Harpic v. Domex:Product disparagement or nominative fair use?

Introduction

Advertising is an important strategy for a company to sell its products to the customer. Advertising generated awareness about a particular product in among the masses and the reaction of the masses decides the fate of the product. To increase their sales, often companies indulge themselves in comparative advertising. Comparative advertising is defined as a strategy where one product is being compared with its competitor in order to tell the masses that why the former is superior to the latter. The two main types of comparative advertising are Puffery and disparagement. When a company makes exaggerated claims about its own product in order to persuade the masses that their product is superior to its competitors, is known as puffery. When the same thing is done by smudging the image of a distinguishable product of the competitor is known as disparagement.

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Legal issue involved

Recently, in a new ad campaign launched by ‘Domex’, a Hindustan Unilever brand. In this advertisement campaign Domex has openly compared itself to Reckitt Benckiser’s toilet cleaner brand ‘Harpic’.The Hindustan Unilever brand Domex hasdisparaged the brand image of Harpic of Reckitt Benckiser. In a new advertisement campaign the Hindustan Unilever brand Domex challenges the efficacy its rival brand Harpic by saying that the former has the ability to remove foulness or malodour and keeps the toilet hygienic and free from germs for a longer period of time.Reckitt Benckiser has approached the Delhi High Court and sought a relief of an interim injunction against the new advertisement campaign.

The Delhi High Court in the case of Colgate Palmolive Company and Ors vs Anchor Health And Beauty Care Pvt.[i] Observed that when an advertisement pulls up the products of others in order to increase the popularity of the product among the masses is called disparagement. The Delhi High Court in the case of PepsiCo. Inc. v. Hindustan Coca Cola Ltd[ii] outlined following things while determining disparagement:

1. The commercial intent of the advertisers and the target which they want to achieve through promotion.
2. Most important thing is the nature of the commercial. It will amount to disparaging if the any product tries to lambaste the other and not when the former is simply demonstrating its product without belittling the other.
3. The commercials message it is attempting to spread through advertising.

If above tests are applied to the present case, it is evident that the Hindustan Unilever brand Domex is disparaging the brand image of Harpic of Reckitt Benckiser. It does so by directing comparing itself with Harpic and then questioning its efficacy if removing toilet odour.

Nominative fair use of a trademark is a legal doctrine that can be used as a defence in some types of trademark infringement cases. Following are the measures to be taken care of while taking nominative fair use as a defence –

1. The use of the registered trade mark was bonfide.
2. No sponsorship or endorsement.
3. Don’t mislead the masses.

The Madras High Court in the case of Consim Info Pvt. Ltd v. Google India Pvt. Ltd,[iii]any unauthorized advertisement will be termed as normative fair use, if it passes following test –

1. Without the use of the trademark, the product or service in question must be difficult to identify.
2. When using the mark, the user must do nothing that suggests sponsorship or endorsement by the trademark owner.
3. Only that much mark should be used which is reasonably necessary to identify the product.

There is definitely no suggestion of sponsorship or endorsement in the current advertisement. The claims made by the Dmoex are huge as they compared themselves with their rival. So, such claims must be true, accurate and verified in order to take nominative fair use of trademark as their defence. However, the main aim of Domexwas to persuade its masses about its odour control technology which can be achieved without comparing itself with its counterpart Harpic. Therefore, the defence of normative fair use is not available to Hindustan Unilever. In the case of Havells India Ltd &Anr vs Amritanshu Khaitan &Ors  [iv]however the Delhi High Court held that, for an advertisement to qualify as nominative fair use, may highlight just a particular quality of the product that differentiates it from that of a competitor as long as the comparison is true and accurate. The defence of honest and true representation of facts can be taken by Hindustan Unilever however it is also subjected to the provision of fair-trade practice under section 30(1)of Trade Marks Act, 1999.

Conclusion

As far as current case is concerned, the Delhi High Court has granted interim injunction against one of the print advertisements in which Harpic was demeaned till the time defendant files its reply. The Court cited two casesi.e.Dabur India Ltd. vs M/S Colortek Meghalaya Pvt. Ltd. [v] and Colgate Palmolive Company and Ors vs Hindustan Unilever Ltd[vi] Observed that since comparative advertisements forms a part of commercial speech guaranteed under Article 19(1) (a) of the Indian Constitution, it takes a negative form, if used to defame a brand, then it amounts to disparagement.Comparative advertising is not illegal but should be used wisely. Advertisers while advertising should ensure that through their advertising the brand value and image of other brand should not be affected. If a brand wants to showcase themselves as number one or wants to flaunt their new technology, they should never compare themselves with any exiting brand with a goodwill or with their rival brand. In the present case, Domex, could have reflected upon the special characteristic of i.e., it can improve toilet odour without referring to the brand name of the competitor i.e., Harpic.

Author: Ipsita Sinha, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing

References

1. Trade Mark Act 1999.
2. Sahay S, Bansal A., Comparative advertising: Drawing the fine line between puffery and disparagement, Asia IP.
3. Shukla S., Cal HC | Disparagement or mere puffery? Court decides in matter of offending/misleading advertisements [Dabur India v. Baidyanath Ayurved], SCC Online Blog.
4. Ravi R., Harpic vs Domex ad case: Advertiser cannot disparage, defame goods of competitor, says Delhi HC, The Indian Express.
5. Thapliyal N.,[Comparative Advertising] Cannot Permit Domex’s TV Ad, Disparages Harpic: Delhi High Court.
6. Jain P,Harpic v. Domex Advertisement: Product Disparagement or Nominative Fair Use,Spicy IP.
7. Tiwari S., HUL Domex’s ad take a dig at toilet cleaner brand Harpic,
8. , HARPIC v. DOMEX Advertisement: Product Disparagement,entre for intellectual Roy property research and advocacy (CIPRA).

[i] 2003 VIII AD Delhi 228, 108 (2003) DLT 51, 2003 (27) PTC 478 Del, 2004 (1) RAJ 214

[ii] 2003(27)PTC 305 (DEL)

[iii]2013 (54) PTC 578 (Mad)

[iv]2015 (62) PTC 64 [Del]

[v]2010 (42) PTC 88 (Del)

[vi]FAO (OS) No. 396/2013