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TMI Blog2003 (9) TMI 705X X X X Extracts X X X X X X X X Extracts X X X X ..... hat the Court has to look at whether the advertisement or the commercial, as the case may be, merely puff the product of the advertiser or in the garb of doing so directly or indirectly contends that the product of the other trader is inferior. In the present case in the garb of puffing up its product i.e. Thums Up prima facie respondents have tried to depict the product of the appellant as inferior. The infringement of trade mark u/s 29(1) of the Act of 1958 in India is not based on the law in England as provided u/s 4(1)(b) of the 1938 Act. The 1938 Act changed the law in England to constitute the use of a trade mark of a rival trader for the purpose of comparison as infringement. Hence in view of the law laid down in India comparative advertising is permissible and the infringement occurs only when the registered mark is used by the rival for the purpose of indicating the origin of the goods as being his. From the analysis of the arguments advanced by the counsel for the parties it becomes clear that in terms of Section 29(1) of the Act infringement would occur if appellant's mark had been used in the course of trade. Section 29(1) of the Act which is reproduced as under req ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... inistrative provisions of the Member States concerning misleading advertising where the Council of the European Communities having regard to the Treaty establishing the European Economic Community, and in particular Article 100 thereof while taking into consideration the effect of misleading advertisement which reaches beyond the frontiers of individual Member States, adopted the directives in the form of Articles. Article 3(a) deals with Comparative advertising which shall, as far as the comparison is concerned, be permitted if the following conditions are met: (a) it is not misleading according to Articles 2(2), 3 and 7(1). (b) it compares goods or services meeting the same needs or intended for the same purpose; (c) it objectively compares one or more material, relevant, verifiable and representative features of those goods and services, which may include price; (d) it does not create confusion in the market place between the advertiser and a competitor or between the advertiser's trade marks, trade names, other distinguishing marks, goods or services and those of a competitor; (e) it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, g ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nor the balance of convenience lies in favor of the appellants for the grant of interlocutory injunction. The learned Judge further observed that the issues which have been raised in the suit can be decided only after the evidence is led by the parties. That in order to protect the right of the appellants, in the meantime it has been ordered that if at the final stage and after detailed arguments, the appellant succeeds in the suit, the respondent would pay damages and therefore, directed the respondents to furnish an undertaking to pay damages to the appellants within four weeks from the decision of the suit in favor of the appellants and against the respondents. It is this order of the learned Single Judge which is under challenge. 6. We shall now state the facts and the conclusion arrived at by the learned single Judge as are material for the purpose of deciding this appeal. 7. The appellant is a registered owner of the mark PEPSI , PEPSI COLA and GLOBAL DEVICE . It also claims to be the owner of the copy right in the words Yen Dil Maange More , which is a trade mark of the appellants under the Trade and Merchandise Marks Act, 1958, Appellants claim exclusive rights in the roll ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hether the globe devise and the phrase Yeh Dil Maange More is copy rightable and if so whether this copy right has been infringed by the respondent; (iii) whether the essence of the roller coaster has been copied by the respondents and if so the affect of the same. 11. Firstly, we have to appreciate the commercial in which on the bottle the word PAPPI is written, whether it meant and stood for PEPSI . From the visual it is clear that bottle is PEPSI though the word written is PAPPI . For arriving at this conclusion we are supported by three factors namely the actor i.e. the boy who is called from the audience is asked to give his preference of Cola drink. He mutters PEPSI in mutted manner but from movements of his lips, it can be seen he says PEPSI . Secondly, there are only three cola drinks i.e. PEPSI, THUMS UP and COCA COLA . The latter two belong to respondents, hence the bottle of Cola colour on which word Pappi is written has to be PEPSI . Thirdly, the GLOBAL DEVICE and the colour scheme on that with the word PAPPI is that of the appellant. Hence, it can safely be concluded that the comparison in the commercial is with PEPSI . Now the question for consideration is whether the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s that that drink would be liked by the children because it is sweet. In his words he says. Who meethi hain, Bacchon ko meethi cheese pasand hai . He discredited the drink one which according to him has a sweet taste. He preferred the other drink which according to him tastes strong and that grown up people would prefer the same. At that point, the lead actor lifts the lid from both the bottles and the one which is said to be strong taste reveals to be Thums Up , and one which is sweet, word PAPPI is written on the bottle with a globe device and the colour that of the PEPSI . Realizing that he had at the initial stage given his preference for PEPSI and subsequently finding it to be a drink for kids, the boy felt embarrassed. This embarrassment gesture he depicts by putting his hands on his head. 14. Second advertisement which appears at pages 35-45 (Annexure B) filed with the plaint is another commercial advertisement in which the star actor asks the audience. Ek Sawaal do glass. Bacchoako konsi drink pasand aayegi? As in the first commercial, in this commercial also the drinks are covered and one described as a sweet drink called Bacchonwala and the bottle comparing the Globe Devi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng the injunction, Mr. Iqbal Chhagla, Sr. Advocate contended this Court would be hampering healthy competition in the market. Rival claim of better product in comparison to rival product can only be displayed in the market place. This is nothing but puffing one's products which can give no cause of action to a competitor. Moreover, courts are not the appropriate forum to resolve the differences of opinion regarding quality of products of the parties. The appellant has not come to the court with clean hands. Appellant in fact has been indulging in the same advertisement war, therefore, is not entitled to any equitable relief. The appellant has in fact been protected by the learned Single Judge vide the impugned order thereby asking the respondent to furnish undertaking that in case appellants succeed it can recover damages from the respondents. Supreme Court in the case of Gujarat Bottling Co. Ltd. v. The Coca Cola Co ., has observed that while considering the grant of temporary injunction the Court should beside other consideration, must also look to the conduct of the party invoking the jurisdiction. That the conduct of the party seeking the relief should be free from blame wh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is sweet, children like sweets. It is meant for children). The moment it is said, the lid is lifted up by lead Actor from the bottles. The drink which the boy says Bachhon wali meant for children, on that it is written PAPPI . The other bottle is of Thums Up. The comparison is in fact between Pepsi and Thums Up . It can be seen from the fact that the bottle named as PAPPI is shown to certain Cola of Cola colour. The logo used in the commercial on that bottle consists of circular device and red blue colour Along with the word PAPPI written underneath. That the respondent depicted the bottle with the mark PAPPI and the global device on it is a clear insinuation that the respondent is showing the product of the appellant i.e. PEPSI meant for children only. Though the actor mouthed the word PEPSI in a mute form yet from lip movement one can say he was uttering the word PEPSI . It is an admitted case of the parties that there are only three Colas having Cola colour namely PEPSI, COCA COLA and THUMS UP, There is no other drink having Coia colour. The bottle of PAPPI which the advertiser showed has Cola colour, it is compared with THUMS UP which is owned by the respondents, who are also t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ter knowing his preference conveys a very serious message particularly when the lead actor says wrong choice baby . This is a clear indication that the product of the appellants is inferior. The observation of the learned Single Judge that this comparison whereby Thums Up has been stated to be a drink for grown up is poking fun, to our mind, is not a proper appreciation of the commercial. Puffing does not mean one should denigrate the product of the competitor. 19. Admittedly puffing one's product by comparing others' goods and saying his goods are better is not an actionable claim but when puffing or poking fun amount to denigrate the goods of the competitor, it is actionable. Calcutta High Court in the case of Reckitt Colman of India Ltd. v. M.P. Ramchandran and Anr. 1999 PTC (19) 741 while dealing with the question of disparagement, laid down the principles which the court should look into while granting the injunction. One of the principles is that the Court has to look at whether the advertisement or the commercial, as the case may be, merely puff the product of the advertiser or in the garb of doing so directly or indirectly contends that the product of the other trad ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... legal right which has been infringed, therefore, there is no question of going to the market place for fighting the commercial war as suggested by respondents. Dr. AM. Singhvi's contention that the conduct of the appellant is such which would dis-entitle it to any discretionary relief or that the appellant has not come to the court with clean hands. The war of advertisement against each other's products is going on but that does not entitle the respondents to contend nor can be permitted to plead the past conduct as a good defense to denigrate the product of the appellant nor the market place is a suitable substitute for injunction. 23. The next question for consideration is about infringement of copy right and literary work of the appellant namely the phrase Yen Dil Maange More . According to appellants the ownership and copyright of the slogan Yeh Dil Maange More vest with them. Appellants got the copyright of this slogan registered in July, 1999. It attained distinctive character. This work has been exclusively associated with the appellant and has a connection with the product of the appellant. It is fully evocative of appellant's work and business. To support his c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y the GLOBE DEVICE is a registered trade mark of the appellant. By showing GLOBE DEVICE of the colour scheme on the bottle on which word PAPPI is written and then saying Yeh Dil Maange No More . Mr. Kapil Sibal said such use of a registered trade mark in comparative advertising constitutes infringement of registered trade mark in terms of Section 29(1) of the Trade and Merchandise Marks Act, 1958. The effect of permitting the use of the Globe Device which is a registered trade mark of PEPSI to any other manufacturer for its product or for comparison would take away the statutory rights of the appellants. Non protection against such infringement would lead to drastic consequences and would be contrary to the basic tenets of Copyright Law which have repeatedly been affirmed by the highest court of this country. 26. Countering these arguments Mr. Iqbal Chhagla said that registration of copyright does not create any statutory right. It only show existence of copyright and nothing more. Copyright can be rebutted and challenged. To support this contention he placed reliance on the following decisions (i) Satsang and Anr. v. Kiron Chandra, ; (ii) Manojab Cine Productions v. A. Sundaresan, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o render the use of the mark likely to be taken as being used as a trade mark. 29. Usage should be in relation to the goods of the appellant and in such a manner rendering the use of mark likely to be taken as being used as a trade mark by the respondent. That is not even the case of the appellant. It is nowhere alleged by the appellant that respondents have used the globe device of the appellants for its products nor passed on its products under the Trade Mark or globe device of the appellant. We find force in the submission of Mr. Iqbal Chhagla that the impugned advertisement neither uses the trade mark of the appellants in the course of trade nor in any manner suggest the connection of appellants trade mark with respondent's goods. Moreover comparative advertising is permissible as held by this Court in Reckitt Coleman v. Kiwi TTK Ltd. (Supra) subject to the rider that it does not denigrate the product of the appellant. Therefore, the contention of the appellant that the use of its trade mark for comparative advertising is ipso facto infringement of the appellants trade mark prima facie has no substance. In support reliance can be placed on the following decisions; (i) Kavir ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gement. To support his contention he placed reliance on the decision of Supreme Court in the case of R.G. Anand v. Deluxe Film, wherein the Apex Court observed that; Thus, the fundamental fact which has to be determined where a charge of violation of the copyright is made by the plaintiff against the defendant is to determine whether or not the defendant not only adopted the idea of the copyrighted work but has also adopted the manner, arrangement, situation to situation, scene to scene with minor changes or super-additions or embellishment here and there. Indeed, if on a perusal of the copyrighted work the defendant's work appear to be a transport rephrasing or a copy of a substantial and material part of the original, the charge of palagiarism must stand proved... 32. Mr. Kapil Sibal contended that the respondents are misconstruing the provisions of Section 14 of the Copyright Act to justify their conduct. They cannot be allowed to take shelter to justify their unjustifiable conduct. To support his contentions he placed reliance on the decision in the case of AGL Sydney v. Shortline Country Council, 17 IPR 199, which according to him is on all fours applicable to the facts of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e roller coaster commercial of the respondents is not a copy of the advertisement of the appellant, therefore, the provisions of Section 14 of the Act are not applicable to the facts of this case. 35. We were shown the commercial of roller coaster during the proceedings by both parties. By seeing the same an impression which one gathers is that roller coaster of the respondent is a copy of the theme of the roller coaster of the appellant. The roller coaster commercial of the appellant is an original work of the appellant, therefore, covered under Section 14 of the Act. Not only the presence of roller coaster is replica of the appellant's commercial but even the dress of the boys is also similar. Relying on the observation of Apex Court in the case of R.G. Anand v. Delux Films, it can prima facie be concluded that the roller coaster commercial of the respondent is nothing but a literal imitation of the copyright work of the appellant with some variations here and there. Having said so we would be failing in our duty by not restraining the respondents from showing its roller coaster commercial in the present form.From the above analysis, we partly accept the appeal and restrain t ..... X X X X Extracts X X X X X X X X Extracts X X X X
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