In a detailed interim order, the Delhi High Court has validated Dabur’s Pudin Hara Lemon Fizz Advertisement against infringement/passing off allegations by England based Consumer goods Company, Reckitt Benckiser.
Earlier Reckitt Benckiser, whose non-prescription drug GAVISCON is in direct competition to PUDIN HARA LEMONFIZZ in the Indian market had accused Dabur’s advertisement of infringing upon its copyrights and trademark rights. In the year 2006, Reckitt Benckiser (plaintiff), had devised, adopted and commenced the use of the FIREMAN device for marketing its product GAVISCON,a non-prescription drug used for the treatment of heartburn and acid reflux. Plaintiff also registered a device mark consisting of representation of a fireman in 2007 which they mostly used in its advertisement campaign for GAVISCON.
Pursuant to this, plaintiff‑ alleged that defendant’s advertisement for its product PUDIN HARA LEMON FIZZ, which used identical fireman elements, was infringing both its registered device mark and copyright subsisting in the script of the advertisement.
The court observed that for determining trademark infringement plaintiff’s registered mark has to be compared with defendant’s advertisement rather than comparison between the plaintiff’s and defendant’s advertisement, since plaintiff’s cause of action arises from use of deceptively similar FIREMAN device by the defendant in its advertisement which infringes plaintiff’s registered device mark. However, plaintiff’s registration was confined to the device of a man represented in white/grey colour standing in the posture and wearing hat whereas defendant’s advertisement clipping consists of two/three firemen wearing different colours and extinguishing fire, therefore the Hon’ble judge was of the view that there exists no likelihood of confusion and deception between the plaintiff’s registered mark and defendant’s representation in the advertisement which prima facie rebuts any claim of infringement. In so far as the claim of passing off was concerned, the court clarified that passing off claim in the case is broader as it is not confined to any registration representing the mark but is based on the overall comparison of different postures of the FIREMAN device and the competing advertisement prepared by the plaintiff and the defendant and the resultant damage to the goodwill and reputation as claimed by the plaintiff.
However it was held that even if plaintiff’s claims are analysed from both the angles i.e. by comparing its registered mark with that of the representation of the two/three men extinguishing fire in the defendant’s advertisement and comparison of the advertisements of the plaintiff and defendant, it was difficult to conclude that a prima facie case for passing off was made by plaintiff.
As far as plaintiff’s claim of copyright infringement was concerned, the court held that depiction of persons extinguishing fire is a theme in the advertisement which cannot be monopolised under the guise of copyright law and there are lot of changes in defendant’s advertisement which makes the advertisement as a whole distinct from plaintiff’s advertisement. Consequently, in a major victory for Dabur, plaintiff was held to be not entitled to the relief of temporary injunction.