India: Horlicks Ltd. v. Heinz India: Delhi High Court Held That Comparative Advertising By Use Of Competitor's Mark Allowed

Last Updated: 16 April 2019
Article by Utkarsh Kumar Mishra

In a recent judgment dated 17th December, 2018 the Delhi High Court has ruled that the law allows comparative advertising as long as the use of competitor's mark is honest.

Facts of the Case[1]:

The suit in question was filed by the plaintiff for permanent injunction against advertisement when he discovered in the newspaper "The Telegraph" that the comparison of his product i.e.; Horlicks with Complan which depicted that "One Cup of Complan equals two cups of Horlicks". It further said one cup of Complan gives 5.94 gm of protein while two cups of Horlicks gives the same amount of protein. The Counsel appearing for the plaintiffs contended that the advertisement by the defendants is intentionally and deliberately disparaging its product Horlicks. He also contended that the impugned advertisement has wrongly shown the comparison between the products and has misguided the customers.

Issues:

1. Can a limited amount of disparagement be used in Comparative Advertising?

2. How to determine whether a certain advertisement is misleading?

3. Can "per serving" size be a valid ground for Comparison and can is it necessary for the advertiser to compare all the features of product in Comparative Advertising?

4. Can advertisement be protected under Article 19 (1) (a) of the Indian Constitution as a form of speech?

Plaintiff Contentions:

1. The plaintiff contended that the Comparison of the products on the basis of "per serving" size is misleading.

2. The plaintiff contended that the statement in the advertisement 'From now on, Only Complan' sought rejection of Horlicks over Complan.

3. The plaintiff contended that the advertisement compares only one ingredient of the product and was trying to misguide consumers that consumption of their product directly leads to growth.

4. The plaintiff also contended that the right under Article 19(1) (a) is only available to the citizens of the country and not to corporate entities as well as held in Allagapuram R. Mohanraj & Ors. Vs. Tamil Nadu Legislative Assembly[2]. In Tata Press Ltd. vs. Mahanagar Telephone Nigam Ltd. & Ors[3] it was held that the promotion and advertisement of one's own business could not be a part of freedom of speech guaranteed by Constitution.

5. The Counsel on behalf of plaintiff also submitted that plaintiffs have all the right to restrict commercial use of all its mark which denigrated its reputation or goodwill under Article 21 of the Constitution and relied on the Judgment in K.S. Puttaswamy & Anr. Vs. Union of India[4].

Defendant's Contentions:

1. The defendant contended that comparison on the basis of 'per serving' size is the most accurate method of comparison and the advertisement intended to create awareness among customers. He also stated that jurisdictions like India, Australia, New Zealand, Canada and United States of America recognize per serving as nutritionally and analytically significant.

2. He also contended that Section 29(8) and Section 30(1) of the Trademarks Act, 1999 allows comparative advertising. He stated that mere trade puffery, even if uncomfortable to the registered proprietor of the trade mark, would not bring the advertisement within the scope of the trade mark infringement and relied on Havells India Ltd. Vs. Amritanshu Khaitan.

3. "From Now On, Only Complan" was only a promotional statement and not the statement of Fact.

Court Reasoning:

The Court relied on the judgment on Havells India Ltd. & Anr v. Amritanshu Khaitan & Ors.[5]which said that in comparative advertising a certain amount of disparagement is implicit, yet the same is legal and permissible as long as it does not mislead. The Court also relied on the judgment in Colgate Palmolive Company & Anr. Hindustan Uniliver Ltd[6] which said that the comparison which is unfavorable to the competitor does not necessarily mean the it is dishonest or unduly detrimental. In comparative advertising, a certain amount of disparagement is implicit and as long as the advertisement is limited only to puffing, there can be no actionable claim against the same.

The Court also held that the concept of "per serving" size is well recognised not only by the Industry but also under the statute. The court observed that the advertisement compares a material, relevant, verifiable, representative feature of the products in question and is true and the contention of the plaintiff regarding the serving size is prima facie incorrect as the defendants have not altered the same since the year 1934.The defendant is not obliged to compare all parameters. The court observed that the objective of sections 29(8) and 30(1) of the Trade Marks Act, 1999 is to allow comparative advertising as long as the use of competitor's mark is honest. A failure to point out competitor's advantages is not necessarily dishonest. The court also relied upon Chapter IV of the ASCI (The advertising Standards Council of India) which specifically deals with Comparative advertising. The Court also went into the analysis of misleading advertisement and stated that two essential elements should be satisfied to call an advertisement misleading 1.The misleading advertisement should deceive the persons it is intended for 2. Such advertisement is capable of influencing the economic behavior of the persons it is intended for or harm a competitor.

In the Present case, the Court held that there was no disparagement of the Horlicks mark, as there were clear differences between both the products. It was of the view that the impugned Judgment is not violative of the previous order passed by ASCI. The Court also held that the Judgment in K.S. Puttaswamy & Anr. Vs. Union of India[7] is not applicable to the present case because right to privacy cannot be claimed for information which is already in public arena.

Decree Passed:

"From the aforesaid discussion, it is apparent that the impugned modified advertisement is not misleading and there is no denigration or disparagement of plaintiffs mark”. Further, the factor compared is material, Bar and Bench (www.barandbench.com) CS (COMM) 808-2017 Page 36 of 36 relevant, verifiable and representative features. Consequently, present application is dismissed, but with no order as to costs".

References:

[1] CS(COMM) 808/2017

[2] AIR 2016 SC 867

[3] AIR 1995 SC 2438

[4] (2017) 10 SCC 1

[5] 2015 (62) PTC 64 (Del)

[6] 2014(57) PTC 47 [DEL] (DB)

[7] (2017) 10 SCC 1

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions