Summary:

1. Disparagement of the plaintiff's product:

The plaintiff, Dabur India Ltd., claimed that the defendant's advertisement disparaged all Lal Dant Manjan tooth powders, particularly targeting Dabur's product, which holds 80% of the market share. The advertisement depicted Lal Dant Manjan as damaging to dental health and tooth enamel, contravening established legal principles that while a tradesman can extol his goods, he cannot slander his competitor's products.

2. Violation of Intellectual Property Rights:

The plaintiff argued that using their product for comparison in the advertisement violated their Intellectual Property Rights. However, the court did not find sufficient evidence to support this claim.

3. Applicability of Section 29(8) of the Trade Marks Act, 1999:

The plaintiff initially invoked Section 29(8)(a) & (c) of the Trade Marks Act, 1999, but later did not press this point as they could not show that their mark was registered.

4. Defense of truth and general criticism:

The defendant contended that their advertisement was based on studies showing Lal Dant Manjan's harmful effects and argued that general criticism of a product class does not give rise to a cause of action. However, the court held that generic disparagement is actionable, as established in previous judgments, and the plaintiff with a significant market share was entitled to complain about such disparagement.

5. Balance of convenience and irreparable injury:

The court found that the balance of convenience favored the plaintiff, as the advertisement's impact on viewers could not be easily repaired. The plaintiff had made a prima facie case, and the non-grant of an interim injunction would cause irreparable injury not compensable in damages.

6. Prior similar advertisement campaign and estoppel:

The defendant referred to a similar advertisement campaign from 1998, arguing that the plaintiff's current complaint was estopped. The court rejected this argument, stating that the present issue concerned a recent campaign and the previous correspondence did not have material bearing on the current case.

Conclusion:

The court granted an injunction restraining the defendants from telecasting the TV commercial "Colgate Tooth Powder" as depicted in Annexure 'A' to the plaint, finding that the plaintiff had established a prima facie case of generic disparagement and the balance of convenience was in their favor.