Reckitt Benckiser (India) Ltd. (Reckitt) recently filed a trade mark and copyright infringement, unfair competition and passing off action against Dabur India Ltd.(Dabur) alleging that they have copied their FIREMEN device and elements used by them for promoting their GAVISCON anta-acid product.
Facts of the case:
Reckitt in support of its case alleged that;
- They are the owner and manufacturer of the globally acclaimed and well known nonprescription drug for heartburn and gastro-esophageal reflux disease sold under the brand name GAVISCON.
- The antacid and anti-reflux action of GAVISCON inspired Reckitt to conceptualize the unique and original script based on fire-fighting. In the year 2006, Reckitt devised, adopted and commenced use of FIREMAN DEVICE for an advertisement to market their GAVISCON Product.
- They are the owner of the copyright in the said original fire-fighting script and FIREMAN DEVICE which are primarily and prominently the base theme of every advertisement or commercial relating to the Reckitt’s product GAVISCON.
- The conceptualized script is that the fire-fighters, which are replicas of the FIREMAN DEVICE, are treating the heartburn and other gastro-oesophageal reflux diseases by sprinkling GAVISCON on the oesophagus and the stomach walls. The FIREMAN device is also registered in the name of Reckitt in Class 5.
- In the second week of May, 2014, Reckitt learnt about Dabur’s product ‘Pudin Hara Fizz’ from a TV commercial and noticed that Dabur has copied the Reckitt’s original script and used virtually identical FIREMAN elements in the impugned advertisement in relation to the Pudin Hara Fizz product.
- On account of long, extensive and continuous use of fire-fighting script by Reckitt, the consumers relate the fire-fighting action with antacid and anti-reflux effect of GAVISCON. Therefore the impugned advertisement is a slavish imitation of the Reckitt’s original firefighting with a view to illegally ride upon their reputation and goodwill.
Dabur contested the claims and argued that;
- Reckitt has not approached the Court with clean hands and have suppressed material facts. They have deliberately not disclosed that the product of Dabur namely ‘PUDIN HARA LEMON FIZZ’ is being marketed across India since March, 2010, whereas, Reckitt’s GAVISCON product was introduced in the Indian market only in November, 2011.
- There is no similarity whatsoever in the two television commercials and thus, there is no violation of the copyright of Reckitt in any manner and they cannot claim any exclusivity or copyright on the idea of a fireman.
- It is not unusual for the advertisement of an antacid to contain a reference to burning sensation in the stomach or a reference or depiction of oesophagus and the Reckitt ought not to be allowed to claim any exclusivity in conveying such message.
- The product ‘Pudin Hara Lemon Fizz’ is a variant of Pudin Hara, which has been manufactured by them for many decades. Showing discomfort in upper abdomen hinting heartburn is common to advertisements of antacid products across the industry and the said concept has been used by Dabur as well as various other competitors in the print and TV commercial.
- There is no similarity between the script of the advertisement of Reckitt and Dabur. Dabur has not used the trademark (FIREMAN device) of the Reckitt on its product and as far as the depiction of fireman in the advertisement is concerned, there is no similarity of the fireman depicted in the advertisement of the Dabur to the registered device mark of the Reckitt.
- No trademark infringement is made out by Reckitt as admittedly Dabur is not using the FIREMAN device mark on its products or packaging and only in the TV advertisements.
- Reckitt has also not succeeded in proving their allegation of passing off as the documents on record show that Dabur launched their product in India in the year 2010 and this has not been countered by Reckitt. Moreover, the advertisements relied on by the Reckitt are also not published in India so as to form a strong presumption with regard to spill over reputation.
- The web prints and list of advertisements published in various jurisdictions including those placed on YouTube make out a doubtful case of ‘spillover reputation’ of the advertisement campaign run by Reckitt.
- No Copyright infringement is made out as the depiction of the Fireman extinguishing fire is merely a concept or theme in the advertisement which cannot be monopolised under the guise of the copyright.
This case has peculiar facts as it relates to use of a device as part of the advertisement campaign and not on the actual product. Further, the device used by rival parties was not identical, but similar. The passing off plea based on advertisement campaign that was available on the YouTube and other websites was not shown to have been accessed by consumers in India. Thus, the court negated the plea of passing off based on advertisements released in other countries as the international use was not supported by ‘spillover of reputation’ in India.