IIT- M IPR Moot Court Competition, 2022

Issue 3- WHETHER AN INTERIM INJUNCTION RESTRAINING THE SCREENING OF THE IMPUGNED

ADVERTISEMENT SHOULD BE GRANTED?

Latest News:

1. Delhi HC- Domex v. Harpic Case Justice- HUL’s domex, Reckitt’s Harpic – 10 th
November, 2021

the Delhi High Court has observed that an advertiser has to be given enough room to
play in the advertisement and that the plaintiff ought not be hypersensitive

2. Sebamed- German v. HUL’s Dove/Lux- pH- Bombay High Court

Definition:

Comparative advertising is defined in EU Directive 97/55/EC2 as “any advertising which

explicitly or by implication identifies a competitor or goods or services offered by a
competitor.” Article 2(1) & 2(2) of the Advertising Directive of EEC. European economic
community treaty.

No Indian statute defines the term “Comparative Advertising” though the Delhi High Court
has defined characteristics of Comparative Advertisement in Reckitt & Colman v. Kiwi
TTK[1996 PTC (16) 393].

ECJ- Holterhoff v. Freisslesben (2002) FSR 23- defined honest practices as a duty to act
fairly in relation to legitimate interests of the trademark owner.

Pertinent Law & Concepts:

Section 29(8) of the Trade Marks & Merchandise Act, 1999- infringement if mark takes
unfair advantage, contrary to honest practices, detrimental to distinctive character, against
reputation.

Section 30 (1) Trade Marks & Merchandise Act, 1999 Impugned Advertisement is in
accordance with honest practices in industrial or commercial matters

Section 36A(1) MRTP Act- misleading advertisement & false representation

Section 2(1) (nnn) of COPRA – Restrictive trade practice

Section 2(1) (r) (6) COPRA- Unfair trade practice

Article 19 (1) (a) – Freedom of Speech & expression – advertisement is commercial speech-
TAT Press ltd. Mahanagar telephone Nigam ltd.

Section 43(a) Lanham Act US

Article 10 bis Paris Convention- defines act of unfair competition and uses honest practices
term- confusion/discredit by false allegation, indication to mislead.

Article 17 TRIPS Agreement- exceptions to exclusive rights conferred by TM registration

Sui Generis

Reg Body:

The Advertising Standards Council of India (ASCI) is a non-statutory self-regulatory body

set up in 1985 and incorporated under Section 25 of the Companies Act, 1956. It entertains
and disposes of complaints based on its Code of Advertising Practice (CAP). The Code is
based on certain fundamental principles, one of which is “To ensure the truthfulness and
honesty of representations and claims made by advertisements and to safeguard against
misleading advertisements”.

Relevant Facts:

16 November 2021 till date - An advertisement by STRONG INC, USA was aired on all
cable, satellite and social media networks. The advertisement depicted a small boy in a
supermarket aisle going towards certain milk products, the packaging of which closely
resembled that of STRONG MILK PRODUCTS PRIVATE LIMITED containing the mark
STRONG prominently displayed and the GHEEWALA milk packets kept next to them. The
boy’s mother catches him and steers him away from them, and towards the milk cans of
STRONG INC, USA with the caption on screen reading – ‘Drink the Actual STRONG Milk
for True Health’.

Important Points for Arguments:

 Walters Kluwer v. Reed Elsevier (UK) Ltd- CCH Service & LEXISNEXIS (2006)
FSR 28- Users of CCH can contact LN- providing alternate is not playing unfairly and
is permitted.
 British Airways PLC v. Ryanair Ltd- FSR 2001 summarized the position on basis of
Section 10(4) of 1994 UK act, Advanta (Barclays Bank Plc v. RBS advanta 1996 RPC
307 and Vodafone v. orange personal ltd- 1997 FSR 34 which have been referred by
Indian courts in Pepsico v. Coca cola 2001-
A minute textual examination is not something a reasonable consumer would embark
on. Court should not encourage microscopic approach in construction of comparative
advertisement.
 What is allowed and what is not in CA
Calcutta High Court 1999- Reckitt Colman of India v. MP Ramchandran 1999 19
PTC 741 (cal) & Reckitt v. Kiwi TTK Ltd
(a) The trader is entitled to declare that her goods are the best, even though the
declaration is untrue.
(b) One may also say that her goods are better than her competitors, even though
such statement is untrue.
(c) For the purpose of saying that her goods are the best and that her goods are better
than her competitors, she can even compare the advantages of her goods over the
goods of the others.
(d) One, however, cannot while saying her goods are better than her competitors, say
that her competitors’, goods are bad. If she says so, she really slanders the goods of
her competitors. In other words, she defames her competitors and their goods, which
is not permissible.
(e) If there is no defamation, to the goods or to the manufacturer of such goods no
action lies, but if there is such defamation, an action lies and if an action lies for
recovery of damages for defamation, then the court is also competent to grant an order
of injunction restraining repetition of such defamation
 What is not allowed- Dabur India v. Emami Ltd- Chayanwanprash (2004) 29 PTC 1
during summer was not advisable- take amritprash- element of insinuation.
 Mere puffing is not actionable- advertisement will say his goods are superior- Godrej
sara lee ltd v. Reckitt benckiser 128 (2006) DLT 81– no negative ref to plaintiff
product and not defamatory so valid- two insects at the same time.
 Godrej consumer products ltd v. initiative media advertising – question of
disparagement (2012) 52 PTC 260 Bom
1. Intent of commercial
 2. Manner of commercial
3. Storyline of commercial
 Basis of Injunction – only if there is commercial dishonesty can it qualify to be a
prime facie case Boehringer Ingelhem tld v. vetplus ltfd 2007 FSR 29
 Bonnard v. Perryman 1891-4/ Motherdiary v. Zeetelefilms 2005 30 PTC Del- an
injunction will not be granted when defendant pleads justification that can be
sustained.
 Example of Dettol-Reckitt lauding its product by showing VIM’s product in the ad
without making any comment on it. They are permitted to do so- Reckitt v. MP
Ramachandran & Heinz India v. Glaxo smihtkline 2009 2 chn 479
 Lord denning in woordward v. hutchins held that the reason is interest of public to
know truth outweighs interest of plaintiff to maintain reputation. 1977 1 wlr 760
quoted in Khushwanth singh v. Maneka Gandhi 2002 Del 58 AIR
 Dabur v. Colgate (2004 PTC)- stops purchase of dant manjan and gives ill effects-
disparagement
 Dabur Ltd v. WIPRO Limited 2006 32 ptc 677 Del- naturally while comparing two
products – the ad will show the better one- law allows for it.
 Every extravagant statement may imply disparagement of goods to others in same
field- that is not actionable- Reckitt Benckister v, HUL- Heinz India v. Glaxo
smihtkline 2009 2 chn 479
 BMW Case- duty to protect legitimate interests. 1999 ER EC 235
 Gilette Company v. LA Laboratories Ltd 2005 FSR 37 at p/821- ECJ stated when
practices will not be honest in addition to Article 10 bis
-commercial connection
-unfair advantage
-discredit/disparagement/denignration of the mark
-imitation/replica
 No infringement when used to indicate kind/quality of goods
 The Madras High Court, however, took a significant departure from the above
traditional approach on commercial puffery in the case of Colgate-Palmolive (India)
Limited v. Anchor Health and Beauty Care Private
Ltd. 2009(40)PTC653(Mad) where it took into consideration 'consumer interest' while
deciding a dispute related to comparative advertising. The Court observed that
recognition of the right of advertisers to puff their own products, even with untrue
claims, de-recognises the rights of consumers guaranteed under the consumer laws of
the country. It further ruled that "to permit 2 rival traders to indulge in puffery,
without denigrating each other's product, would benefit both but would leave the
consumer helpless". It concluded that the consumer stands to benefit when the falsity
of the claim of a trader about the quality and utility value of its product is exposed by
a rival.