Belly Fireman! Rescued by Delhi High Court

In the recent decision of Delhi High Court in the case of Reckitt Benckiser(India) Ltd v Dabur India Ltd, the Hon’ble court decided on the issue of deceptive similarity between the television advertisement of Pudin Hara lemon fizz drink and Gaviscon

Facts of the case:

The plaintiff is a member of Reckitt Benckiser Group PLC who involved in the various consumer and healthcare products. It also manufactures Gaviscon which provide relief from heartburn and gastro-oesophageal reflux. In the year 2006, the plaintiff started using Fireman Device for the advertising and promoting his product in the market. Fireman Device was registered in India in favour of the plaintiffs on 22nd October 2007 in Class 5.

The defendant is the manufacturer of various Ayurvedic and non-prescription medicines such as Pudin Hara, Hajmola, Glucose-D etc. Reckitt Benckiser alleging that the ads for Dabur’s Pudin Hara lemon fizz drink had “infringed its trademark and copyright”. The point of dispute is the image of Fireman /firefighter.

Issues involved/Contentions

• In both, the advertisement a person is suffering from gastro-oesophageal reflux disease/heartburn.
• Both the advertisements show fire burning inside the oesophagus.
• Then a person consumes medicine & the medicine converts into the image of a fireman which extinguishes the fire by sprinkling the product on the stomach walls.

Delhi High Court decision

Trademark infringement

After comparing the advertisement, the Delhi High court concluded that Dabur’s fireman device was not deceptively similar to the registered mark. The mark appears to be different in terms of colour, representation and number. Therefore there was no likely hood confusion and no infringement had occurred.

Passing off

The defendant product i.e Pudin Hara Lemon Fizz is sold in the Indian market since April 2010 whereas the plaintiff product i.e Gaviscon was introduced in the Indian market in November 2011. Hence Reckitt Benckiser could not establish goodwill in India prior to Dabur and the element of misrepresentation was also missing. So, Dabur had not committed the tort of passing off.

Copyright infringement

The court concluded that there were several dissimilarities between both the advertisement in respect of their colour, representation and image of fireman device. The court relied on the Supreme Court decision in RG Anand v Delux Films (1979 SCR (1) 218) to reiterate the established principle that only the manner of expression of ideas is protected under copyright law (not the ideas themselves). Thus, the court held that there had been no copyright infringement.

The court has, however, said that if there is any modification in the television Commercial Ad, Dabur would need to take necessary permission from the court.

About the Author: Ms Pallavi Sharma, Trademark Attorney at Khurana and Khurana, Advocates and IP Attorneys and can be reached at:[email protected]