Pepsodent’s Attaaaack on Colgate Continues
First Publication Date: 18th September, 2009.
In furtherance to our earlier blog here relating to the advertisement war between Colgate and Pepsodent and comparative advertising, the Delhi High Court recently, on 21st August 2013, denied grant of interim injunction against Hindustan Unilever Limited (‘HUL’/Pepsodent) and held that Court was not persuaded at this stage to hold the impugned TV advertisement or the impugned printed advertisement by HUL to be disparaging of or denigrating the product ‘Colgate Dental Cream Strong Teeth’ of Colgate-Palmolive.
Colgate-Palmolive (“Colgate”) brought an action against HUL relating to the advertisements published by HUL regarding Colgate’s toothpaste Colgate Dental Cream Strong Teeth (hereafter ‘Colgate Strong Teeth’), wherein the ad stated that Pepsodent Germicheck is 130% better than Colgate. Colgate prayed that the said advertisements misused their registered trademark ‘Colgate’, and were disparaging of the goodwill and reputation of their toothpaste Colgate Strong Teeth and that the impugned advertisements tarnished their reputation.
The question before the Court was whether there should be an interim injunction restraining HUL from publishing and/or telecasting the advertisements in print and electronic media launched by it for its product Pepsodent Germicheck Superior.
The Court denied granting Colgate an interim injunction against HUL.
Submissions on behalf of Colgate:
The Counsel for Colgate, Mr. C.M.Lall, contended that the impugned advertisement that Pepsodent could deliver ‘130% germ attack power’ was blatantly false and took unfair advantage and were detrimental to the character and repute of the trademark ‘Colgate’ and constituted infringement under sections Sections 30(1) (a) and (b) of the Trade Marks Act, 1999 (‘TM Act’). The Counsel thereafter referred to various clauses in the Advertising Standards Council of India (‘ASCI’) Code that mandate certain requirements for advertisements, which according to the Counsel, were not adhered to by Pepsodent in their advertisement. The Counsel further referred to the Drugs and Cosmetics Act, 1940 (DACA) and argued that not only did the label accompanying the toothpaste Pepsodent GSP contain false and misleading statements but also constituted misbranding. The Counsel also submitted that HUL had a history of making false claims in respect of its products and referred to an order passed by the Monopolistic and Restrictive Trade Practices Commission (‘MRTPC’), which refrained HUL from claiming that Pepsodent was 102% better than Colgate. The Counsel referred to various decisions, involving HUL as a party and certain other companies, including Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 200 (2013) DLT 563 (hereafter Dettol v. Lifebuoy case) and Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 2013 V AD (Del) 94 (hereafter Dettol Liquid case) and Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd. 151 (2008) DLT 650, to show that Pepsodent had previously introduced several such false and misleading advertisements to deceive members of the public and increase its market share dishonestly.
The Court was taken from one frame to the other in the TV commercial and various components of the print advertisement were explained to show they disparaged and degenerated the goodwill to Colgate and were in fact misleading and untruthful. Further, they referred to the ‘preventive cavity test’ depicted in the advertisement and submitted that there were no such test in the world of dentistry and further submitted that comparison if at all had to be of like products, in which event Colgate Total toothpaste, which contained 0.3% Triclosan, should have been taken up for comparison and not Colgate Strong Teeth.
In the print advertisement, the Counsel argued that that the words ‘Pepsodent now better than Colgate Strong Teeth’ were meant to convey that Colgate Strong Teeth was no longer a good product. Also, the word ‘Attaaaack’ used in the ad was an attack on Colgate and not on the cavity causing germs. Lastly, the Counsel submitted that the balance of convenience was entirely in favour of the Colgate and that HUL had, in fact, already been using alternative ‘point of sale’ materials omitting the Colgate part appearing on the right side of the print advertisement. This meant that HUL had already anticipated the present litigation and a possible injunction against it. Therefore, no prejudice would be caused to HUL if the interim injunction as prayed for was granted.
Submissions on behalf of HUL:
The learned Senior counsel appearing for HUL, reiterated two principles settled in the decision in Dabur Colortek, firstly which permitted comparative advertisements and secondly that the manufacturer of a product could claim that his product was better than that of the competitor, and that some element of denigration in that process was inevitable and that the Court only emphasized that it should not be malicious so as to cause injury to the product of the competitor.
The Counsel further submitted that, taken as a whole, neither the TV commercial nor the print advertisement in the present case degenerated Colgate Strong Teeth as such and referred to the results of the in vivo and in vitro tests which supported the statements of HUL that Pepsodent GSP could deliver a 130% germ attack power.
Further, the Counsel submitted that the purpose of these advertisements were to pose a competition to Colgate at the at the price segment at which it was selling Colgate Strong Teeth, wherein 100 gm of Colgate Strong Teeth was sold at Rs.37 whereas 100 gm of Pepsodent GSP with Triclosan was priced at Rs.39. He further submitted that Colgate’s superior product ‘Total’ which had 0.3% Triclosan was positioned as a premium segment product with a 70gm tube of Total toothpaste selling at Rs.52. He submitted that the TV advertisement showed that Triclosan in Pepsodent GSP would be retained and released even four hours after the consumption of food and had to be viewed in that context and pleaded that at the present stage the Court ought not to injunct the impugned advertisements.
Discussion of case law
The Courts firstly examine the law on comparative advertisement. In Dabur Colortek the DB affirmed the decision of the learned Single Judge in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd. 2010 (42) PTC 88 (Del) which permitted comparative advertising and further pointed out “that for a Plaintiff to succeed in an action based on malicious falsehood, the necessary ingredients are that (i) a false statement was made which is calculated to cause financial damage (ii) that it was made maliciously with an intention to cause injury and (iii) the impugned statement has resulted in a special damage. The law in England was referred to as laying down that: (i) a trader is entitled to say that his goods were the best; in doing so he could compare his goods with another (ii) say that his goods are better than that of the rival trader in this or that respect (iii) whether the statement made was disparaging of his rival’s product depended on whether it would be taken ‘seriously’ by a ‘reasonable man’; an alternative test would be whether the trader had in fact highlighted any specific defect in his rival’s goods and (iv) a statement made by a trader puffing his own goods was not actionable”.
In Dabur Colortek the DB, while affirming the judgment of the learned Single Judge, further emphasized that it is necessary to keep in mind the medium of the advertisement in as much as an advertisement in electronic media would have a far greater effect than an advertisement in the print media. Further stating that the Plaintiff ought not to be hyper- sensitive as brought out in Dabur India v. Wipro Limited 2006 (32) PTC 677 (Del). The DB, in Dabur Colortek, concluded by referring to the five elements relating to comparative advertisement held in Reckitt and Colman of India Ltd. v. M.P. Ramchandran and Anr. 1999 (19) PTC 741.
The law as explained by the DB in Dabur Colortek is that while it may no longer be open to a trader to make an untrue declaration that his product is better than that of the competitor, he can certainly compare the advantages of his goods over the goods of the competittor. However, defamation of the competitor’s goods is prohibited. Defamation can give rise to an action for the recovery of damages and in such circumstances an order restraining such defamation can be passed. It was, therefore, held that that no off-the-cuff claim could be made by a trader that his goods are the best in the world.
Analysis of Law and Decision
With respect to the impugned TV advertisement the Court analyzed the entire advertisement in detail along with the contentions raised by both Colgate and HUL and relying on the Dabur Colortek principles, stated that the impugned TV advertisement neither defames nor slanders Colgate Strong Teeth and does not suggest that Colgate Strong Teeth is ‘bad’.
With respect to the impugned print advertisement, the Court held that it was not persuaded to agree with Colgate that the word ‘Attaaack’ appearing in the phrase “It’s time to Attaaaack!” actually means that it is time to attack Colgate and not the germs and refers to statement immediately below: ‘Pepsodent now better than Colgate Strong Teeth delivers 130% Germ Attack Power’. This is further clarified at the bottom of the advertisement where the words ‘Non-stop Attaaaaack!’ is above the words (although in smaller font) “On cavity causing germs”. Further in relation to the expression on the faces of the two boys, the Court stated that if there was a comparison of products and an attempt to show that one is better than the other, then obviously both boys cannot have happy faces.