Court resolves Pudin Hara advertising dispute

Consumers may have noticed several Indian advertisements relating to antacids and other medicines that cure heartburn and gastric problems. Recently the Delhi High Court decided a dispute (Case CS(OS) 1829/2014) between Reckitt Benckiser – a multinational with star brands such as Strepsils, Gaviscon, Clearasil, Mortein, Dettol, Harpic, Vanish, Durex and Cherry Blossom – and Dabur India Ltd, a leading player in the Indian healthcare sector and owner of brands such as Honitus, Hajmola and Glucose D. The dispute involved the use of similar themes in ads for over-the-counter medicines Gaviscon and Pudin Hara. Reckitt Benckiser sought a permanent injunction and damages for trademark and copyright infringement, passing off and unfair trade practices.

Facts
Reckitt Benckiser markets an antacid under the mark GAVISCON. Its ad campaigns show firemen tackling a fire with fire extinguishers to signify that Gaviscon fights heartburn. In October 2007 it  obtained a trademark registration for the ‘fireman device’ under Registration 1613551 for pharmaceutical products in Class 5.

Dabur’s Pudin Hara Lemon Fizz product also treats heartburn. Dabur recently released a campaign in which a fireman was shown fighting fire and thereby treating heartburn.

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Reckitt Benckiser alleged that its storyboard for its advertisement is that the firemen, which are replicas of the fireman device, treat heartburn and other gastro-oesophagael reflux diseases by spraying Gaviscon on the oesophagus and the stomach walls. A person suffering from heartburn pouring Gaviscon on a spoon, after which a series of white/grey firemen climb onto the spoon, enter the person's body and started to extinguish the heartburn by spraying Gaviscon, thus giving him relief.

Dabur’s advertisement also started by showing a person suffering from heartburn, who poured Pudin Hara Lemon Fizz out of a packet in the form of pudina leaves and lemons. The liquid medicine then became animated green characters which extinguished the fire by spraying Pudin Hara Lemon Fizz. Dabur also used the term “Fire Brigade” in its advertisement.

Arguments
Reckitt Benckiser contended that use of the firemen characters in Dabur’s advertisement infringed its trademark and copyright. It also contended that it had used the same advertising campaign for more than eight years, and that consumers associated Gaviscon and the firemen theme. Thus, it claimed that Dabur had committed the torts of passing off and unfair competition.

On the other hand, Dabur argued that its product was introduced onto the Indian market in March 2010, whereas Gaviscon was introduced onto the Indian market only in November 2011. In addition, Dabur contended that the advertisements were different and that copyright in the fireman theme could not be claimed as there can be no monopoly over an idea or theme.

Delhi High Court decision

Infringement of fireman device trademark
After comparing the two advertisements, the Delhi High Court concluded that Dabur’s fireman device was not deceptively similar to Reckitt Benckiser’s registered mark, which was confined to the device of a man represented in white/grey standing in a certain posture wearing a hat. Therefore, there was no likelihood of deception and confusion, and no infringement had occurred. The court relied on principles laid down by the Supreme Court in Ruston & Hornsy Ltd v The Zamindara Engineering Co (1969 (2) SCC 727) and Kaviraj Pandit Durga Dutt Sharma v Navratna Pharmaceutical Laboratories (AIR 1965 SC 980).

Passing off
The court held that Dabur had not committed the tort of passing off. It held that Reckitt Benckiser had failed to establish the goodwill and reputation of its ad campaign in India, and the element of misrepresentation was also missing. 

Copyright infringement
The court found that there were several differences in the colour, background and representation of the characters. Coupled with other differences in Dabur's ad, the ad as a whole was distinct from Reckitt Benckiser’s ad. 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.

Ruling
The Delhi High Court considered the following issues when finding in favour of Dabur:

• Common usage – since ads depicting firemen extinguishing heartburn caused by gastric discomfort are not uncommon, this theme could not be copyrighted. Any party can use the same idea, and there will be no copyright infringement, provided that the presentation is different.
• Not deceptively or confusingly similar – the court stated that, apart from the similarities noted by Reckitt Benckiser, Dabur’s advertisement was not deceptively or confusingly similar because it used a different representation with a different background and from a different perspective. The court concluded that there were significant differences in the colour of the backgrounds and the overall set-up of the respective ads. Thus, there has been no infringement of Reckitt Benckiser's registered trademark (ie, the fireman device).
• Goodwill not affected – the court affirmed that Reckitt Benckiser had failed to produce evidence as to the expenditure in relation to its fireman ads, and thus had failed to establish goodwill. Hence, the claim of passing off also failed.

Therefore, the court dismissed the injunction application filed by Reckitt Benckiser. However, it issued a direction to Dabur that in order to avoid confusion, Dabur must not use the character depicted in the television ads in any physical medium (eg, newspaper ads) or on its physical product or packaging.