Fire in the belly! Delhi High Court rescues Dabur's firemen

In Reckitt Benckiser (India) Ltd v Dabur India Ltd (IA No 11442/2014 in CS (OS) No 1829/2014), the High Court of Delhi has refused Reckitt Benckiser (India) Ltd’s application for a temporary injunction in respect of Dabur India Ltd’s television advertisement for its Pudin Hara Lemon Fizz product.

Reckitt’s registered mark          Reckitt’s advertisement                    Dabur’s advertisement

The dispute arose when Reckitt became aware of Dabur’s advertisement for its Pudin Hara Lemon Fizz product (a remedy for stomach problems), which featured firemen. Reckitt claimed that the advertisement:

• infringed its copyright in the original script of its advertisement for the Gaviscon product (also used to treat stomach problems), which featured a fireman;

• infringed its trademark for a device representing a fireman; and

• passed off Dabur’s firemen device and script as Reckitt’s fireman device and script of the advertisement for the Gaviscon product.

Dabur argued that the fireman device was not distinctive, was generic and referred directly to the character and quality of the goods involved. The concept of Reckitt’s advertisement was common to the trade and Reckitt could not claim any exclusivity or copyright in the idea of a fireman or in the concept of the advertisement. There was no similarity between the device of a fireman or the storyboard/script of Reckitt’s advertisement and the firemen or the storyboard/script of Dabur’s advertisement.

After hearing the parties, the learned judge dismissed Reckitt’s application mainly on the ground that there was no similarity between Reckitt's registered trademark and Dabur’s firemen device. The court held that there were several differences in the colours, background, representation of the characters, storyboards and scripts which made Dabur’s advertisement distinct from that of Reckitt; hence, there could be no confusion/deception. The court also held that the concept or theme of an advertisement cannot be monopolised under the guise of copyright; ideas per se are not protected by copyright law.

In view of the above, the court held that Reckitt had failed to make out a prima facie case for a grant of a temporary injunction on the ground of trademark and copyright infringement or passing off. However, the court did not allow Dabur to use the firemen device together with the physical products to avoid any confusion.

This decision is interesting in that it does not deal with infringement in the traditional sense, but instead revolves around the use of marks in a television advertisement. The case also shows how companies are using IP law to try and stifle competition by filing such actions.

Adheesh Nargolkar, Smriti Yadav and Alisha Ganjawala, Khaitan & Co, Khaitan & Co, Mumbai