2003 (9) TMI 705 - HC - Companies Law

Court Upholds Appeal: Stops Airing of Disparaging Ads But Allows Parody and Trademark Use in Slogan.

Pepsi Co., Inc. And Ors. Versus Hindustan Coca Cola Ltd. And Anr.

The HC partially upheld the appeal, restraining respondents from airing commercials that disparaged the appellant's product and from broadcasting the ... Infringement of Copyright and Literary Work - Trade Mark - Commercial advertisement on electronic media - discredits or denigrates the trade mark or trade name of the competitor - registered trade mark of the appellants by use of the word 'PAPPI' which according to appellant is deceptively similar to that of the appellants' product 'PEPSI' in the advertisements and commercials - Copying of Roller Coaster Commercial - HELD THAT:- Admittedly puffing one's product by comparing others' goods and saying his goods are better is not an actionable claim but when puffing or poking fun amount to denigrate the goods of the competitor, it is actionable. Calcutta High Court in the case of Reckitt & Colman of India Ltd. v. M.P. Ramchandran and Anr. [1998 (8) TMI 627 - CALCUTTA HIGH COURT] while dealing with the question of disparagement, laid down the principles which the court should look into while granting the injunction. One of the principles is that the Court has to look at whether the advertisement or the commercial, as the case may be, merely puff the product of the advertiser or in the garb of doing so directly or indirectly contends that the product of the other trader is inferior. In the present case in the garb of puffing up its product i.e. 'Thums Up' prima facie respondents have tried to depict the product of the appellant as inferior. The infringement of trade mark u/s 29(1) of the Act of 1958 in India is not based on the law in England as provided u/s 4(1)(b) of the 1938 Act. The 1938 Act changed the law in England to constitute the use of a trade mark of a rival trader for the purpose of comparison as infringement. Hence in view of the law laid down in India comparative advertising is permissible and the infringement occurs only when the registered mark is used by the rival for the purpose of indicating the origin of the goods as being his. From the analysis of the arguments advanced by the counsel for the parties it becomes clear that in terms of Section 29(1) of the Act infringement would occur if appellant's mark had been used in the course of trade. Section 29(1) of the Act which is reproduced as under requires the usage in the course of trade of a mark which is identical with or deceptively similar to the trade mark of the appellant. Copying of Roller Coaster Commercial - We were shown the commercial of roller coaster during the proceedings by both parties. By seeing the same an impression which one gathers is that roller coaster of the respondent is a copy of the theme of the roller coaster of the appellant. The roller coaster commercial of the appellant is an original work of the appellant, therefore, covered u/s 14 of the Act. Not only the presence of roller coaster is replica of the appellant's commercial but even the dress of the boys is also similar. Relying on the observation of Apex Court in the case of R.G. Anand v. Delux Films [1978 (8) TMI 231 - SUPREME COURT], it can prima facie be concluded that the roller coaster commercial of the respondent is nothing but a literal imitation of the copyright work of the appellant with some variations here and there. Having said so we would be failing in our duty by not restraining the respondents from showing its roller coaster commercial in the present form. Thus, we partly accept the appeal and restrain the respondent only in respect of showing the commercials annexed with the plaint as Annexures-A, B, C and D and also the commercial of roller coaster in the present form. Only prima facie view has been expressed, therefore, any observation made hereinabove will have no bearing on the merits of the case. Issues Involved:1. Disparagement of Appellant's Product2. Infringement of Copyright and Literary Work3. Infringement of Trade Mark4. Copying of Roller Coaster CommercialSummary:1. Disparagement of Appellant's Product:The court examined whether the respondents' commercials disparaged the appellants' product 'PEPSI COLA.' The commercials depicted 'PEPSI' as a 'Bacchon Wala Drink' (meant for children) and mocked it by showing a boy feeling embarrassed for choosing it. The court held that this portrayal amounted to disparagement as it conveyed a message that 'PEPSI' is inferior and only suitable for children, thus denigrating the appellants' product.2. Infringement of Copyright and Literary Work:The appellants claimed ownership and copyright of the slogan 'Yeh Dil Maange More' and argued that its use by the respondents in a mocking manner constituted infringement. The court found that the slogan is a literary work and is copyrightable. However, the court held that the respondents' use of the phrase 'Yeh Dil Maange No More' in a parody context did not amount to infringement of the appellants' copyright.3. Infringement of Trade Mark:The appellants argued that the use of the 'Globe Device' and the word 'PAPPI' in the respondents' commercials infringed their registered trade mark. The court noted that comparative advertising is permissible as long as it does not denigrate the competitor's product. The court found that the respondents' use of the appellants' trade mark in the commercials did not constitute infringement as it was not used in the course of trade to indicate the origin of the respondents' goods.4. Copying of Roller Coaster Commercial:The appellants claimed that the respondents copied their roller coaster commercial, thus infringing their copyright. The court observed that the respondents' commercial was a literal imitation of the appellants' original work with some variations. The court held that this constituted infringement of the appellants' copyright and restrained the respondents from showing the roller coaster commercial in its present form.Conclusion:The court partly accepted the appeal, restraining the respondents from showing the disparaging commercials and the roller coaster commercial in its present form. The observations made were prima facie and would not affect the merits of the case.