Looking to protect the signature trade dress of its NIVEA products, Beiersdorf AG filed a lawsuit alleging trademark infringement, unfair trade practice, disparagement and dilution against Unilever subsidiary Hindustan Unilever Limited ('HUL') before the High Court of Delhi (Beiersdorf AG v. Hindustan Unilever Limited (CS (COMM) 300/2021).
The NIVEA trade dress
A flat can of cream bearing a distinctive blue colour and the word 'NIVEA' in white is a trade dress that Beiersdorf claims was created for it in 1925. The distinctive blue colour is identified as 'Pantone 280C' and used by the company as a source identifier. Registrations for the 'NIVEA' trademark and its variants exist in more than 175 countries. The first Indian registration for 'NIVEA' dates back to 1943 in class 3 and subsequently, the mark has been registered in various other classes including several label marks featuring the word NIVEA over a blue background in Class 3 (Nos. 1329991, 2232698, 2856286 and 3263712).
Around 2021, Beiersdorf learnt of marketing activities in various shopping malls in New Delhi and Gurugram wherein a heavy cream with 25% fatty matter in a blue tub was being compared with HUL's 'Ponds Superlight Gel' with 10% fatty matter. A sales representative would apply cream from the blue tub on one hand of a shopper and HUL's product on the other. Thereafter, a magnifying glass was used to demonstrate to the shopper that the product from the blue tub left behind an oily residue. Per Beiersdorf, the use of the blue tub was a clear reference to its product and the comparison between two different categories of cream (heavy vs. gel) was unfair, dishonest and misleading. Having first addressed a cease-and-desist notice to HUL, Beiersdorf filed the instant suit on July 5, 2021.
Beiersdorf presented strong proof of its proprietary rights in the NIVEA trade dress. Apart from the registrations mentioned above, it submitted that 'Pantone 280C' was a colour that enjoyed trademark protection in Germany. In India, 'NIVEA' had been declared a well-known trademark by the Delhi High Court in 2008. Also, in a 2021 judgement (Beiersdorf A.G. v. RSH Global Private Limited & Anr. CS(COMM) 48/2021), the Delhi High Court had afforded some recognition of Beiersdorf's distinctive blue colour when, in the context of granting an interim injunction against an alleged misuser, it noted the distinguishing features of the NIVEA trade dress, as "apparent from the products, including the brand name written in white font on a dark blue background and the distinctive blue colour of container, registered by the German Patent & Trademark Office in class 3". Details of the global sales turnover and huge promotional expenses, with specific figures for India (1999 onwards), for its product 'NIVEA' were tendered. Beiersdorf argued that the recall, therefore, in the mind of general consumers regarding 'NIVEA' products is of the distinctive blue colour used along with signature textual elements.
Case made by Ponds
HUL argued that the blue tub being used in the survey bore no brand. Plus, not only were other creams being marketed in blue packaging, 'Pantone 280C' was not a colour trademark that enjoyed protection in India. Also, the comparison being made in the survey was a truthful one. Both products were intended for the same purpose i.e. use as a moisturiser. Furthermore, the fact that the cream in the blue tub left a greasy residue was a characteristic that might satify a consumer looking for heavy moisturisation.
The case of Horlicks Ltd. & Anr v. Heinz India (Pvt.) Ltd., 2018 SCC Online Del 12975 was cited wherein the claim was that one cup of the health drink 'Complan' had the same amount of protein as two cups of the drink 'Horlicks'. Here the court had concluded that comparison between verifiable material elements of the goods in question was permissible. Also, an advertisement need not compare all parameters of products - it was open to an advertiser to highlight a special feature or characteristic of its product, which set it apart from competing products.
Beiersdorf on its part relied on Reckitt Benckiser (India) Ltd. v. Hindustan Lever Limited (2008 SCC OnLine Del 1731 decided on July 7, 2008) wherein an advertisement depicting an orange-coloured soap as being harmful was injuncted for drawing an association with the plaintiff's 'Dettol' soap. Even though the plaintiff's brand was not shown, per the court, the advertisement was disparaging from the standpoint of a reasonable person.
Court's reasoning
A certain amount of disparagement is implicit in comparative advertising, said the court. However, an advertisement must not be false, misleading, unfair or deceptive, irrespective of whether it is extolling the advertised product or criticising its rival. Puffery is an exception – but untruth in puffery is permissible because puffery is inherently not taken seriously by the average consumer. Further, what matters is the impression that the advertisement registers in the viewer's mind including any hidden subtext which could be conveyed by clever advertising or innuendo instead of a direct message. Moreover, each case would turn on its peculiar facts and context.
A century of consistent use of the distinctive blue colour and associated elements of the Nivea trade dress led the court to prima facie conclude that consumers would associate a cream product in a distinctive blue coloured tub with Beiersdorf. This stance drew support from a market survey conducted by Beiersdorf (post filing the present suit) wherein an unlabelled dark blue tub with cream was associated with 'Nivea' by consumers.
According to the court, HUL was aware of the association of the distinctive blue colour with Beiersdorf's product – proven by at least ten different instances in which the same or similar disparagement issues had arisen (and been settled) between Beiersdorf and Unilever (parent company of HUL) in India and overseas. And, when asked, HUL did not offer an explanation as to why it chose a distinctive blue colour for its survey rather than any other colour. In comparative advertising it is natural to target a competitor and the court reasoned that use a blue tub cream by HUL was prima facieintended to make consumers draw an association with Beiersdorf's product.
Third, HUL's contention that a comparison with a 'generic category' (and not to a specific 'labelled' product of the plaintiff) would not amount to disparagement, was unacceptable in light of numerous precedents holding that generic disparagement without specifically pin-pointing a rival product was equally objectionable. Stickiness or oily residue, in the realm of creams, may be considered as a negative attribute. By choosing an unlabelled distinctively blue coloured tub, and comparing different categories of creams - their lightest product ('Ponds Superlight Gel') to Beiersdorf's heaviest product ('NIVEA Crème'), without informing shoppers of the range in consistency of creams, meant HUL had ventured into the area of deception and by implication, disparagement.
In-mall campaigns
Though previous judgements touching specifically upon in-mall marketing campaigns were not located, the court stated that the law relating to advertisements would extend to such campaigns as well, since they too are a method of marketing and, in fact, a much more personalised and interactive method. Print and digital advertisements - where the promotional message is limited to what is seen or heard in the commercial – were contrasted to in-mall marketing campaigns - where the possibilities of imputation, aspersion, implication, overstatement, even slight disparagement in the course of interaction with a consumer are potentially limitless. Accordingly, with regard to the latter, the threshold for considering the possibility of an impugned activity being misleading or disparaging would be slightly lower as compared to traditional print and digital campaigns.
Conclusion
HUL was, therefore, found to be disparaging Beiersdorf's signature trade dress and injuncted from running its in-mall promotional campaign. The ruling is significant as it tackles proprietary rights associated with a particular colour which can be hard to assert and prove. Extensive evidence submitted by Beiersdorf certainly played a crucial role as did the court's thorough and practical analysis of existing law to safeguard consumer interests.
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