volini vs moov

Gujarat High CourtGujarat High CourtParas Pharmaceuticals Ltd. vs Ranbaxy Laboratories Ltd. And 2 ... on 21 February, 2008Equivalent citations: AIR 2008 Guj 94Author: K PujBench: K PujJUDGMENT

K.A. Puj, J.

1. The appellant-Original Plaintiff has filed this Appeal From Order under Order 43 Rule 1(r) of the CivilProcedure Code challenging the order dated 25th October, 2007 passed in the application Exh. 6/7 filed inRegular Civil Suit No. 2201 of 2007 by the learned (Auxi.) Chamber Judge, City Civil Court, Ahmedabad,thereby dismissing the application for temporary injunction.

2. Mr. Y.J. Trivedi, learned advocate along with Senior Counsel Mr. Mihir Joshi appears on behalf of theappellant and Mr. Pranav G. Desai appears on Caveat along with Senior Counsel Mr. Mihir J. Thakore onbehalf of respondent. With the request of the parties, this Appeal is taken up for final hearing.

3. It is the case of the appellant that the appellant is a Company incorporated under the Companies Act, 1956and engaged in the business of manufacturing and marketing pharmaceutical products and some prominentproducts 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 theproducts are such popular that even the similar get up or trade dress of any other such kind of product wouldlead 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 hasdeveloped such trade mark with a particular trade dress including colour scheme, get up, arrangement andtrade dress for the article, which is registered trade mark of the appellant and also registered copyright underthe Trademarks Act and Copyright Act respectively. The appellant is, therefore, having exclusive right asprovided under the Trademarks Act and Copyright Act and any person uses any identical or deceptivelysimilar label, mark, trade dress or making substantial or material reproduction, is liable for infringement of thestatutory right granted in favour of the appellant.

6. The appellant has developed the said product since the year 1986-87 and since then it has acquiredreputation in the market. As far as sale promotion expenses and sales figures of the product MOOV areconcerned, the total sales turn over till date of this product is to the tune of Rs. 481,90,12,273/-. The turn overof the financial year 2006-2007 is Rs. 55,97,95,386/-. From the renowned sources of the market research, it isproved that the total market share of the product MOOV is of 11% in volume and 10% in value in total similarcategory of products.

7. It is also the case of the appellant that the respondents herein are also engaged in the business of medicinalpreparation and have started manufacturing of the pain reliever ointment known as VOLINI. The said productis being used by the respondents since long time. However, as they could not get the desirable market shareand as they realized that the product of the appellant is day by day increasing the market share and very much

Paras Pharmaceuticals Ltd. vs Ranbaxy Laboratories Ltd. And 2 ... on 21 February, 2008

Indian Kanoon - http://indiankanoon.org/doc/1056584/ 1

popular in the market, the respondents decided to capture the market by way of negative advertisementwhereby the product MOOV can be disparaged and denigrated. The respondents have recently started anairing a TV commercial in respect of their product VOLINI, which obviously seeks to disparage and denigratethe product of the appellant MOOV. The copy of the story board of the TV commercial depicting the visualframes with transcripts of the voice recording is produced before the Trial Court and it is also produced alongwith this Appeal.

8. It is the case of the appellant that the respondent's advertisement/TV commercial is a cleverly conceivedbox of pain reliever to denounce the product of the appellant as shown in the third, sixth and seventh framesof the TV commercial. The third frame of the TV commercial shows a lady (MOM) explaining aboutsuffering from the ache, she takes out a box of pain reliever product, is clearly identical with the box used bythe appellant for marketing its product MOOV as the said box is having distinctive artistic work and colourscheme. The appellant submits that in the fourth, fifth, sixth and seventh frames of the TV commercial a ladycomes to the MOM (lady) and suggesting her to use another remedy and gives her respondent's productVOLINI Gel and says "YOU NEED A TRUE PAIN RELIEVER". The indirect message and suggestioncontained in the advertisement is that the product of the appellant, namely, MOOV is not enough and has notacquired good quality for remedy of backache, lower backache and joint pain and for other aches and thecustomers shall continue to suffer from the various aches, as mentioned above, if they continue to use theappellant's product, so the respondent's product, namely, VOLINI, is better and a true pain reliever. The TVcommercial, in question, contains a subtle message and suggestion that the product shown in theadvertisement are ineffective as ache reliever and the viewer shall thus, switch to the product of therespondents.

9. It is, therefore, the case of the appellant that the message and suggestion seeks to disparage and is showingthe product in the advertisement, which is easily associated in the minds of the consumers and the generalpublic with the artistic work and colour scheme and the mark of the appellant's product MOOV. The boxshown in the advertisement is depicted, being a replica of the artistic work and colour scheme and trademarkused by the appellant for its product MOOV. The effect of TV commercial telecasted by the respondent wouldinevitably be the disparagement and denigration of the product of the appellant.

10. It is also the case of the appellant that the product of the appellant MOOV is being marketed by theappellant in distinctive artwork and colour scheme for which the appellant holds statutory right. Thedistinctive artwork and colour scheme in relation to the product MOOV is associated in the minds ofconsumers and the general public and unwary consumers and the general public watching the respondent's TVcommercial which is aired throughout India including city of Ahmedabad are likely to misled into believingthat the product which is shown in the TV commercial is poor and having inferior quality, is the product of theappellant, as the impugned TV commercial makes direct reference to the product of the appellant by depictingthe box with distinctive colour scheme.

11. In view of the above referred set of facts, appellant was constrained to file Regular Civil Suit No. 2201 of2007 along with the notice of motion before the learned Chamber Judge, City Civil Court at Ahmedabad andinitially ex-parte interim relief was granted and by way of that interim relief the respondents, their agents,servants, dealers, distributors were restrained from demonstrating or advertising their product VOLINI in anymanner including telecasting which disparages and denigrates, and directly or indirectly refers to the productof the appellant MOOV. On returnable date i.e. on 25.10.2007, the respondents appeared through theirCounsel. However, the respondents did not file any reply or written statement to the suit or Notice of Motion,the respondents have only filed list of documents without application or authentication and submitted theirarguments to the effect that though the colour scheme, get up and arrangement may be similar as stated in theadvertisement, to the product of the appellant MOOV, however, the words which are faintly stated on the saidcard box are different. It is further submitted before the learned City Civil Judge, Ahmedabad on behalf of therespondents that the said advertisement was only a comparison and does not amount to disparage or denigratethe appellant's product MOOV. The case of the appellant before the Court was that from the prints of the



advertisement, it is undoubtedly and evidently clear that the product which is disparaged or denigrated in thesaid advertisement is having identical colour scheme, arrangement, general trade dress with that of theappellant's product MOOV. Despite these facts, the learned City Civil Judge, Ahmedabad has rejected theapplication 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 FromOrder.

13. Mr. Mihir Joshi, learned Senior Counsel appearing for the appellant has submitted that the learned CityCivil 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 identicaland/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 PAINRELIEVER as compared to entire other class.

iv. The appellant is the registered proprietor of the trade mark as well as of the copy right of the entire tradedress, which does include colour scheme, get up, arrangement, trade dress etc. Thus, from the saidadvertisement, it is evident that the said advertisement is created by the respondents with mala-fide intentionof disparaging and denigrating the appellant's product MOOV and thereby to capture the market developed inrespect of the said product by way of negative advertisement on air.

14. He has further stated that the learned City Civil Judge has completely failed to appreciate that the pleadingof the appellant is proved as not controverted in any manner by the respondents. Admittedly, the respondentshave neither submitted any reply/written statement nor sought time for filing the same nor reserved the libertyto file the same in future in any manner. By short circuiting of the mandatory requirements as provided underthe Code of Civil Procedure as well as the Ahmedabad City Civil Court Rules, 1961, the respondents directlysubmitted the story board of the advertisement. However, in any case, the same otherwise did favour the caseof the appellant and on the contrary established the fact that the said advertisement did disparage or denigratethe appellant's product MOOV.

15. He has further submitted that since the pleading of the appellant original plaintiff was not controverted inany manner before the trial Court, the same were said to have been proved by virtue of the provisions of theCPC. Further, the documents which are produced by the appellant did establish a strong prima-facie casebeyond any doubt. Hence, the learned City Civil Judge ought not to have passed the impugned order, andtherefore, the same deserves to be quashed and set aside.

16. Mr. Mihir Joshi has further submitted that the learned City Civil Judge, Ahmedabad has failed toappreciate that the respondents are not restrained from advertising or manufacturing or using their product orbrand. The only grievance of the appellant is not to advertise the product in a manner which disparages ordenigrates the appellant's product. He has therefore submitted that ingredients of balance of convenience andirreparable loss does lie and only lies in favour of the appellant as compared to the respondents. He has furthersubmitted that the respondents have no right to use the art work or label of MOOV or print or publish thesame in any manner, which amounts to an infringement of copyright, especially when the appellant is theregistered proprietor under the Trade Marks Act, 1999. He has further submitted that the respondents haveused the mark without any license or permission from the appellant, therefore, as per the provisions of Section29 of the Act, the respondents are liable for infringement. In view of the provisions contained in Section29(4), 29(6), 29(7) and 29(8) of the Trade Marks Act, 1999 the respondents are using the appellant's trademark and hence, respondents are liable for infringement.



17. Mr. Mihir Joshi has further submitted that respondents have committed infringement of copy right thoughthe copyright of the appellant is already registered and registration certificate is also produced before theCourt. Mr. Joshi, in support of the submission has relied on decision of the Delhi High Court in the case ofKarmachand Appliances Pvt. Ltd. v. Shree Adhikari Brothers and Ors. reported in 2005(2) AJ 570 wherein itis observed that what is called disparagement is already described in BLACK'S LAW DICTIONARY. It isreferred to in para 20 of the Judgment that Falsehood when tends to denigrate the goods or services of anotherparty, is accountable in common law suit for disparagement...and the statement about the competitor's goodswhich is untrue or misleading and is made to influence or do not influence the public not to buy. This fact isnot appreciated by the learned City Civil Judge, Ahmedabad.

18. Mr. Joshi has further submitted that the phrase in the advertisement, another lady who recommends therespondent's product VOLINI Gel and says "YOU NEED A TRUE PAIN RELIEVER", directly suggesting orgiving the message in the said advertisement that the first lady who is having in her hand the product MOOVof the appellant is not enough and is not a true pain reliever. This clearly establishes that the respondents aretrying to disparage and show to the customers through the advertisement, that the appellant's product isinferior product or is useless product for pain reliever, which is prohibited in law.

19. Mr. Joshi has further submitted that the respondents have not given any explanation as to why they haveadopted the art work or label in their advertisement, and hence, it tantamounts to a fraud on the part of therespondents as laid down in the case of Midas Hygiene reported in 2005(3) SCC 1990. As per the saiddecision, without giving any explanation, if the respondent start or switch over to similar get up, colourscheme, they are liable for the infringement of the trade mark and copyright and are required to be restrainedto protect the statutory right of the appellant. Relying on this Judgment, Mr. Joshi has submitted that in thepresent case, admittedly the respondents are using the trademark VOLINI and advertising the same since longtime. However, recently they have switched over to the advertisement which is impugned, whereby theproduct which is similar and/or identical to the appellant's product MOOV is shown.

20. The respondents are therefore required to change the two clips in the advertisement and it was suggestedthat if they change the colour of the cartoon shown, then also the appellant has no objection. This aspect wasnot considered by the learned City Civil Judge, Ahmedabad while deciding the injunction application.

21. Mr. Joshi has therefore urged that the order passed by the learned City Civil Judge, Ahmedabad deservesto be quashed and set aside and the prayers made by the appellant in the injunction application is required tobe granted.

22. Mr. M.J. Thakore, learned Senior Counsel appearing with Mr. Pranav G. Desai for the respondent hassubmitted that the learned Trial Judge, after considering the facts and circumstances and law as well asjudgments cited on behalf of the parties held that there is no merit in the notice of motion filed by theapplicant and that it cannot be said that the product of the appellant alleged to have been shown in theadvertisement is denigrated and disparaged. He has further submitted that the respondent has not shown theapplicant's product MOOV in the advertisement, rather the product shown in the advertisement is completelydifferent product which is not even remotely connected with the appellant's products. He has further submittedthat this would be more than evident if the clippings are shown in the size in which they would be displayedon 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 tothe effect that the product shown in the clippings is the appellant's product MOOV. He has further submittedthat false statements are made in para 13 of the plaint/application for injunction and they are as under:

i. Thereafter, in the third frame of the T.V. Commercial shows a MOM explaining her suffering from ache,she takes out MOOV from her bag and speaks SOH, WHAT TO DO, THIS BACK ACHE



ii. The fourth, fifth, sixth and seventh frames of the T.V. Commercial shows a lady comes to MOM and boyand suggesting her for another remedy and speaks STAKE THIS, YOU NEED A TRUE PAIN RELIEVER.At the same time, a lady gives VOLINI Gel to MOM, who is having MOOV in her hand.

23. He has further submitted that in the Item No. 3 of the list in clipping No. 3 & 7 which is produced alongwith the notice of motion, false statement is made that the advertisement contains applicant's product MOOV.The appellant is seeking to improve upon the pleadings and seeking to explain away the false statements madebefore the learned Trial Judge. He has submitted that this is not permissible and the appeal as well as civilapplication deserve to be dismissed solely on the ground of false statements made in the plaint and theapplication for injunction.

24. Mr. Thakore has further submitted that the advertisement actually makes a comparison and provides aninformation that the product of Respondent is having qualities in curing the ailment relating to any back acheand muscular pain. There is no remark against the product of the appellant in the advertisement suggestingthat its product is inferior. The advertisement of VOLINI product does not tantamount to any act ofdisparagement or infringement of applicant's rights under the Trade Marks Act, 1999. He has furthersubmitted that there is no similar get up or trade dress which has been adopted by the Respondent whileprojecting the product SPACE which is not even remotely connected with the Appellant's product MOOV.

25. He has further submitted that no right can be claimed against the basic colours and use of colour iscommon to the trade. It cannot be monopolized by any of the parties. He has further submitted that theapplicant by distraction of facts have tried to make a false attempt to make a case of unfair trade practice. Theadvertisement is just a symbolic comparison with other non-existent products. The advertisement in nomanner refers to the product of the Appellant and therefore, by construing that the Respondent is showing theproduct 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 ofbasic colour which is always treated as common colour. The customers are not persuaded by the basic colourand no one goes to the retailer or chemist shop asking for a particular colour of the carton by which he will beinduced to purchase the product. There can be no monopoly over colours and in this particular case, the PACEwhich is appearing on the product pack is entirely a different word and has been prominently used which is inno way identical to or similar to the product under the trademark MOOV of the appellant. He has furthersubmitted that applicant cannot claim any copy right on the colour Violet and in the absence of the same, theclaim made by the Appellant that TV commercial of VOLINI contains certain message of the product ofappellant is devoid of any merits and it cannot be considered to be a case of disparagement and denigration ofthe product of the Appellant. He has further submitted that violet colour is a common colour and is usedcommonly in the trade which cannot be monopolized by any of the parties and therefore, the appellant cannotclaim exclusive right on the use of the colour.

27. Mr. Thakore has further submitted that there is no balance of convenience which lies in favour of theAppellant and on the contrary, the respondent will suffer irreparable loss and damages in case the order of theTrial Court is set aside and stay is granted in favour of the Appellant which will take away right of theRespondent to carry on the advertisement which otherwise the Respondent is entitled to do so for promotionof its business in relation to its product VOLINI. He has further submitted that there is no strong prima-faciecase in favour of the Appellant as alleged and the balance of convenience does not lie in favour of theAppellant as alleged. He has, therefore, submitted that appeal is without any merit and cause of action,improper and is liable to be dismissed.

28. Mr. Thakore, in support of his submission that the advertisement actually makes a comparison andprovides an information that the product of respondent is having qualities in curing the ailment relating to anyback ache and muscular pain and there is no remark against the product of the appellant in the advertisementsuggesting that its product is inferior, has relied on the decision of the Delhi High Court in the case of Dabur



India Limited v. Wipro Limited, Bangalore 2006 (32) PTC 677 (Del.) wherein the Court was to consider theinterim injunction application restraining the defendant from telecasting TV commercial in respect of WiproSanjivani Honey. It was alleged by the plaintiff that the commercial disparaged the product of plaintiff. Thedefence raised by the defendant was that the TV commercial was only comparing the two products andshowing its own product as superior. There was no disparagement of the plaintiff's product. The Court heldthat no interim injunction against TV commercial can be granted. The Court took the view that the intent ofthe commercial is to suggest that the product of the defendant, that is, Wipro Sanjivani Honey is far superiorto that of the plaintiff, that is, 'Dabur Honey'. While doing so, the commercial does not denigrate or disparagethe product of the plaintiff it merely compares the two brands of honey and proclaims that the product of thedefendant is superior. The Court further held that it is one thing to say that the defendant's product is betterthan that of the plaintiff and it is another thing to say that the plaintiff's product is inferior to that of thedefendant. The commercial clearly intends to say (and so it does) that as compared to the product of theplaintiff, the product of the defendant is far better. The hidden message in this may be that the product of theplaintiff is inferior to that of the defendant but that will always happen in a case of comparison whilecomparing two products, the advertised product will but naturally have to be shown as better. The law is thatit is permissible for an advertiser to proclaim that its product is the best. This necessarily implies that all othersimilar products are inferior. The Court further held that in comparative advertising, a consumer may look at acommercial 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 aconclusion that one product is inferior to the other. Disparagement of a product should be defamatory orshould border on defamation. In other words, the degree of disparagement must be such that it wouldtantamount to, or almost tantamount to defamation. The Court ultimately held that the overall audio-visualimpact does not leave an impression that the story line of the commercial and the message that is sought to beconveyed by it is that 'Dabur Honey' is being denigrated, but rather that 'Wipro Sanjivani Honey' is better.

29. Mr. Thakore has submitted that the decision of the Delhi High Court in the case of KaramchandApplicances Private Limited v. Shri Adhikari Brothers and Ors. 2005 (2) R.A.J. 570 (Del.) relied on by Mr.Joshi is distinguishable on facts. In that case, parties to the suit before the Court were fighting for anadvertisement campaign meant to promote sale of mosquitoes repellents, which both the parties aremaintaining and marketing. The plaintiff has prayed for an order restraining the defendants from telecastingwhat is described as GOOD KNIGHT TURBO REFILL commercial, which according to the plaintiffdenigrates its product and reserves to dilusion of its brands. Though in this case, the Court ultimately took theview that the telecast of the modified commercial is liable to be restrained not only because the commercialdisparages the product manufactured and marketed by the plaintiff but also because the claim made by thedefendant about any technological advantage justifying the disparagement are not substantiated and hence, thedefendants were restrained from telecasting the commercial advertisements in its original form or in themodified form. The Court lays down certain principles for deciding the matter of such type and Mr. Thakorerelied on these principles. He has submitted that it is now a settled law that mere puffing of goods is notactionable. Tradesman can say his goods are best or better. But by comparison, the tradesman cannot slandernor defame the goods of the competitor nor can call it bad or inferior. Two positions clearly emerge from theabove pronouncements, namely, (1) that a manufacturer or a tradesman is entitled to boast that his goods arethe best in the world, even if such a claim is factually incorrect, and (2) that while a claim that the goods of amanufacturer or the tradesman are the best may not provide a cause of action to any other trader ormanufacturer of similar goods, the moment the rival manufacturer or trader disparages or defames the goodsof another manufacturer or trader, the aggrieved trader would be entitled to seek reliefs including redress byway of a prohibitory injunction. After considering these principles, the Court took the view in the facts of thatcase that the devices manufactured by parties are based on the same concept. The concept is simple andintelligible even to a layman. There is no real distinction between the two products either from the point ofview of the concept underlining their manufacture or technology used for the purpose. And yet the defendantclaims that its product chases away mosquitoes at twice the speed. There is no scientific basis or method forverifying that claim as indeed there appears to be no basis even for making it. But in order to puff up theproduct, 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 publicby law provide a mechanism to regulate and/or prevent the making of such exaggerated claims. But in anaction against a wrong caused by a disparaging advertisement, the question as to how and to what extent theclaim made in the advertisement is justified may have to be examined only to the extent the same is necessaryfor determining the limited issue before the Court. By this standard, Mr. Thakore's submission is that TVcommercial of the respondent's product is merely a comparison and by no means, it disparages or denigratesthe product of the appellant.

30. Mr. Thakore, in support of his submission that there is no violation of the provisions contained in Section29(8) of the Trade Marks Act, 1999, has submitted that the similar provisions are there in English Act. Section10(6) of the Trade Marks Act, 1994 provides that nothing in the preceding provisions of this Section shall beconstrued as preventing the use of registered Trade Mark by any person for the purpose of identifying thegoods or services as those of the proprietor or a licensee. But any such use otherwise than in accordance withthe honest practices in industrial or commercial matters, shall be treated as infringing the registered mark ifthe use without due cause takes unfair advantage of, or is detrimental to the distinctive character or repute ofthe Trade Mark. Section 10(6) has come up for consideration before the English Court in various cases. Herelied on the decision of CHANCERY DIVISION in the case of Barclays Bank PLC v. Rbs Advanta (1996)R.P.C. 307 wherein while refusing the injunction, the Court has held as under:

1. The primary objective of Section 10(6) was to allow comparative advertising as long as the use of acompetitor's mark was 'honest'. Thus the proviso should not be construed in a way which would effectivelyprohibit all comparative advertising.

2. The onus was on the plaintiff to show that the factors indicated in the proviso existed.

3. If use of the registered mark was Snot in accordance with honest practices in industrial or commercialmatters, there would be infringement. This was an objective test which depended on whether the use would beconsidered honest by members of a reasonable audience.

4. The words industrial and commercial matters did not mean that the Court should look at statutory orindustry agreed codes of conduct and thus the provisions of the Consumer Credit Act 1974 and theRegulations made thereunder were of little relevance. Although most such codes were concerned to ensureprobity, they frequently covered other matters as well. The nature of the products or services no doubt wouldeffect the degree of hyperbole acceptable. Honesty had to be gauged against what was reasonably expected bythe 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 someadvantage to the defendant or inflict some harm on the character or repute of the registered mark so as to beabove the level of deminimis.

6. The leaflet and tables could not be treated as separate. They were distributed together and would be readtogether. Illegitimate use of a registered trade mark would not necessarily be saved by putting the registeredtrade mark on one document and the dishonest part on another. If they were intended or likely to be readtogether the advertisement should be read as a whole.

7. It was most unlikely that any reasonable reader would take the view that the advertisement was not honest.Read fairly, the advertisement conveyed the message that the package of 15 features taken as a whole wasbelieved by the defendant to offer the customer a better deal.

8. The plaintiff was therefore unlikely to win the action and this was a major factor to be taken into accountwhen deciding whether or not to grant interlocutory relief. The comparative triviality of the benefit that would



be obtained by the plaintiff and the small amount of damage the plaintiff would suffer in the light of othercompetitors' advertising were further factors which led to the view that this was not an appropriate case forinterlocutory relief.

31. Mr. Thakore further relied on the decision of the CHANCERY DIVISION in the case of Vodafone GroupPlc and Anr. v. Orange Personal Communications Services Limited 1997 F.S.R. 34 wherein the plaintiffs anddefendants were rival telecommunications companies offering cellular mobile telephone networks in a highlycompetitive market. An advertising campaign by the defendant represented that On average, Orange userssave 20 Pound every month compared with the Vodafone equivalent tariffs. The plaintiffs had a registeredtrade mark Vodafone covering the services offered by the defendant. The plaintiffs sued the defendant formalicious falsehood and trade mark infringement. On the malicious falsehood claim, the plaintiffs argued thatthe advertising slogan would be interpreted by the public either as meaning (i) that users of the Vodafonenetwork would have to pay 20 Pound more per month than their Orange counterparts for identical servicesand usage, or (ii) that they would save 20 Pound per month if they transferred to the Orange network. On thisinterpretation they submitted that the slogan was false, malicious and calculated to cause the plaintiffpecuniary damage. The plaintiffs alleged that (a) the whole comparison was so inherently flawed as to be falseirrespective of meaning, or alternatively that (b) the comparison was false on the defendant's and the plaintiffs'meanings. The defendant argued that the public would take the statement at face value and on that basis,making reasonable assumptions, it was true. One such assumption was the elasticity of price andconsumption, that is to say that fewer calls are generally made on a more expensive tariff. They also suggestedthat the statement was true even on the plaintiffs' interpretation. They denied malice. The parties agreed thatthe judge should apply the one meaning rule in libel when considering the claim based on maliciousfalsehood. On the trade mark infringement claim, the plaintiffs argued that this comparative advertising felloutside the realm of Section 10(6) Trade Marks Act 1994 (honest commercial practices) and took unfairadvantage of the distinctive character and repute of the Vodafone mark. The defendants denied dishonesty andunfair 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 hadto 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 acertain amount of hyperbole in advertising. The more precise and specific the claim, the more likely it wasthat the public would take it seriously.

3. A comparative advertisement used a trademark otherwise than in accordance with honest practices if it wasobjectively misleading to a substantial portion of the reasonable audience. There was no one meaning rule inthe law of registered trade marks.

4. In most cases the second half of the Section 10(6) proviso (without due cause takes unfair advantage of, oris detrimental to, the distinctive character or repute of the mark) added nothing of significance to the first half.The defendant's claim that even if the slogan was misleading it did not take advantage of the distinctivecharacter of the mark was false. The slogan was meaningless if no one had heard of Vodafone.

5. The ordinary man would have interpreted the slogan at face value; he would not have assumed that the 20Pound saving would apply to every customer, just to an average customer (in the sense of an arithmeticmean).

6. The single meaning for the purposes of malicious falsehood was that if Orange users had been on Vodafonemaking the same usage as they made on Orange, on arithmetic average they would have paid 20 Pound moreper month, including VAT.



7. For the purposes of trade mark infringement, the plaintiffs' contention that their users faced with thisadvertisement would take it to mean that on average, if there was a transfer to Orange, 20 Pound a monthwould be saved was not made out. It was not established on the advertisement itself that there was asubstantial body of the public who would expect usage to be the same irrespective of price. They wouldrecognise that fewer calls are generally made on a more expensive tariff the 'elasticity' of price and usage.

8. There was no convincing evidence of malice.

9. The calculation of the 20 Pound figure was not so inherently flawed as to be false irrespective of meaningall the assumptions made were reasonable and the only factors left out of the analysis would not have made asignificant difference to this figure.

10. The statement was not false on the defendant's meaning when all relevant considerations were taken intoaccount. On the plaintiffs' meaning, which was rejected in any event, the saving worked out at Pound 15.53,insufficient for the sting of the advertisement to be false.

32. Mr. Thakore further relied on the decision of the CHANCERY DIVISION in the case of Cable & WirelessPLC and Anr. v. British Telecommunications Plc (1998) F.S.R. 383 wherein the defendant issued anadvertising brochure in which it compared the costs of using its telephone services with those of the plaintiffand which analysed the costs of its best price package with those of the plaintiff's price packages. The plaintiffissued 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 itwas not the totality of the evidence it wished to file. At the suggestion of the Court, the plaintiff restricted itsclaim to trade mark infringement and the defendant restricted its defence accordingly. Both parties put infurther evidence under time pressure, and both indicated that they might wish to file further evidence. Thedefendant claimed that its conduct fell within the meaning of honest practices in industrial and commercialmatters within the meaning of Section 10(6) of the Trade Marks Act, 1994. While refusing injunction butgranting 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 honestpractices.

2. The test of honesty was an objective one in the sense that the question to be asked was whether a reasonabletrader could honestly have made the statements he made based on the information he had.

3. A trader could have a defence if it turned out that the information he had was wrong in some way or otherbut he would have to stop the acts complained of when further credible information that he was wrong becameavailable.

4. On the evidence the statements made by the defendant were more likely to be true than false and it had notbeen shown that they were not ones which any honest trader, having the information which the defendant had,would not have been prepared to make.

5. Although the injunction was refused, there would be liberty to apply but any application would have to beon proper notice with a proper opportunity being given to the defendant to answer any further evidence.

33. Lastly, Mr. Thakore relied on the decision of the CHANCERY DIVISION in the case of British AirwaysPlc v. Ryanair Limited (2001) F.S.R. 541 wherein the defendant ran two advertisements in which it comparedits return air fare prices to a number of European destinations with those of the claimant. The first was headedSEXPENSIVE BA....DS and the second Expensive BA and each featured two columns of prices headedRyanair from and SBA from and then the respective prices. The first advertisement was withdrawn after ashort run after the ASA upheld a complaint from a member of the public that it was offensive. SBA was



registered as a trade mark by the claimant for air travel services. The claimant objected to the advertisementsand brought proceedings for trade mark infringement and malicious falsehood. In particular, it complained ofthe offensiveness of the headline of the first advertisement, that the individual price comparisons were unfairand in the case of two destinations (Frankfurt and Dinard) that the destination comparisons were unfair. Theprice comparisons were said to be unfair because the defendant's midweek return was compared with theclaimant's return same week fare and not with its lower return fare which required a Saturday night stay. TheFrankfurt comparison was said to be unfair because the defendant's flights went to a secondary airport whichwas further out from Frankfurt than Frankfurt International to which the claimant's planes flew. The defendantclaimed the comparisons were not misleading and relied on Sections 10(6) (use permitted to identifyproprietor's own goods) and 11 (2) (b) (descriptive use permitted) of the Trade Marks Act, 1994. The claimantargued that the defendant's use was not in accordance with honest practices in industrial and commercialmatters, that Section 11(2)(b) did not protect comparative advertising and that Section 10(6) should be treatedas a defence only if there was compliance with the conditions for comparative advertising laid down inCouncil Directive of October 6, 1997 on Comparative Advertising (97/55). While dismissing the action, theCourt held that:

1. The defence of use of a trade mark as a description provided by Section 11(2)(b) of the Trade Marks Act1994 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 wouldfollow that it was not intended to amend or affect the interpretation of any national law passed to implementthe Trade Marks Directive.

3. The Comparative Advertising Directive did not require implementation in member states until after the actscomplained of. There was no authority to support the proposition that one had to construe a national law inaccordance with a subsequent Directive from the moment of its publication even though the Directive itselfrequired implementation later. Accordingly, the interpretation of Section 10(6) of the Trade Marks Act 1994was not qualified by the Directive.

4. The test as to whether the advertisements were misleading was whether they were misleading to the averageconsumer.

5. The fact that the first advertisement was offensive did not render it actionable as trade mark infringement.

6. The first advertisement was merely vulgar abuse and was not a malicious falsehood.

7. The price comparisons were not misleading. The average consumer would expect there to be some sort ofconditions and the small print made it clear.

8. The omission of the destination information on the Frankfurt fare comparison did not make it asignificantly unfair comparison. In substance, the advertisement was comparing with like as far as the fareswent.

34. Relying on the above referred judgments and the statutory provisions contained in Section 29(8) of theTrade Marks Act, 1999 which are similar to the provisions contained in Section 10(6) of the Trade Marks Act,1994, Mr. Thakore has strongly urged that the TV commercial of the respondent's product is nothing but acomparison and there is no infringement of any trade mark of the appellant and hence, no injunction can begranted. The appeal is, therefore, required to be dismissed.

35. After having heard learned counsels appearing for the respective parties and after having gone through thememo of the appeal, affidavit-in-reply filed by the respondent and the impugned judgment and order passedby the learned City Civil Judge, Ahmedabad and after having considered the relevant statutory provisions



contained in the Trade Marks Act and the authorities cited before the Court, the Court is of the view that thelearned City Civil Judge has committed an error of law and facts in rejecting application Exh. 6 & 7 and inholding that the respondents appeared to be in permissible limits and that there is no merit in the submissionthat in the objected clips there is an attempt to show that the appellant's product is inferior. It is for the simplereason that even if the product shown in the objected clips is that of the appellant, the only objectionable partin such advertisement can be denigrating and disparaging the product of the rival and showing the product tobe better than the rival, even if it is not so, is permissible and in further arriving at the conclusion that theappellant has no prima facie case and balance of convenience is not in their favour and that considerablehardships 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 theappellant's product MOOV which is a pain reliever ointment is registered under the Trade Mark Act with aparticular trade dress, colour scheme, get up, arrangement and dress and the said product has been developedsince 1986 87. The respondent's product VOLINI is also a pain reliever ointment. However, the TVcommercial was started by the respondent very recently and only objectionable part in that TV commercial isthe colour of the product pack which is akin or similar to the product pack of the appellant. It is also to be seenthat the respondent has not filed any reply to the suit before the City Civil Court and only the list ofdocuments is filed and it was contended before the learned City Civil Judge that voiced words indicated aretotally different and whole TV commercial was based on comparison and there was no intention or an attemptto denigrate or disparage the product of the appellant. The respondent has not raised any plea before thelearned City Civil Judge to the effect that in the TV commercial, there was only a symbolic comparison withother non-existent product. It is for the first time before this Court in the affidavit-in-reply the defendant hascome out with this defense. All judgments cited by Mr. Thakore in support of his contention regardingcomparison are not supporting or strengthening the case of the respondent. No sooner he raised a plea that theTV commercial was only depicting a symbolic comparison with other non-existent product, namely, PACE,all these Judgments become inapplicable. The comparison can always be made between two existing thingsand in all these judgments, comparisons are made only between two existing things. There is no question ofcomparing the respondent's product with any non-existent product. Even if the respondent had to choose anynon-existent product, the same cannot be in the same colour pack i.e. violet colour pack in which the productof the appellant is put. The Court is, therefore, of the view that there is a substance in the submission of Mr.Mihir Joshi to the extent that the change of colour of pack of the product of the respondent would satisfy theappellant's demand in the suit and with that change, the respondent can carry on telecasting of TVcommercial.

37. Mr. Thakore has also addressed the Court on the issue of infringement of the appellant's Trade Mark withspecial reference to the provisions contained in Section 29(8) of the Trade Marks Act, 1999. This sectionstates that 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) isdetrimental to its distinctive character, or (c) is against the reputation of the Trade Mark. By quoting Section10(6) of the Trade Mark Act, 1994 and citing judgments of the English Courts, Mr. Thakore has strenuouslysubmitted before the Court that the respondent has not taken any unfair advantage nor it is contrary to thehonest practices in industrial or commercial matters. By telecasting such TV commercial, reputation of theTrade Mark of the appellant in no way is affected and hence, there is no question of infringement of the TradeMark of the appellant by advertising the respondent's product in the T.V. Commercial. The Court is notconvinced with the submission of Mr. Thakore as there appears to be no honest practice of comparing one'sproduct with a non-existent product. By adopting a violet colour which is adopted by the appellant to cover upits product and the appellant's product is by and large known in the general public with that colour, and sincethe appellant's product is much popular amongst the general public as a pain reliever, the respondent has triedto take unfair advantage which may amount to an infringement of the Trade Mark within the meaning ofSection 29(8)(a) of the Act. By taking shelter of a non-existent product violet coloured pack,, if the respondenttries to establish that its product is true pain reliever than the other product, it would certainly affect thereputation of the Trade Mark of the appellant and to this extent, Clause (c) of Section 29(8) of the Act can also



be invoked for the purpose of satisfying the Court that the respondent has infringed the Trade Mark of theappellant. In all such cases, the basic criteria is test of average consumer or the objective test is that ofreasonable audience. The average consumer or the reasonable audience would normally go by the colourwhich is shown on the TV commercial. In a country like India, lacks of people are illiterate and they are inneed of pain reliever at every stage. The figures given by the appellant indicate that the turnover of theappellant's product MOOV is on a very large scale and the TV has reached to the remote villages and areas ofthis country. Thus, there may not be an objection against the TV commercial of the respondent's product butthe way in which the said product was introduced T.V. Commercial and telecasted, is certainly objectionable.The appellant has, therefore, rightly filed the suit before the City Civil Court, Ahmedabad seeking aninjunction against such TV commercial.

38. The Court, therefore, directs the respondent to change the colour of the pack of the product which is statedto have been a non-existent product, into any colour other than the colour of the appellant's product pack. Tillsuch colour is changed, the Court hereby restrains the respondent, their servants, Agents, Dealers,Distributors, Stockist, Retailers, Printers and Publishers from printing, publishing, advertising and using theartwork of the appellant's product.

39. This appeal is accordingly allowed and the impugned order of the learned City Civil Judge is modified tothe aforesaid extent.

40. In view of the order passed in Appeal From Order, Civil Application does not survive and it is accordinglydisposed of.

41. When this judgment is pronounced, Mr. Mihir Thakore, learned Senior Counsel appearing for therespondent prays for stay of the operation of this judgment and order. He has submitted that the stay was notin operation all throughout and this Court has also not granted ad-interim stay earlier. He has, therefore,submitted that since the respondent wants to approach the Apex Court challenging this order, theimplementation and operation of the present order may be stayed for a period of 15 days. Mr. Y.J. Trivedi,learned advocate appearing for the appellant has strongly objected to this request.

42. Since the Court has heard the parties at length and arrived at the conclusion that the objectionableclippings in the TV commercial and more particularly use of violet colour to cover up a non-existent productwhich looks like the product of the appellant, for the purpose of comparision and to show their product as truepain reliever, are disparaging and denigrating the product of the appellant and it is amounting to breach of theinfringement of the appellant's Trade Mark, the request for stay of this order cannot be acceded to and it isaccordingly rejected.



volini vs moov

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