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TMI Blog2008 (2) TMI 932X X X X Extracts X X X X X X X X Extracts X X X X ..... ny incorporated under the Companies Act, 1956 and engaged in the business of manufacturing and marketing pharmaceutical products and some prominent products of the appellant company are; 1. MOOV a pain reliever ointment 2. Stopache-ache reliever tablets 3. Itchguard-a itch reliever ointment, amongst others. 4. All the products of the appellant-Company are quite popular and widely accepted in the market and all the products are such popular that even the similar get up or trade dress of any other such kind of product would lead any person to believe close association of the same with the appellant-Company. 5. The dispute in the present appeal is in respect of the product MOOV. The appellant-Company has developed such trade mark with a particular trade dress including colour scheme, get up, arrangement and trade dress for the article, which is registered trade mark of the appellant and also registered copyright under the Trademarks Act and Copyright Act respectively. The appellant is, therefore, having exclusive right as provided under the Trademarks Act and Copyright Act and any person uses any identical or deceptively similar label, mark, trade dress or making substa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gives her respondent's product VOLINI Gel and says YOU NEED A TRUE PAIN RELIEVER . The indirect message and suggestion contained in the advertisement is that the product of the appellant, namely, MOOV is not enough and has not acquired good quality for remedy of backache, lower backache and joint pain and for other aches and the customers shall continue to suffer from the various aches, as mentioned above, if they continue to use the appellant's product, so the respondent's product, namely, VOLINI, is better and a true pain reliever. The TV commercial, in question, contains a subtle message and suggestion that the product shown in the advertisement are ineffective as ache reliever and the viewer shall thus, switch to the product of the respondents. 9. It is, therefore, the case of the appellant that the message and suggestion seeks to disparage and is showing the product in the advertisement, which is easily associated in the minds of the consumers and the general public with the artistic work and colour scheme and the mark of the appellant's product MOOV. The box shown in the advertisement is depicted, being a replica of the artistic work and colour scheme and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the advertisement, it is undoubtedly and evidently clear that the product which is disparaged or denigrated in the said advertisement is having identical colour scheme, arrangement, general trade dress with that of the appellant's product MOOV. Despite these facts, the learned City Civil Judge, Ahmedabad has rejected the application of interim relief vide his order dated 25.10.2007. 12. It is this order of the learned City Civil Judge, Ahmedabad which is under challenge in this Appeal From Order. 13. Mr. Mihir Joshi, learned Senior Counsel appearing for the appellant has submitted that the learned City Civil Judge, Ahmedabad has erred in appreciating certain admitted positions which are as under: i. The impugned advertisement does disparage and denigrate one similar product i.e. pain reliever ointment. ii. The trade dress, colour scheme and other arrangement of the get up of the said product/box is identical and/or similar to appellant's product MOOV in all respects. iii. The said advertisement does convey a message that the product of the respondents is only STRUE PAIN RELIEVER as compared to entire other class. iv. The appellant is the registered prop ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r print or publish the same in any manner, which amounts to an infringement of copyright, especially when the appellant is the registered proprietor under the Trade Marks Act, 1999. He has further submitted that the respondents have used the mark without any license or permission from the appellant, therefore, as per the provisions of Section 29 of the Act, the respondents are liable for infringement. In view of the provisions contained in Section 29(4), 29(6), 29(7) and 29(8) of the Trade Marks Act, 1999 the respondents are using the appellant's trade mark and hence, respondents are liable for infringement. 17. Mr. Mihir Joshi has further submitted that respondents have committed infringement of copy right though the copyright of the appellant is already registered and registration certificate is also produced before the Court. Mr. Joshi, in support of the submission has relied on decision of the Delhi High Court in the case of Karmachand Appliances Pvt. Ltd. v. Shree Adhikari Brothers and Ors. reported in 2005(2) AJ 570 wherein it is observed that what is called disparagement is already described in BLACK'S LAW DICTIONARY. It is referred to in para 20 of the Judgment t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ayers made by the appellant in the injunction application is required to be granted. 22. Mr. M.J. Thakore, learned Senior Counsel appearing with Mr. Pranav G. Desai for the respondent has submitted that the learned Trial Judge, after considering the facts and circumstances and law as well as judgments cited on behalf of the parties held that there is no merit in the notice of motion filed by the applicant and that it cannot be said that the product of the appellant alleged to have been shown in the advertisement is denigrated and disparaged. He has further submitted that the respondent has not shown the applicant's product MOOV in the advertisement, rather the product shown in the advertisement is completely different product which is not even remotely connected with the appellant's products. He has further submitted that this would be more than evident if the clippings are shown in the size in which they would be displayed on the television. The minimum TV screen size on which the advertisement would appear would be about 20 . He has further submitted that despite knowledge, false statements are made in the plaint by the appellant to the effect that the product shown in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... efers to the product of the Appellant and therefore, by construing that the Respondent is showing the product which is distinctively seen as PACE is completely wrong and without any substance. 26. Mr. Thakore further submitted that it is settled law that one cannot claim any copy right on the use of basic colour which is always treated as common colour. The customers are not persuaded by the basic colour and no one goes to the retailer or chemist shop asking for a particular colour of the carton by which he will be induced to purchase the product. There can be no monopoly over colours and in this particular case, the PACE which is appearing on the product pack is entirely a different word and has been prominently used which is in no way identical to or similar to the product under the trademark MOOV of the appellant. He has further submitted that applicant cannot claim any copy right on the colour Violet and in the absence of the same, the claim made by the Appellant that TV commercial of VOLINI contains certain message of the product of appellant is devoid of any merits and it cannot be considered to be a case of disparagement and denigration of the product of the Appellant. He ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of honey and proclaims that the product of the defendant is superior. The Court further held 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 is that it is permissible for an advertiser to proclaim that its product is the best. This necessarily implies that all other similar products are inferior. The Court further held that in comparative advertising, a consumer may look at a commercial from a particular point of view and come to a conclusion that one product is superior to the other, while another consumer may look at the same commercial from another point of view and come to a conclusion that one product is inferior to the o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ther trader or manufacturer of similar goods, the moment the rival manufacturer or trader disparages or defames the goods of another manufacturer or trader, the aggrieved trader would be entitled to seek reliefs including redress by way of a prohibitory injunction. After considering these principles, the Court took the view in the facts of that case that the devices manufactured by parties are based on the same concept. The concept is simple and intelligible even to a layman. There is no real distinction between the two products either from the point of view of the concept underlining their manufacture or technology used for the purpose. And yet the defendant claims that its product chases away mosquitoes at twice the speed. There is no scientific basis or method for verifying that claim as indeed there appears to be no basis even for making it. But in order to puff up the product, the defendant may be entitled to boast no matter unjustifiably about the efficacy of the device and the speed which the mosquitoes would flee from it. Parliament may in the larger interests of the consumer public by law provide a mechanism to regulate and/or prevent the making of such exaggerated claims. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er were of little relevance. Although most such codes were concerned to ensure probity, they frequently covered other matters as well. The nature of the products or services no doubt would effect the degree of hyperbole acceptable. Honesty had to be gauged against what was reasonably expected by the relevant public of advertisements for the goods or services in issue. 5. The final words of the proviso, that the use of the mark must take unfair advantage of, or be detrimental to, the distinctive character or repute of the trade mark at most meant that the use must either give some advantage to the defendant or inflict some harm on the character or repute of the registered mark so as to be above the level of deminimis. 6. The leaflet and tables could not be treated as separate. They were distributed together and would be read together. Illegitimate use of a registered trade mark would not necessarily be saved by putting the registered trade mark on one document and the dishonest part on another. If they were intended or likely to be read together the advertisement should be read as a whole. 7. It was most unlikely that any reasonable reader would take the view that the adver ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as true even on the plaintiffs' interpretation. They denied malice. The parties agreed that the judge should apply the one meaning rule in libel when considering the claim based on malicious falsehood. On the trade mark infringement claim, the plaintiffs argued that this comparative advertising fell outside the realm of Section 10(6) Trade Marks Act 1994 (honest commercial practices) and took unfair advantage of the distinctive character and repute of the Vodafone mark. The defendants denied dishonesty and unfair advantage. While dismissing the plaintiff's claim, the Court held that: 1. When applying the one meaning rule to determine the falsity of a statement, the Judge as notional jury had to decide upon a single natural and ordinary meaning of the words used. 2. In determining this ordinary meaning, the Judge had to take into account the fact that the public expect a certain amount of hyperbole in advertising. The more precise and specific the claim, the more likely it was that the public would take it seriously. 3. A comparative advertisement used a trademark otherwise than in accordance with honest practices if it was objectively misleading to a substantial po ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... g its telephone services with those of the plaintiff and which analysed the costs of its best price package with those of the plaintiff's price packages. The plaintiff issued a writ claiming malicious falsehood and trade mark infringement and obtained an ex parte injunction. The defendant filed some evidence in order to prevent the continuation of the injunction but indicated that it was not the totality of the evidence it wished to file. At the suggestion of the Court, the plaintiff restricted its claim to trade mark infringement and the defendant restricted its defence accordingly. Both parties put in further evidence under time pressure, and both indicated that they might wish to file further evidence. The defendant claimed that its conduct fell within the meaning of honest practices in industrial and commercial matters within the meaning of Section 10(6) of the Trade Marks Act, 1994. While refusing injunction but granting liberty to apply and ordering a speedy trial, the Court held as under: 1. A person who knowingly put forward a false claim could not be said to be acting in accordance with honest practices. 2. The test of honesty was an objective one in the sense th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... leading and relied on Sections 10(6) (use permitted to identify proprietor's own goods) and 11 (2) (b) (descriptive use permitted) of the Trade Marks Act, 1994. The claimant argued that the defendant's use was not in accordance with honest practices in industrial and commercial matters, that Section 11(2)(b) did not protect comparative advertising and that Section 10(6) should be treated as a defence only if there was compliance with the conditions for comparative advertising laid down in Council Directive of October 6, 1997 on Comparative Advertising (97/55). While dismissing the action, the Court held that: 1. The defence of use of a trade mark as a description provided by Section 11(2)(b) of the Trade Marks Act 1994 extended to the use of a description by way of use of a trade mark to describe goods. 2. The Comparative Advertising Directive was not intended to amend the Trade Marks Directive and it would follow that it was not intended to amend or affect the interpretation of any national law passed to implement the Trade Marks Directive. 3. The Comparative Advertising Directive did not require implementation in member states until after the acts complained of. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he only objectionable part in such advertisement can be denigrating and disparaging the product of the rival and showing the product to be better than the rival, even if it is not so, is permissible and in further arriving at the conclusion that the appellant has no prima facie case and balance of convenience is not in their favour and that considerable hardships would be caused to the respondents if the injunction is granted. 36. The finding arrived at by the learned City Civil Judge will have to be viewed in light of the fact that the appellant's product MOOV which is a pain reliever ointment is registered under the Trade Mark Act with a particular trade dress, colour scheme, get up, arrangement and dress and the said product has been developed since 1986 87. The respondent's product VOLINI is also a pain reliever ointment. However, the TV commercial was started by the respondent very recently and only objectionable part in that TV commercial is the colour of the product pack which is akin or similar to the product pack of the appellant. It is also to be seen that the respondent has not filed any reply to the suit before the City Civil Court and only the list of docume ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... actices in industrial or commercial matters. By telecasting such TV commercial, reputation of the Trade Mark of the appellant in no way is affected and hence, there is no question of infringement of the Trade Mark of the appellant by advertising the respondent's product in the T.V. Commercial. The Court is not convinced with the submission of Mr. Thakore as there appears to be no honest practice of comparing one's product with a non-existent product. By adopting a violet colour which is adopted by the appellant to cover up its product and the appellant's product is by and large known in the general public with that colour, and since the appellant's product is much popular amongst the general public as a pain reliever, the respondent has tried to take unfair advantage which may amount to an infringement of the Trade Mark within the meaning of Section 29(8)(a) of the Act. By taking shelter of a non-existent product violet coloured pack,, if the respondent tries to establish that its product is true pain reliever than the other product, it would certainly affect the reputation of the Trade Mark of the appellant and to this extent, Clause (c) of Section 29(8) of the Act ..... X X X X Extracts X X X X X X X X Extracts X X X X
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