Delhi High Court: In an intra-court appeal filed by Hindustan Unilever Limited (appellant) challenging a judgment passed by Single Judge whereby the appellant was restrained from publishing a print advertisement (‘impugned advertisement’) and airing three YouTube videos (‘impugned videos’). The toilet cleaner sold under the tradename ‘Domex’, was found to be prima facie, disparaging the toilet cleaner sold by Reckitt Benckiser (respondent) under its trademark ‘Harpic’. A division bench of Vibhu Bakhru and Amit Mahajan, JJ., held that upholds the decision of the Single Judge as the balance of convenience lies in favor of Reckitt.
HUL is a company incorporated in India and is engaged in the business of manufacturing, marketing and/or selling various consumer products, including food and refreshments, cosmetics, toiletries, floor cleaners, toilet cleaners, toilet soaps, washing soaps and detergents. HUL also manufactures and markets a toilet cleaner sold under the trademark ‘Domex’. It claims that its product Domex is superior to Reckitt’s Harpic in fighting bad odour. HUL claims to have been granted a patent for using a technology that involves the use of a chemical compound called ‘Saline’, which enhances the malodour fighting capabilities by extending the period of its effectiveness.
Reckitt is a company engaged in the manufacturing, packaging, sale, and distribution of various fast-moving consumer goods (FMCG). Reckitt’s business comprises primarily manufacturing and dealing in various consumer and healthcare products including antiseptic liquid, toilet care products, surface care products, pharmaceuticals, insecticides, and food products. Reckitt states that it has been involved in the manufacturing of a well-known toilet cleaner under the trademark ‘Harpic’ in India, since the year 2001.
HUL claims that the impugned advertisement and the impugned videos truthfully depict that the effect of its product lasts longer than Reckitt’s product. Thus, the impugned advertisement and impugned videos are permissible and ought not to have been interdicted. Reckitt disputes the claims made by HUL and complains that the impugned advertisement and the impugned videos are misleading and disparaging.
A suit was instituted by Reckitt seeking interim relief restraining HUL from publishing or telecasting the impugned advertisement and the impugned videos which were thereby granted. Assailing this order, the present appeal was filed challenging the impugned advertisement (published in a newspaper) and the impugned videos (three videos broadcasted on the internet website, YouTube).
The impugned advertisement is below:
The Court noted that the overall message of the impugned advertisement is loud and clear, that if one uses Harpic to clean the toilet, the toilet bowl will emanate a foul smell but if one uses Domex, then the toilet would smell pleasant. The impugned advertisement denigrates Reckitt’s product by reflecting that the toilet bowl cleaned by the use of the said product would result in the same remaining unclean and emanating a foul smell.
Thus, the Court found no infirmity with the decision of the Single Judge in interdicting HUL from publishing the impugned advertisement on the ground that it, prima facie, denigrates and disparages Reckitt’s product Harpic.
The next question that arises for consideration is whether a person of average intelligence viewing the shape of the bottle in the impugned videos would consider the same to be depicting the bottle of Harpic.
The Court noted that in the case of the first and third videos, the shape of the bottle, as depicted in the impugned videos, is deceptively like Rekitt’s trademark. Trademarks are source identifiers and therefore, the Court found no infirmity with the reasoning of the Single Judge that the depiction of the bottle of an ordinary toilet cleaner in the impugned videos is likely to be identified as Reckitt’s product Harpic.
The Court observed that in the present case, the second impugned video asserts that Domex fights bad odour up to 100 flushes while ordinary toilet cleaners (referring to Reckitt’s product Harpic) fight bad odour only till the first flush. HUL relies on a laboratory test conducted by the International Association of Plumbing and Mechanical Officials (IAPMO) to back up its claims. Thus, the Court found no infirmity with the decision of the Single Judge to defer the decision in this regard till the parties have led evidence.
Thus, the Court upholds the Single Judge order stating that the impugned order has not interdicted HUL from broadcasting the impugned videos but merely directed that it removes all references to Rekitt’s product and the bottle representing ordinary toilet cleaners as the same is identifiable with Reckitt’s product – Harpic.
[Hindustan Unilever Limited v Reckitt Benckiser (India) Private Limited, 2023 SCC OnLine Del 2133, decided on 13-04-2023]
Advocates who appeared in this case :
Mr Amit Sibal, Senior Advocate with Mr Ankur Sangal, Mr Pragya Mishra, Mr Kiratraj Sadana, Ms Trisha Nag and Mr Rishabh Sharma, Advocates for the Apellant;
Mr Chander M. Lall, Senior Advocate with Ms Nancy Roy, Mr Prakriti Varshney, Ms Annanya Chugh and Ms Aashta Kakkar, Advocates.