CS(OS) 1359/2007 Page No.1 of 56 THE HIGH COURT OF DELHI AT NEW DELHI % Judgment delivered on: 07 .07.2008 + CS (OS) 1359/2007 RECKITT BENCKISER (INDIA) LTD. ... Plaintiff - versus - HINDUSTAN LEVER LIMITED ... Defendant Advocates who appeared in this case: For the Plaintiff : Mr Chander M. Lal with Ms Shikha Sachdev and Ms Kirpa Pandit. For the Defendant : Mr Gourab Banerji Sr Advocate with Mr Aditya Narain, Mr Sameer Pareekh, Mr Sumit Lao, Mr Nitin Thukral, Mr Kush Chaturvedi, and Mr Arun Krishnan. CORAM:- HON'BLE MR JUSTICE BADAR DURREZ AHMED 1. Whether Reporters of local papers may be allowed to see the judgment ? Yes 2. To be referred to the Reporter or not ? Yes 3. Whether the judgment should be reported in Digest ? Yes BADAR DURREZ AHMED, J 1. This is a suit for permanent injunction and damages for disparagement and unfair trade practices. The plaintiff and the defendant are competitors. The plaintiff is aggrieved by the defendant's advertisement on television, which allegedly disparages the plaintiff‟s soap sold under the trade mark “DETTOL”. The defendant's advertisement is for promotion of its soap “ LIFEBUOY”. CS(OS) 1359/2007 Page No.2 of 56 Reliefs sought by the plaintiff: 2. The plaintiff has prayed that the defendant be restrained by a permanent injunction from (i) issuing or telecasting the impugned advertisement, or in any other manner disparaging the goodwill and reputation of the plaintiff and its product sold under the trade mark DETTOL, in any other advertisements and in all media whatsoever including the electronic media; (2) using the depiction of the plaintiff's soap or any other soap deceptively similar to that of the plaintiff's in its advertisement or in any other manner disparaging the goodwill and reputation of the plaintiff and its product sold under the trade mark DETTOL; (3) using any other indicia whatsoever to associate with/depict the plaintiff or its products in its advertisements issued in any and all media whatsoever including the electronic media. The plaintiff also seeks damages to the extent of Rs 20,00,050/- for disparagement, denigration and tarnishment of its goodwill and reputation by the defendant by its impugned advertisement. Additionally, the plaintiff has also prayed for punitive and exemplary damages against the defendant as well as for costs of the suit. The Plaint: 3. It is stated in the plaint that the plaintiff has been involved in the manufacture of the famous antiseptic disinfectant under the trade mark DETTOL, for over 70 years and that the mark DETTOL has become synonymous with good hygiene and, today, it is a household CS(OS) 1359/2007 Page No.3 of 56 name and is the most widely used antiseptic disinfectant in the country. It is stated in the plaint that the history of DETTOL dates back to the year 1929 when the DETTOL antiseptic liquid was developed. It is alleged, that as an antiseptic germ disinfectant, DETTOL has an unparalleled reputation in the medical profession. It is also averred that DETTOL has continuously evolved to meet modern day demands, and now incorporates a range of innovative antiseptic, disinfectant and cleaning products ranging from antiseptic liquid, hand wash and the DETTOL toilet soap which has been manufactured and sold by the plaintiff continuously since 1981. 4. It is further stated in the plaint that the present action concerns the alleged intentional and deliberate disparagement by the defendant of the plaintiff's DETTOL toilet soap which is identified by the members of the trade and public by its colour and its new modern, distinctive and unique shape, a representation of which is as under:- [Front view of DETTOL Original soap] It is stated that on the front of the soap the trade mark “DETTOL” and the sword devise is clearly visible. The plaintiff contended that the consumers CS(OS) 1359/2007 Page No.4 of 56 recognise the plaintiff's product by the colour and distinctive shape of the soap. 5. It is further alleged that the DETTOL toilet soap, when packed, is also identified by its distinctive green coloured packaging. A representation of the plaintiff's product packaging is as below:- [Photograph of the wrapper of Dettol Original soap] 6. It is further stated in the plaint that in 1981 the DETTOL soap was launched as an orange coloured bar and rectangular in shape without any curves. The present shape with the curved edges and the curvature in the middle was adopted by the plaintiff on or about May, 2006. The new improved DETTOL soap has an all new modern shape with curved edges and a distinctive curvature in the middle which helps consumers easily identify and distinguish the product from other products. It is averred that while there are other orange coloured soaps in the market, the plaintiff's soap is the only one with the distinctive shape, as indicated above. It is also stated that the new improved DETTOL soap has three variants available in CS(OS) 1359/2007 Page No.5 of 56 the market. One being the said DETTOL Original and the two others being DETTOL Skincare, a white soap, and DETTOL Cool, a blue soap. As per the plaint, out of the three variants, the DETTOL Original bar of soap ,which has an orange colour, is the most popular. According to the plaint, the sale of DETTOL Original constitues 80% of the total DETTOL soap sales. 7. The plaintiff has further stated that the packaging of the soap has always been of the distinctive green and white colour combination and the packaging has become synonymous with the famous DETTOL brand of the plaintiff. It is alleged that the purchasing public perceives the orange coloured bar with its distinctive shape and the distinctive green and white packaging to be synonymous with the DETTOL Original soap. It is alleged that the plaintiff has been continuously and uninterruptedly marketing its DETTOL products with the distinctive packaging consisting of the green and white colour combination including sword device in India since the year 1933. 8. The plaintiff has further stated in the plaint that it had recently announced in a press release that it is contemplating to introduce new variants of its flagship brand DETTOL and it launched a new ad campaign -- “Surakshit Parivar” -- to create awareness of the practice of hygiene at the family level. The plaintiff has allocated a budged of about Rs 5 crores for the aforementioned programme. It is also stated that by virtue of extensive sales and sales promotion activities, the orange coloured DETTOL soap, its CS(OS) 1359/2007 Page No.6 of 56 new curved shape along with the distinctive green and white packaging is associated exclusively with the Plaintiff. 9. It is alleged that the plaintiff was shocked when it was recently brought to its attention that the defendant has introduced an advertisement on television, which intentionally and deliberately disparages the soap of the plaintiff sold under the trade mark DETTOL and the unique and distinctive packaging described above. The defendant's said advertisement is for its LIFEBUOY soap. The plaintiff alleges that a bare viewing of the said advertisement would be sufficient to convince this Court of the malicious intention of the defendant to increase the market share of its LIFEBUOY soap by tarnishing the goodwill and reputation of the plaintiff's soap i.e. DETTOL Original Soap. 10. It is alleged that the soap which has been disparaged in the impugned advertisement is virtually identical to the plaintiff's product. The contours and the curvature in the middle on the toilet soap in the defendant's advertisement is virtually identical to the contours of the plaintiff's DETTOL Original soap. The only difference being that the name of the plaintiff's product and the logo are not shown in the advertisement. The colour of the soap in the defendant's advertisement is also virtually identical to that of the DETTOL Original soap of the plaintiff. The packaging of the toilet soap used in the defendant's advertisement is also similar to the packaging of the plaintiff's said soap. It is alleged that from the above, it is apparent that the CS(OS) 1359/2007 Page No.7 of 56 soap featuring in the defendant's advertisement is designed to give an impression to the buyers that the offending soap is the plaintiff's DETTOL Original soap. The advertisement then, allegedly, proceeds to disparage the soap in the following manner:- (i) The advertisement begins with a couple returning home after getting wet in the rain. The wife then proceeds to take a new soap to go and have a bath. The green coloured packaging, the orange coloured soap and the distinctive DETTOL shape is clearly visible in the advertisement. The intention of this scene is to convey to the audience that the offending soap pertains to an established soap i.e., DETTOL Original soap presently being used by the family. (ii) The next frame shows the husband, a medical doctor, and the children telling the lady of the house not to use the soap and the vocals state: “Oh God bachaa lena naadaan ko aql dena....Hum sab ko bachaa lena”. It is alleged that the use of a doctor protagonist is once again relevant as DETTOL is an established brand in the medical profession. (iii) The next frame shows the doctor husband explaining to the wife the reason as to why she should not use the offending soap and, instead, should use the Defendant's LIFEBUOY soap by stating that normal antiseptic soaps make the skin dry leading to cracks in the skin thereby permitting the germs to enter the cracks in the skin while the defendant's soap fights germs and keeps the skin protected. According to the plaintiff this scene is clearly intended to give out the message that the Plaintiff's soap CS(OS) 1359/2007 Page No.8 of 56 is not effective against fighting germs whereas the Defendant's soap is effective against fighting germs. The words used in the advertisement are:- “Dua ki zarurat padegi is dawa ke saath. Aam antiseptic sabun twacha ko rukha kar dete hai jis se dararon mein kitanu ghus jaate hain...isi liye naya Lifebuoy skin guard jo kare kitanuon per waar aur banaye suraksha ki bhi deevar.” According to the plaintiff it is relevant to mention that as DETTOL is used in respect of an extremely well known brand of antiseptic liquid, the use of the term “dawa” (medicine) is clearly intended to draw the attention of the viewer to the Plaintiff's product. (iv) In the next frame the lady is then shown to go and have a bath with the Defendant's soap and come out very satisfied with the same. According to the plaintiff, this falsely indicates that the defendant's soap is effective against fighting germs while the plaintiff's DETTOL soap is not. 11. It is further alleged by the plaintiff that the defendant's said advertisement is nothing but a slanderous attempt of the defendant to increase the market share of its LIFEBUOY soap by defaming and disparaging the worth and reputation of the plaintiff's product. It is also alleged that the said advertisement outreaches the limits of allowed competitive advertising and blatantly denigrates the reputation and goodwill of the plaintiff's well established and leading brand. The said advertisement not only shows that the defendant's product is good but also very clearly depicts that the plaintiff's product is completely worthless. Consequently, the said advertisement amounts to disparaging, denigrating and defaming the CS(OS) 1359/2007 Page No.9 of 56 products of the plaintiff. It is also alleged that the use of the soap bar including its unique curved shape and the distinctive packaging which is virtually identical to that of the plaintiff's by the defendant is resulting in dilution and debasement of the hard earned reputation and goodwill of the plaintiff's world-known and widely used products. 12. The plaintiff has further averred that the defendant had also filed a caveat dated 16.7.2007 which clearly indicates the defendant's mala fide intentions as against the product of the plaintiff inasmuch the defendant was aware that the soap depicted in its advertisement is the plaintiff's soap and also knew that the plaintiff would initiate action against it and hence they filed a caveat. It is alleged that the cause of action first accrued to the plaintiff in or around July 2007, when they first came to know of the impugned advertisement of the defendant and that the cause of action is a continuing one. The said advertisement is being telecast on various television channels in Delhi and is being watched by thousands of people in Delhi. The present suit has been filed for the reliefs indicated above in these circumstances. The Written Statement: 13. The defendant in its written statement raised preliminary objections. The first objection was that the jurisdiction of this Court is specifically excluded under Section 9 of the Code of Civil Procedure, 1908 (hereinafter referred to as the 'CPC') in respect of the present suit, being a CS(OS) 1359/2007 Page No.10 of 56 Suit for Permanent Injunction and Damages for Disparagement and Unfair Trade Practices, which is specifically covered under the provisions of the Monopolies and Restrictive Trade Practices Act, 1969 (hereinafter referred to as the 'MRTP Act') and the Consumer Protection Act, 1986. 14. It has also been alleged by the defendant that the plaintiff's suit is misconceived as no cause of action against the defendant has accrued in favour of the plaintiff and against the defendant inasmuch as the advertisement, in question, refers to ordinary antiseptic soaps and the plaintiff's soap is neither an antiseptic soap, nor an ordinary (unbranded) soap. A reference was also made to a decision of this Court in the case of Reckitt Benckiser (India) Limited v. Naga Limited & Others: 2003 (26) PTC 535 (Del.), wherein it was allegedly held that the plaintiff's soap is not an antiseptic soap. The defendant has also taken the objection that the plaintiff's suit deserves to be dismissed as not maintainable as the plaintiff does not have a monopoly over the colour or over the shape of the soap and cannot claim exclusivity over the colour, shape or packaging of the soap. It has also been alleged that the defendant further believes that the shape, contours and curvatures of the plaintiff's orange coloured soap DETTOL is not registered under the Design's Act to give the plaintiff an exclusive right to use the same. The defendant has also alleged that the plaintiff has approached this Court with unclean hands and is guilty of suppression of material facts. CS(OS) 1359/2007 Page No.11 of 56 15. Apart from the said preliminary objections, the defendant has taken the stand that it is engaged in the marketing of several toilet soaps including the toilet soaps being sold and marketed under the brand name “LIFEBUOY” and that its product, LIFEBUOY soap, through an extensive marketing network across the country and its intrinsic quality, enjoys considerable goodwill and reputation among the Indian consumers. It is stated that LIFEBUOY is a global brand, which was launched in the United Kingdom in 1894 as a product for personal hygiene and that it is India's oldest toilet soap brand and has been synonymous with health and hygiene in India since 1895. It is alleged by the defendant that the said product sold under the brand name LIFEBUOY for over 110 years has acquired substantial goodwill in the market and, in fact, has become a household name. It is alleged that the defendant's soap has been associated with hygiene and protection against germs long before the plaintiff was incorporated or even started manufacturing or marketing their soap. 16. With regard to the allegations of disparagement, the defendant submitted that the intent of the defendant's advertisement is not to disparage the product of the plaintiff but rather aims at educating the consumers and public at large to understand the difference between toilet soaps containing glycerine, which have a moisturizing effect on the skin and give a long term benefit, on the one hand and ordinary antiseptic soaps in the market, on the other, which may not contain glycerine and do not give to the consumers the benefit of moisturizing the skin and removing the possibility of formation of CS(OS) 1359/2007 Page No.12 of 56 cracks which is a breeding ground for germs. It is further stated that the defendant's claims about its soap being better than any other ordinary antiseptic soap is based on the laboratory test conducted by it. 17. The defendant submitted that the said TV advertisement has to be seen in its totality and cannot be seen in an isolated and unnatural manner frame by frame. It is further contended on behalf of the defendant that the intent, manner and story line and message of the defendant's advertisement is that its soap is better than ordinary antiseptic soaps because it is rich in glycerine and vitamin E. It is further stated that the plaintiff's soap, being a Rs 200 crore brand, cannot be termed as an ordinary soap and in any event, the plaintiff's soap is not an antiseptic soap. In the entire advertisement, there is no reference whatsoever to the trademark DETTOL or the sword device and, therefore, there is no reference to the plaintiff's product. 18. In the written statement, the defendant has further stated that the soap appearing in the defendant's advertisement is not the plaintiff's soap, inter alia, for the following reasons:- (a) The colour of the soap shown in defendant's advertisement is yellow in comparison to the plaintiff's orange soap; (b) The soap shown in defendant's advertisement is taken out of a pale green single-colour packaging, whereas the plaintiff's DETTOL TOTAL is sold in green and white and its other variants are sold in blue and white packaging; CS(OS) 1359/2007 Page No.13 of 56 (c) There are many other soaps in the market with curvatures and contours similar to the plaintiff's soap. (d) The brand name DETTOL and/or the Sword device are embossed on all the plaintiff's products but the same are admittedly missing from the soap shown in the defendant's advertisement. 19. The defendant has also stated that without prejudice to the above, even assuming, without admitting, that the soap shown in the defendant's advertisement was that of the plaintiff, still it is settled law that a tradesman is entitled to declare his goods to be the best in the world, even though the declaration may be untrue. He can also say that his goods are better than his competitors; even though such statement may be untrue. And, for the purpose of saying that his goods are the best in the world or his goods are better than his competitors he can even spell out the advantages of his goods over the goods of others. It is alleged that the plaintiff itself has been showing its soap to be better than that of the defendant's in its various advertisements, both in India and abroad. The written statement contains further detailed statements countering the allegations made in the plaint. However, the sum and substance of the defendant's case is clear from what has been noticed above. CS(OS) 1359/2007 Page No.14 of 56 Documents & Witnesses: 20. The plaintiff has filed several documents being Ext. PW1/1 to PW1/19 and PW1/DX1. The defendant has filed Ext. DW1/1 to DW1/18 and DW2/1 to DW2/9. The video clip of the advertisement has been filed in a CD and is marked as Ext. PW1/2. The plaintiff had produced one witness - Mr Mohit Marwah, Brand Manager (Dettol) of the plaintiff company as PW1. The defendant has produced three witnesses – (1) Mr Anuj Kumar Rustagi, Global Marketing Manager, Lifebuoy Soaps (DW1); (2) Dr Rajan Raghavachari, Regional Senior Product Development Manager of the defendant (DW2) and (3) Dr Hemangi Jerajani, Dermatologist (DW3). The evidence of these witnesses were in the form of affidavits in the first instance and they were subjected to cross-examination by the opposing counsel. The Issues: The following issues have been framed by virtue of the order dated 17.8.2007:- “1. Whether the depiction in the advertisement of the defendant of soap refers to the Dettol soap of the plaintiff? (OPP) 2. Whether the advertisement of the defendant disparages or denigrates the soap of the plaintiff? (OPP) 3. Whether the impugned advertisement seeks only to promote the superiority of the defendant LIFEBUOY soap over an ordinary antiseptic soap? (OPD) 4. Whether the plaintiff is guilty of suppression of material facts? If so, its effect? (OPD) CS(OS) 1359/2007 Page No.15 of 56 5. Whether the impugned advertisement constitutes an attack on the goodwill and reputation of the Dettol brand of the plaintiff? (OPP) 6. Whether the present suit is barred on account of the provisions of the MRTP Act, 1969 and/or the Consumer Protection Act, 1986? (OPD) 7. Whether the plaintiff is entitled to any damages for disparagement, denigration, loss of goodwill and reputation? If so, the extent thereof? (OPP) 8. Whether the plaintiff is entitled to punitive and exemplary damages? If so, the extent thereof ? (OPP) 9. Relief.” Issue No.1: Whether the depiction in the advertisement of the defendant of a soap refers to the Dettol soap of the plaintiff? (OPP) 21. The video clip (Ext. PW1/2) of the advertisement in question, as indicated in the form of a story board, shows:- 1. A man and his wife returning home on a rainy day. The wife exclaims “Kya baarish hai” (what rain). The man places his white coat and stethoscope which indicates that he is a doctor. He goes and sits with his children (boy and girl) on the sofa. The children are watching a cricket match on television. CS(OS) 1359/2007 Page No.16 of 56 2. The next frames show that his wife plans to take a bath saying “chalo main naha leti hoon” (come, let me take a bath). She is then shown taking out an orange bar of soap from a green wrapper. 3. On seeing the orange soap in his wife's hand, the husband has a shocked look on his face and says “Oh God, bachaa lena” (Oh God, Save her). 4. The next frames show the husband and children pointing at the wife and singing a song in chorus “Naadaan ko aql dena, ham sab ko bachaa lena......” ( show reason to the naive, save us all .....). 5. The wife has a surprised look on her face and asks “Kya kar rahe ho” (what are you doing?). CS(OS) 1359/2007 Page No.17 of 56 6. The next frames show the husband displaying the orange soap in his raised right hand and looking at his wife and saying “Dua ki zarurat padegi iss dawaa ke saath” (prayers would be required with this medicine). 7. This is followed by a cut to a bathing shot where a woman is shown using the said orange bar of soap. In this cut, there is a male voice-over stating: “Aam antiseptic sabun twacha ko rukha kar dete hain..” (Ordinary antiseptic soaps make the skin dry..). 8. Then there is a close-up of the upper-arm under a magnifying glass which reveals skin with cracks and green germs lodged in the cracks. At this juncture the male voice-over states: “..Jis se dararon me kitanu ghus jate hain” (.. as a result of which, germs get into the cracks). Simultaneously, the following words appear on the bottom left of the screen:- “Aam antiseptic sabun” (ordinary antiseptic soap) 9. Then there is a cut to a water shot, where we see a bar of the red LIFEBUOY soap emerging out of the water. On the top left hand corner of the screen, the words “Glycerine” and “vitamin E” appear and the male voice-over states “Isi liye naya Lifebuoy Skin Guard” (that is why, new Lifebuoy Skin Guard). CS(OS) 1359/2007 Page No.18 of 56 10. Then there is a cut again showing a part of the arm under a magnifying glass and the green germs are seen getting washed away. The male voice-over states that : “.. jo kare kitanuon pe waar” (.. which attacks the germs). 11. The next frames show a layer of glycerine flowing