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I. WHETHER AN INTERIM INJUNCTION RESTRAINING THE SCREENING OF THE IMPUGNED

ADVERTISEMENT SHOULD BE GRANTED??

1. It is the humble submission of the Defendant that the present case fulfils required conditions for
granting an interim injunction restraining screening of impugned advertisement. The impugned
advertisement is not only against the reputation of the Defendant but also showcases the
malafide intent of the plaintiff as it is against honest practices and also tarnishes reputation of
the Defendant as stated in Section 29 (8) of Trademarks Act, 1999.1
2. Therefore it is reverently submitted on behalf of the Defendant that the impugned advertisement
is not aiming at mere puffery and therefore warrants actionable claim u/s. 29 (8) of the
Trademarks Act, 1999. This submission on behalf of Strong Milk Products Private Ltd. will be
made under the following grounds: Firstly, this is not a case of mere puffery and therefore is
actionable [A]. Secondly, case for disparagement can be made out in order to attract provisions
u/s. 29 (8) of the Trademarks Act, 1999. [B]. Thirdly, impugned advertisement does not meet the
condition of honest practice as required u/s. 30 (1) of the Trademarks Act, 1999 [C]. Lastly,
consumer interest should supersede commercial interest in the case at hand [D].

A. THIS IS NOT A CASE OF MERE PUFFERY & IS THEREFORE ACTIONABLE

3. The Trade Marks Act, 1999 (“Act”) contains specific provisions which deal with trademark
infringement by comparative advertising.2 The intention behind such provision is to ensure
that an advertiser who promotes his goods does not tarnish reputation of his competitors
thereby practice of unfair trade practice is prohibited.
4. In this regard, the leading case of Karamchand Appliances Pvt. Ltd v. Sh. Daiquiri Brothers
and Ors3 is pertinent to note where it was held that while a claim that the goods of a
manufacturer or the tradesman are the best may not provide a cause of action to any other
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 relief including redress by way of a prohibitory injunction. In the
case at hand, STRONG INC, USA has not just claimed that their goods are better but has also
implied that the goods of Defendant are fake by using the line- “Drink the actual Strong milk
1
Section 29(8) 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.
2
Section 29(8), Section 30 (1) in The Trade Marks Act, 1999.
3
2005(31) PTC 1 Del.
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for true health”4 implying that defendant’s milk/ milk products are not original, authentic or
are derived from duplicity/counterfeiting.
5. If it was a case of mere puffery, the scenario of implicitly claiming one’s goods to be un-
original would not be intent/manner of the commercial. Therefore, it is clearly not a a case of
mere puffery and is therefore actionable. 5 Additionally, the mode of communication plays
pivotal role in the advertising strategy. The fact that Plaintiff only operates through online
grocery apps but has advertised on all cable, satellite networks displaying the storyline of a
boy in a supermarket6 where the plaintiff’s goods cannot be available in the first place
showcases the mala fide intent behind the marketing and advertising strategy of the plaintiff.7
6. A judgment of the Delhi High Court in the case of Dabur India Ltd. v M/S Colortek
Meghalaya Pvt. Ltd8 is a landmark judgment in this regard. The consistent view taken by the
Courts till this judgment, except for the Colgate case9, was that advertisers can claim that his
products are the best in the world, compare his goods with those of his competitor’s and state
that his goods are better even if his claims are false. The advertiser in all these cases was only
prevented from disparaging or denigrating his competitor’s goods.
7. In this case for the very first time, the Delhi High Court first discussed the limits of
commercial speech as set out by the Supreme Court in Tata Press v MTNL.10 In the Tata
Press case, advertisements were held to be part of commercial speech under Article 19 (1)
(a). It was further held in the Tata Press case11 that protection under Article 19 (1) (a) is not
available if the advertisement is false, misleading, unfair or deceptive. This judgment of the
Supreme Court in Tata Press was taken into consideration and it was held that an advertiser
cannot make unsubstantiated false claims even about his own goods as it is not protected
under commercial free speech. Applying this to the case at hand, it can be deciphered that
making a claim that the plaintiff’s products are the “actual STRONG 12” is in itself false,
misleading, unfair and deceptive. It is not only suggesting that Defendant’s goods are
notional, non-existent but are also trying to create an illusion that Defendant’s mark
STRONG and brand STRONG is fake and was created as a duplicate of the plaintiff’s.

4
Moot Proposition, Para 8.
5
(2018) 4.2 IJLPP 21 Comparative Advertising and Generic Disparagement : A Probe into its Status in the
Indian Legal System in the Light of Recent Cases, Pratyayee Saha and Rudrani Sengupta.
6
Moot Proposition, Para 8.
7
Journal of Intellectual Property Rights Vol 22, May 2017, pp 113-120
8
Dabur India Ltd. v M/S Colortek Meghalaya Pvt. Ltd; 2010 (42) PTC 88 (Del).
9
AIR 2005 Del 102.
10
1995 AIR 2438, 1995 SCC (5) 139.
11
Ibid.
12
Moot Proposition, Para 8.

MEMORIAL on behalf of DEFENDANT

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8. It was further held that13 while hyped-up advertising may be permissible, it cannot transgress
the grey areas of permissible assertion, and if does so, the advertiser must have some
reasonable factual basis for the assertions made in the advertisement. It is not possible,
therefore, for anybody to make an off-the-cuff or unsubstantiated claim that his goods are the
best in the world or falsely state that his goods are better than that of a rival. Therefore, it is
most humbly submitted that the grey areas of assertion used by the Plaintiff are
unsubstantiated and in lieu of the recent adulteration report 14, their clear intent was to ride on
the defendant’s reputation and also tarnish it for their unsolicited commercial gain.

B. DISPARAGEMENT CAN BE MADE OUT IN IMPUGNED ADVERTISEMENT

9. Disparagement15 can be defined as, “any kind of representation, which runs down or paints
another's product in an unfavourable light”. 16
The impugned advertisement in the case at
hand paints Defendants products in unfavourable light twice- once explicitly when the mother
steers the boy away from their goods and secondly when the phrase “actual STRONG” is
displayed.17
10. In Pepsi Co. Inc. v. Hindustan Coca Cola Ltd.18, the appellant filed a suit against the
respondent for an injunction against the commercials shown by respondent, “Yeh Bacchon
Wali Hai. Bacchon Ko Yeh Pasand Aayegi”, and “Wrong Choice Baby”. The contention of
the appellant was that the commercial made the children to understand that young people do
not drink sweet Cola. The Court found that the commercial depicts inferior quality of the
appellant's product by sending a message that kids should drink A over B and A is a wrong
choice. Such depiction denigrating the product of the appellant was found by the Court as
disparagement and not puffing up.19 This is the exact storyline, intent, manner and message
that is sought to be achieved by the impugned advertisement 20 and is therefore, disparagement
of the defendant’s goods.

13
AIR 2005 Del 102.
14
Moot Proposition, Para 5.
15
Black’s Law Dictionary (6th Edition 1990), also quoted in Godrej Sara Lee Ltd. v Reckitt Benckiser (I) Ltd.,
2006 (32) PTC 307 Del.
16
Federation of Parenternal Manufacturers of India v. Core Parenternal Ltd., 1994 (2) CTJ 183.
17
Moot Proposition, Para 8.
18
(2003) 27 PTC 305 (Del).
19
De Beers Abrasive Products Ltd. v. International General Electric Co. of New York Ltd. (1975) 1 WLR 972 :
(1975) 2 All ER 599.
20
Annamalayar Agencies v VVS and Sons Pvt. Ltd 2008 (38) PTC 37 (mad) para 29.

MEMORIAL on behalf of DEFENDANT

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11. Clever advertising can indeed hit a rival product without specifically referring to it. 21 Once it
is made out that the trademark of the competitor has been used, and then the next question is
whether the mark has been used in such a manner to disparage and denigrate the goods of the
rival trademark owner.22 It is therefore humbly prayed that this Hon’ble Court take into
account that while disparagements may be direct, clear and brazen; they may also be subtle,
clever and covert. Further, due to lack of evidence on what is Actual STRONG, Plaintiff
cannot take the “Defense of Truthful Disparagement”23

C. IMPUGNED ADVERTISEMENT IS NOT IN ACCORDANCE WITH HONEST PRACTICES IN

INDUSTRIAL OR COMMERCIAL MATTERS

12. In order to determine purpose of comparative advertising and to fulfil the exception u/s. 30 (1)
of the Trademarks Act, 1999, the test of ‘honest’ advertising 24 and test of a misleading 25
advertisement should be applied26. Furthermore, Article 10bis of the Paris Convention for
protection of Industry Property27 uses the expression “honest practices in industrial or
commercial matters” which is pari materia to the language used in Section 30 (1) of the
Trademarks Act, 1999 which cannot be used in defence by the plaintiff.
13. Article 10bis defines an “act of unfair competition” as one which is contrary to acts that create
confusion, falsely discredit goods of a competitor or mislead the public as to the nature of
gooods. Impugned advertisement does not only discredit goods of the defendant but also to
misleads the consumers by showcasing both the brands GHEEWALAS & STRONG MILK
PRODUCTS PRIVATE LTD despite the fact that STRONG INC, USA was only showcasing
its milk packets in the advertisement.28
14. At this juncture, it is important to note the case of HLL v. Marico Industries29, wherein the
complainant sold coconut based hair oil called “Clinic Plus” whereas the respondent sold
edible coconut oil called “Parachute”. The respondent issued an advertisement, which said
“when they say “Plus” they mean 42% coconut oil and 58% paraffin and when we say
21
2003 (27) PTC 305 Del.
22
Dabur India Ltd. v Wipro Ltd CS (OS) No.18 of 2006, decided on 27 March 2006 (Delhi High Court).
23
John Wolff, “Unfair Competition by Truthful Disparagement”, 47 Yale Law Journal 1304 (1938) at 1315.
24
As per Section 29(8) and 30(1) of the Act. The court held that this is an objective test which depends on
audience who are reasonable. Honesty must be evaluated vis-a-vis kind of goods or services in question. In this
regard, the Court used an example to elucidate: an advertisement for second hand cars may not be honest if used
to encourage the use of ‘powerful medicines’.
25
V-Guard Industries Ltd. v. Pushkar Appliances (Pvt) Ltd, 1999 CTJ 366
26
Havells India Ltd & Anr v. Amritanshu Khaitan, CS (OS) 107/2015, disposed off on 20 November 2015
27
Supra 18, Art. 10bis, Paris Convention.
28
Moot Proposition, Para 8.
29
1999 CTJ 412.

MEMORIAL on behalf of DEFENDANT

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parachute we mean 100% coconut oil. When you use coconut oil don't use diluted but buy
100% pure”; The Court applying the tests laid down in the Lakhan Pal's case30 held that the
impugned advertisement may convey an impression to a reasonable man that the product sold
by the complainant is not pure. It was held that the comparison was unjust since the two
products were not similar with respect to their uses, and therefore had the effect of misleading
consumers. Thus, a representation containing a statement apparently correct in the technical
sense may have the effect of misleading the buyer by using tricky language.31
15. This judgment read in consonance with the impugned advertisement makes room for clarity. It
leads the consumers to believe that milk/milk products sold by Defendants are not pure and
showcasing milk products in an advertisement for milk packets that are not similar with uses
had the effect of misleading consumers and should be held as against honest practices.
Consumer having a mistaken impression may be permissible but misleading impression should
not be allowed and therefore, it is humbly submitted that the injunction be granted.

D. CONSUMER INTEREST MUST SUPERSEDE COMMERCIAL INTEREST IN THE CASE AT HAND

16. The Consumer Protection Act 1986 defines ‘unfair trade practices’. 32 This act protects the
two most important rights of a consumer: right to be informed about purity and consumer
education. In Peoples Union for Civil Liberties (PUCL) v. Union of India 33, the apex court
observed that disinformation, misinformation and non-information, all equally create a
uniformed citizenry which would finally make democracy a monocracy and a farce. Hence, it
is very important that the consumers should not be misinformed or misled. The whole point
of comparative advertisement should be for the benefit of the consumers. Therefore, in a suit
for disparagement, the advertisement should be viewed from the standpoint of such
consumers.34
17. In the case at hand, it is necessary to note that milk is an essential good 35 and very recently an
adulteration report was published as against the Plaintiff36 and the timing of the impugned

30
(1989) 3 SCC 251.
31
Lakhan Pal v. MRTP Commission, (1989) 3 SCC 251.
32
Consumer Protection Act, Section 6 (1986).
33
(2003) 4 SCC 399.
34
Reckitt Benckiser (India) v. Hindustan Lever Ltd., 2008 (38) PTC 139 (Del)
35
Daily Food v. Union of India, 1993 (25) DRJ 514.
36
Moot Proposition, Para 5.

MEMORIAL on behalf of DEFENDANT

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advertisement having a deceptive storyline explains the intent of the plaintiff and embodies
duty on this Hon’ble court to safeguard public interest. 37
18. Ending with what was stated in historic judgement by the Hon’ble High Court of Madras in
Colgate v. Anchor38, in a free market economy, the products will find their place, as water
would finds its level, provided the consumers are well informed. The Court observed that the
law as it developed from the decision of the Calcutta High Court in Reckitt Colman v M. P.
Ramachandran39 up to Godrej Sara Lee case40 on the basis of English precedents recognizes
the right of advertisers to puff their own products even with untrue claims without
denigrating or slandering other's product. But the recognition of this right of the advertisers
would be to de-recognise the rights of the consumers guaranteed under the Consumer
Protection Act, 1986.
19. Therefore, given the sensitivity of the matter at hand, it is most humbly prayed before this
Hon’ble High Court of Sardam to grant the interim injunction against screening of impugned
advertisement keeping in mind the disparagement, dishonest practice employed by the
plaintiff and the collective public interest at stake as opposed to commercial interest.

37
2014) 3 DWRTC 21 Comparative Advertising — Trademarks and Competition — A canter through the
changing legal positions and views by Elizabeth Verkey & Jithin Saaji Isaac.
38
Colgate Palmolive (India) Limited v. Anchor Health and Beauty Care Private Ltd., 2009 (40) PTC 653.
39
Reckitt & Colman of India Limited v M.P. Ramachandran and Anr., 1999 PTC (19) 741 (Cal.).
40
2006 (32) PTC 307.

MEMORIAL on behalf of DEFENDANT