COLGATE PALMOLIVE CASE

COMMENT: In this Judgment, the Hon’ble Delhi High Court has laid down the following important proposition.

The Hon’ble Delhi High Court, while discussing the case of disparagement , has reaffirmed the following principle:

(1) The court should give to the material complained of the natural and ordinary meaning which it would have conveyed to the ordinary reasonable reader reading the article or viewing the programme once.

(2) The hypothetical reasonable reader (viewer) is not naïve but he is not unduly suspicious. He can read between the lines. He can read in an implication more readily than a lawyer and may indulge in a certain amount of loose thinking. But he must be treated as being a man who is not avid for scandal and someone who does not, and should not, select one bad meaning where other non-defamatory meanings are available. (Emphasis added.)

(3) While limiting its attention to what the defendant has actually said or written the court should be cautious of an over-elaborate analysis of the material in issue.

(4) The reasonable reader does not give a newspaper item the analytical attention of a lawyer to the meaning of a document, an auditor to the interpretation of accounts, or an academic to the content of a learned article.

(5) In deciding what impression the material complained of would have been likely to have on the hypothetical reasonable reader the court is entitled (if not bound) to have regard to the impression it made on them.

(6) The court should not be too literal in its approach. The above list was broadly followed by the Court of Appeal in Jeynes v News Magazines Ltd [2008] EWCA Civ 130 at [14], save that it added the important point that the hypothetical reader is taken to be representative of those who would read the publication in question.‖

                        THE HIGH COURT OF DELHI AT NEW DELHI

                        FAO (OS) 396/2013 & CM No. 13486/2013

COLGATE PALMOLIVE COMPANY AND ANR. .....Appellants

Versus

HINDUSTAN UNILEVER LTD. .....Respondent

Advocates who appeared in this case:

For the Appellants : Mr C.M. Lall, Ms Nancy Roy and Ms Pragya Nalwa.

For the Respondent : Mr Neeraj Kishan Kaul, Sr. Advocate with Mr Sameer Parekh, Ms Rukmini, Mr Shashank

and Ms Sanjana.

HON'BLE MR JUSTICE BADAR DURREZ AHMED

HON'BLE MR JUSTICE VIBHU BAKHRU

JUDGMENT

VIBHU BAKHRU, J

1. This is a composite appeal preferred by the appellants/plaintiffs challenging the order dated 27.08.2013 (hereinafter referred as the 'second impugned order') passed by a learned Single Judge of this Court in an application filed by the appellant under Order 39 Rule 1 & 2 of CPC being I.A. No.13434/2013 which in turn was filed in CS(OS) No.1588/2013. The appellant also challenges the order dated 27.08.2013 rejecting the Review Petition, being R.P. No.424/2013 filed under Order 47 Rule 1 read with Sections 114 and 151 of the CPC, seeking review of the order dated 21.08.2013 passed by the learned Single Judge in I.A. No.12818/2013. The learned Single Judge has, by the second impugned order, directed issuance of notice to the respondent in I.A.13434/2013, thereby not granting the prayer for an ad-interim injunction restraining publication and telecast of the printed and television commercial respectively, which are alleged to disparage the products, goodwill and reputation of the appellants. The present appeal also impugns the order dated 21.08.2013 passed by a learned Single Judge of this Court in I.A. No.12818/2013 filed under Order 39 Rule 1 & 2 of the CPC (hereinafter referred to as the ‗impugned order'), whereby the said application for grant of interim injunction was dismissed by holding that the said advertisements in question did not disparage or denigrate the product of the appellants/plaintiffs.

2. The controversy in the present case relates to an advertisement campaign pursued by the respondent/defendant to advertise its product - a Toothpaste which is sold as ―Pepsodent Germicheck Super Power‖ (hereinafter referred to as Pepsodent GSP'). The advertisement campaign includes a television commercial as well as advertisements in the print media. An advertisement in the print media appeared in the front page of the newspaper ―Hindustan Times‖, New Delhi edition on 11.08.2013. The said advertisement in print media has also appeared in several national dailies, including in modified forms. The commercial on television has also been repeated on several occasions. Both the Television commercial as well as the advertisements in the print media seeks to convey that Pepsodent GSP is 130% better than the product of the appellant namely ―Colgate Dental Cream Strong Teeth‖ (hereinafter referred to as ‗Colgate ST'). The Television commercial is hereinafter referred to as ‗impugned TVC' and the advertisement that was published in Hindustan Times on 11.08.2013 is hereinafter referred to as ‗impugned print advertisement'. The said advertisements are collectively referred as the ‗impugned advertisements'.

3. The appellants/plaintiffs have filed the suit CS(OS) No.1588/2013, inter-alia, seeking a permanent injunction restraining the respondent from publishing and/or telecasting the impugned advertisements or any other similar advertisement or in any other manner disparaging the goodwill and reputation of the plaintiffs and their products sold under the trade mark 'COLGATE'. The appellants/plaintiffs also filed an application (I.A. No.12818/2013 under Order 39 Rule 1 & 2 of the CPC) along with the suit for granting ad-interim injunction against the impugned advertisements and the same was dismissed by the learned Single Judge of this Court on 21.08.2013.

4. The appellants/plaintiffs preferred an appeal (FAO(OS) No.381/2013) before a Division Bench of this Court challenging the impugned order dated 21.08.2013 and the Division Bench of this Court, on 23.08.2013, permitted the appellants/plaintiffs to withdraw the appeal with liberty to file a fresh application for injunction before the learned Single Judge and place on record such new material to establish that the impugned advertisements were disparaging the products of the plaintiffs. The relevant extract of the order dated 23.08.2013 is quoted as under:-

―During the course of submissions, learned counsel for the appellants stated that new material in the form of newspaper articles, letters from dentists and information from consumers has been made available to establish disparagement in the minds of the consumers. He seeks liberty to approach the learned Single Judge with a fresh application for injunction and place on record such new material.

Liberty granted. All rights and contentions of the parties are reserved. It is open to the appellant to impugn the correctness of the order which may be made in the fresh application and also if necessary, impugn the order which is the subject matter of the present appeal. In view of the above, the appeal is dismissed as withdrawn.

5. The appellants/plaintiffs immediately filed a fresh application (I.A. No.13434/2013) under Order 39 Rules 1 & 2 read with Section 151 of CPC bringing on record new facts and documents before the learned Single Judge and also filed a Review Petition (R.P. No.424/2013) seeking review of the order dated 21.08.2013 on account of certain alleged errors which were contended to be apparent in the order dated 21.08.2013. By the second impugned order, the Review Petition was dismissed by the learned Single Judge holding that no ground for review of the order dated 21.08.2013 was made out. In respect of the application under Order 39 Rule 1 & 2 of CPC (I.A. No.13434/2013), the learned Single Judge did not grant the ad-interim injunction as sought for by the plaintiffs and issued notice to the respondent for filing their response. Aggrieved by the dismissal of the Review Petition and non grant of the ad-interim injunction, the appellants have preferred the present appeal.

Submissions on behalf of the Appellants

6. The appellant has contended that the claim made by the respondent, regarding its product Pepsodent GSP, in the impugned advertisements is based on denigration of the plaintiffs product and malicious falsehood in common law and under Sections 29(8) and 30(1) of the TradeMark Act, 1999. The impugned advertisements are contended to be detrimental to the distinctive character and reputation of the trademark of the petitioner. It is further contended that the impugned advertisements cannot be construed as mere puffery in respect of the respondent's product Pepsodent GSP but constitute untrue statements of facts in relation to Colgate ST as well as Pepsodent GSP.

7. It is contended that the learned Single Judge has erred in concluding that the impugned advertisements neither disparage nor denigrate the product Colgate ST. The counsel for the appellant has placed the impugned advertisements and has made submissions thereon pointing out certain aspects, which we shall advert to later, which according to him clearly indicate that the impugned advertisements are disparaging of the product of the appellant. It is also urged that the impugned advertisements constitute malicious falsehood, inasmuch as, the essential message conveyed by the impugned advertisements is false and the impugned advertisements are designed to falsely show that the product of the respondent is superior to that of the petitioner in respect of its anti-bacterial/germ qualities and in respect of preventing tooth decay.

8. It is contended on behalf of the appellant that the learned Single Judge has erred in examining the impugned advertisements as may be viewed by a discerning viewer. According to the appellant, the correct test that needs to be applied is to determine as to how the impugned advertisements would be viewed by average consumers with imperfect recollection. The learned counsel for the appellant contended that even though the impugned advertisements may be construed as not disparaging of the products of the appellant by some viewers, nonetheless, the court would interdict such advertisements, if the advertisements were capable of being construed differently by other consumers. In other words, it is contended that if an advertisement or an expression is capable of two meanings, one of which is disparaging while the other is not, the court will, nonetheless, issue an injunction restraining the dissemination of the same as disparaging the product or reputation of the concerned party. This proposition has been referred as the ―multiple meaning rule‖. According to the appellant, the impugned advertisements must be tested on the anvil of the multiple meaning rule. It is submitted that this rule is well accepted and applied by courts in various cases and the learned counsel has referred to Ajinomoto Sweeteners Europe SAS v. Asda Stores Ltd.: [2011] Q.B. 497, Glaxo Smithkline Consumer Healthcare Limited and Others v. Heinz India Private Limited and Another: I.A. No.15233/2008 in CS (OS) No.2577/2008, Decided on 12.11.2010, Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd.: 2008 (5) R.A.J. 664 (Del.) and Reckitt Benckiser (India) Ltd. v. Hindustan Unilever Ltd.: 200 (2013) DLT 563 in this regard.

9. The learned counsel for the appellant has also submitted that the entire claim as made in the impugned advertisements is based on an alleged study done where it has been found that, after four hours of brushing, the retention of Triclosan in the dental plaque on usage of Colgate ST is 37.1 ppm and on usage of Pepsodent GSP is 48.8 ppm. On the basis of this study, the impugned advertisements profess a higher efficiency in dealing with dental cavities as compared with Colgate ST. The correlation which is sought to be portrayed between higher levels of Triclosan and cavities is contended to be malicious and misleading insofar as it indicates that Colgate ST is in any manner inferior in respect of preventing cavities compared to Pepsodent GSP. This according to the appellant is for two reasons:-

(a) It is contended that a minimum level of Triclosan that is required for killing oral bacteria or in combating its growth (referred to as Minimum Inhibitory Concentration - MIC) for plaque bacteria is in the range of 0.2-0.3 ppm. It is contended that as long as this minimum level is maintained there would be no additional benefit even if a higher level of Triclosan are delivered. The learned counsel sought to draw our attention to various documents in support of this contention. Viewed in this perspective, the impugned advertisements would be misleading, inasmuch as, the advertisement conveys a higher efficiency in dealing with oral bacteria/germs in comparison with Colgate ST.

(b) It was further urged on behalf of the appellant that there are several reasons of tooth decay and plaque bacteria by itself does not cause cavities. The appellant's product also has additional ingredients, to combat cavities which prevent tooth decay, including fluoride which is one of the most vital ingredient for prevention of tooth decay. If the impugned advertisements are viewed in this factual backdrop, it would be apparent that the same are false and misleading inasmuch as they seek to correlate Triclosan with cavities and profess that Pepsodent is superior in combating cavities in comparison with Colgate ST.

10. The learned counsel for the appellant has also contended that the learned Single Judge has erred in proceeding on the basis that Colgate ST contained only 0.2% Triclosan as compared to Pepsodent GSP. It is contended that this is erroneous as, admittedly, Colgate ST also contains 0.3% Triclosan and this fact is not disputed. The learned counsel has drawn our attention to Para 6 of the reply filed by the respondent wherein it has been stated that Colgate ST has the same level of permissible Triclosan (0.3%). This was also one of the grounds for review in R.P. No.424/2013. It is further contended that the claim of 130% germ attack power has been erroneously held by the learned Single Judge to be puffing up of Pepsodent GSP in comparison with Colgate ST. According to the appellant, it is only the humorous and hyperbolic claims that can be considered as exaggeration or puffing. It is contended that all claims which would be taken seriously by a reasonable man cannot be overlooked as puffery. It is contended that a claim of 130% better germ killing quality is a serious claim and is liable to be viewed as such by any reasonable viewer and thus, the same cannot be considered as mere puffery or exaggeration and, as such, the claim would fall foul of the ASCI Code.

11. The appellant has also seriously disputed the claim of the respondent that Pepsodent GSP has the quality of sustained release of retained Triclosan. It is contended that only Colgate Total (which is another product manufactured by the plaintiffs) contains ‗Gantrez' which permits sustained release of Triclosan. In addition, the learned counsel for the appellant also submitted that the ‗Super', (i.e. the string of textual messages which are placed at the bottom of the screen during certain portions of the impugned TVC) which is considered by the learned Single Judge, is not visible when impugned TVC is viewed on a normal TV. The said Super which reads as under is thus not visible to a average viewer:-

―Creative visualisation of the action of triclosan on cavity and causing germs. New Pepodent Germicheck enhances delivery of triclosan in the mouth. Claim based on the In-Vivo study where Germ Attack Power refers to amount of Triclosan remaining in the mouth 4 hours after brushing where Colgate Strong Teeth is indexed at 100% and Pepsodent GSP 130%. Brush twice daily.‖

It is contended that the learned Single Judge, thus, erred in relying on the same and failed to consider that as per the ASCI Code, the ‗Supers' are required to be legible on a standard television set.

12. It is contended by the appellants that the appellants had established a good prima facie case and the learned Single Judge erred in not considering the balance of convenience and the irreparable loss to the reputation and goodwill of the appellants that would be caused if the ad-interim injunction as prayed for was not granted.

Submissions on behalf of the Respondent

13. The respondent has raised a preliminary objection with respect to maintainability of the present appeal. It is contended on behalf of the respondent that the present appeal is a composite appeal against three orders including the order dated 27.08.2013 dismissing the review petition, R.P. No. 424/2013. It is submitted that an appeal against an order rejecting the application for review was barred under provisions of Order 47 Rule 7 of CPC. In support of this contention, the respondent has relied upon the decision of the Supreme Court in the case of Shanker Motiram Nale v. Shiolalsing Gannusing Rajput: (1994) 2 SCC 753.

14. It is further submitted on behalf of the respondent that by virtue of the second impugned order, the Court has issued notice in IA No.13434/2013 and has not rejected the said application. Thus, the second impugned order would not be an appealable order as no appeal has been provided under CPC. The same could also not be construed as a ―Judgment‖ and, consequently, an appeal under Section 10 of the Delhi High Court Act, 1966 would also not lie against the second impugned order. In support of his contention, the respondent has relied on the decision of this Court in Nisha Raj and Anr. v. Pratap K. Kaula and Ors.: 57 (1995) DLT 490. The respondent has also placed reliance on the decision of the Supreme Court in the case of Shah Babulal Khimji v. Jayaben D. Kania & Anr.: (1981) 4 SCC 8. It is submitted that for an interlocutory order to qualify as a judgment, the same must have a element of finality. It is submitted that the second impugned order does not have any trappings of finality attached and thus, no appeal would lie against the said order.

15. The learned counsel for the respondent has also submitted that an appeal against the impugned order was also not maintainable at this stage in view of the earlier order passed by a Division Bench in FAO(OS) No.381/2013. It is contended that the order dated 23.08.2013 passed in FAO(OS) No.381/2013 granted liberty to the appellant to impugn the correctness of the order which may be passed in the fresh application as also the order impugned therein (i.e. the impugned order in the present appeal). According to the learned counsel for the respondent, the appellants are at liberty to challenge the impugned order, however, the same could only be done after the fresh application filed by the appellant before the learned Single Judge had been considered and decided. Since, in the present case, IA No.13434/2013, which was filed pursuant to the liberty granted by the Division Bench by the order dated 23.08.2013, is still pending, the appellant is not at liberty to file the present appeal.

16. It has been contended on behalf of the respondent that the impugned advertisements are comparative advertisements which are permissible. The learned counsel for the respondent has supported the finding of the learned Single Judge that the impugned advertisements do not disparage the products of the appellant nor denigrate the goodwill and reputation of the appellants in any manner. It is, thus, contended that the said advertisements are not proscribed. The learned counsel relied on the decision of a Division Bench of this Court in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd. & Anr.: 167 (2010) DLT 278 (DB), in support of his contention.

17. It has been contended on behalf of the respondent that advertisements are to be viewed as a whole and the respondent place reliance on the decisions in Marico Limited v. Adani Wilmar Limited: 199 (2013) DLT 663, Glaxo Smithkline Consumer Healthcare Limited and others v. Heinz India Private Limited and another: I.A. No.15233/2008 in CS (OS) No.2577/2008, Decided on 12.11.2010 and McDonald's Hamburgers Ltd. v. Burgerking (UK) Ltd.: [1986] F.S.R. 45. The learned counsel has relied on the decision in the case of Reckitt Benckiser (India) Limited v. Hindustan Unilever Limited: 2008 (5) R.A.J. 664 (Del.), and contended that the test of an average person with imperfect recollection is applied for determining disparagement.

18. It is contended on behalf of the respondent that the advertisement is a form of commercial speech and as such is protected under Article 19(1)(a) of the Constitution of India. Thus, the impugned advertisements cannot be interdicted by any law unless the same falls within the exception of Article 19(2) of the Constitution of India. In support of this contention, the respondent has relied upon the decision of the Supreme Court in Tata Press Ltd. v. Mahanagar Telephone Nigam Ltd.: (1995) 5 SCC 139.

19. The learned counsel for the respondent has controverted the contention that the ‗multiple meaning rule' should be applied to the facts of the present case. It is contended that the learned Single Judge has rightly applied the test as to how the impugned advertisements would be viewed by a discerning viewer. It is contended that the multiple meaning rule as canvassed by the appellant has no basis in law and the said rule has not been accepted in India. It is further contended that this rule is also not accepted in the United Kingdom. The learned counsel has sought to distinguish the case of Ajinomoto Sweeteners Europe SAS (supra) by contending that the said case did not relate to grant of interim relief but related to the instructions given to a Jury and, as such, the said rule could not be applied in the present case. The learned counsel also relied on the decision in the case of Tesla Motors Ltd, Tesla Motors Inc. v. British  Broadcasting Corporation: [2013] EWCA Civ 152 to contend that even in United Kingdom, the test of multiple meaning rule has not been followed.

20. The respondent further contended that the impugned advertisements were truthful and the claims made in the impugned advertisements were substantiated by the In vivo and In vitro tests carried out by two independent laboratories. The respondent further supported the findings of the learned Single Judge and contended that the same were neither perverse nor against any settled principle of law and thus, could not be interfered with by an appellate court. With regard to the appellants contention that additional Triclosan concentration did not in any manner provide additional protection against dental cavities as conveyed by the impugned advertisements as also the contention that better efficiency of protection against tooth decay and cavities could not be projected on the basis of a higher concentration of triclosan, the respondent pointed out, at the close of the arguments, that the said contentions were not urged before the learned Single Judge and also before this Court in the opening arguments. It was submitted that as there was no occasion for the respondent to deal with the said contentions, the same could not be entertained by this Court.

Re: Preliminary objection regarding maintainability of the appeal

21. The present appeal is a composite one whereby the appellants have challenged three orders. Insofar as the challenge to the impugned order is concerned, there can be no dispute that in the normal course an appeal would be maintainable against the impugned order whereby the application of the appellants under Order 39 Rule 1 & 2 being IA No.12818/2013 has been finally rejected. The controversy regarding maintainability of the appeal against the impugned order is premised only on the interpretation of the order dated 23.08.2013 passed by a Division Bench of this Court in FAO(OS) 381/2013. According to the respondent, the appellants having withdrawn their earlier appeal (FAO(OS) 381/2013) are precluded from filing a fresh appeal against the impugned order save as except in accordance with the liberty granted by the Division Bench in their order dated 23.08.2013 passed in the said FAO(OS) 381/2013. Considerable amount of time has been consumed by the respondent in attempting to interpret the said order dated 23.08.2013 as having not granted the appellants the liberty to file a fresh appeal to challenge the impugned order before the fresh application under Order 39 Rule 1 & 2 contemplated therein (which subsequently came to be filed and numbered as IA No. 13434/2013) had been finally heard and decided. A plain reading of the order dated 23.08.2013 indicates that all rights and contentions of the parties were reserved and the Court expressly recorded that it was open for the appellants to impugn the correctness of the order which may be made in the fresh application and also if necessary impugn the order which was subject matter of that appeal (i.e the impugned order herein). We are unable to read any restriction in this order which would prevent the appellant from preferring an appeal against the impugned order prior to the decision in the fresh application that was filed pursuant to the liberty granted by the Court by virtue of the order dated 23.08.2013. It is apparent that the appellants desired to place certain material before the Single Judge in order to persuade the learned Single Judge to grant an ad-interim injunction against the impugned advertisements and had, accordingly, withdrawn the earlier appeal with liberty to file a fresh appeal, if necessary. The appellants were not successful in persuading the learned Single Judge for an ad-interim order and have thus, found it necessary to file a fresh appeal challenging not only the impugned order but also the non grant of relief as prayed for in the fresh application (I.A. 13434/2013 filed by them). As we are unable to read in the order dated 23.08.2013 any restriction as to the liberty granted to the appellants, we reject the preliminary objection raised by the respondent in respect of the challenge to the impugned order. We are also persuaded by the fact that although, admittedly, the appellants have the right to appeal against the impugned order, their earlier appeal had, indisputably, not been heard and decided. We find no reason to deprive the appellants of their right to challenge the impugned order.

22. Insofar as, the present appeal challenges the second impugned order, it is to be noted that IA No.13434/2013 has not been disposed of. However, according to the appellants non grant of an ad-interim order itself has wide ramifications as far as the business of the appellants is concerned. It has been contended on behalf of the appellants that while the appellants have more than 50% market share of the total market relating to dental creams, the respondents market share is less than 6%. It is the case of the appellants that the impugned advertisements are disparaging and impermissible in law. Thus, insofar as the appellants are concerned, if they are correct in their claim, a denial of an ad-interim injunction would, undoubtedly, affect their valuable rights. An advertisement by a party which disparages the goods of its competitors, indisputably, must be interdicted at the earliest. The non grant of ad-interim relief in such cases would tantamount to permitting a party to continue to slander, disparage and denigrate the goods of its competitor and it could not be disputed that from the standpoint of a party complaining against such disparagement, a denial of non grant of an ad-interim order would cause serious injustice to the party concerned. The decision of the Supreme Court in Shah Babulal Khimji (supra) also explains that although every interlocutory order cannot be recorded as a judgment but those orders which decide the ―matter of moment or affect vital and valuable rights of the parties and which work serious injustice to the party concerned‖ would be considered orders in respect of which an LPA would lie.

23. The question whether an order issuing notice would be appealable was considered by a division bench of this Court in Nisha Raj v. Pratap K Kaula (supra). In that case, a Division Bench of this court held that Order 43 Rule 1(r) of the Code of Civil Procedure, 1908 provides for an appeal against an order passed under Order 39 Rule 1, Rule 2 or Rule 2A, Rule 4 or Rule 10, however, an order issuing notice is an order under Order 39 Rule 3 and no appeal has been provided against an order passed under order 39 Rule 3 of Code of Civil Procedure, 1908. Thus, an appeal against an order issuing notice would not lie under the provisions of the Code of Civil Procedure. In regard to the question whether an order issuing notice would amount to a judgment under section 10 of the Delhi High Court Act, 1966, the Court held that certain interlocutory orders which are not covered by Order 43 Rule 1 of Code of Civil Procedure, 1908 will, nonetheless, be appealable under section 10 of the Delhi High Court Act, 1966 provided the orders possess the characteristics and trappings of finality. It was further explained by the Division Bench of this Court that directing issuance of a notice may indeed be a final order in the rarest of rare cases where there is no possibility of restitution. The illustrations of the rarest of rare cases that were cited by the Court included cases where goods were in the process of being exported beyond the territorial waters or where the case pertained to execution by a death sentence. In such cases, restitution was clearly not possible and there was no chance of any kind of retrieval. The Court held that in such category of cases the impact of issuing a notice would be direct and immediate.

24. Taking a cue from the aforesaid judgments in Nisha Raj v. Pratap K. Kaula (supra) and Shah Babulal Khimji (supra), we must apply the tests whether the second impugned order irretrievably prejudices the rights of the appellant or whether it decides a matter of moment or affects vital and valuable rights of the parties which work serious injustice to the party concerned. In our view, the answer to this must be in the negative, particularly, in the light of the fact that the earlier interim application seeking similar reliefs had been heard and decided by the learned Single Judge by the impugned order. Accordingly, the present appeal is restricted to challenging the impugned order and on the material placed and the contentions advanced before the learned Single Judge in respect of I.A. 13434/2013.

25. Insofar as, the challenge to the order dated 27.08.2013 is concerned inasmuch as it rejects the Review Petition (R.P. No.424/2013), the same is clearly not maintainable in view of the express language of Order 47 Rule 7(1) of the Code of Civil Procedure, 1908 which provides that an order of the Court rejecting an application for review shall not be appealable. Accordingly, the challenge to the order rejecting the review petition cannot be considered.

Discussion as to law on disparagement

26. Before proceeding further to address the controversy involved in the present proceedings, it would be apposite to bear in mind the meaning and import of the expressions ―disparagement‖ and ―puffing‖ and similar cognate expressions. The Black's Law Dictionary, Eighth Edition, defines ―Disparagement‖ to inter-alia mean:-

―A derogatory comparison of one thing with another; the act or an instance of castigating or detracting from the reputation of, esp. unfairly or untruthfully; a false and injurious statement that discredits or detracts from the reputation of another's property, product or business.‖

Black's Law Dictionary, Eighth Edition, defines ―Trade Disparagement‖ to inter-alia mean:

―The common-law tort of belittling someone's business, goods, or services with a remark that is false or misleading but not necessarily defamatory. To succeed at the action, a plaintiff must prove that; the defendant made the disparaging remark; the defendant intended to injure the business, knew that the statement was false, or recklessly disregarded whether it was true; and the statement resulted in special damages to the plaintiff, by passing off.‖

Black's Law Dictionary, Eighth Edition, defines Puffing as under: -

―The expression of an exaggerated opinion - as opposed to a factual misrepresentation - with the intent to sell a good or service; Puffing involves expressing opinions, not asserting something as a fact. Although there is some leeway in puffing goods, a seller may not misrepresent them or say that they have attributes that they do not possess.‖

27. The law relating to disparaging advertisements is now well settled. While, it is open for a person to exaggerate the claims relating to his goods and indulge in puffery, it is not open for a person to denigrate or disparage the goods of another person. In case of comparative advertisement, a certain amount of disparagement is implicit. If a person compares its goods and claims that the same are better than that of its competitors, it is implicit that the goods of his competitor's are inferior in comparison. To this limited extent, puffery in the context of comparative advertisement does involve showing the competitor's goods in a bad light. However, as long as the advertisement is limited only to puffing, there can be no actionable claim against the same. In the case of White v. Mellin,: (1895) A.C. 154, the House of Lords while rejecting the contention of disparagement observed as under:

―The allegation of a tradesman that his goods are better than his neighbour's very often involves only the consideration whether they possess one or two qualities superior to the other. Of course ―better‖ means better as regards the purpose for which they are intended, and the question of better or worse in many cases depends simply upon one or two or three issues of fact. If an action will not lie because a man says that his goods are better than his neighbour's, it seems to me impossible to say that it will lie because he says that they are better in this or that or the other respect. Just consider what a door would be opened if this were permitted. That this sort of puffing advertisement is in use is notorious; and we see rival cures advertised for particular ailments. The Court would then be bound to inquire, in an action brought, whether this ointment or this pill better cured the disease which it was alleged to cure - whether a particular article of food was in this respect or that better than another. Indeed, the Courts of law would be turned into a machinery for advertising rival productions by obtaining a judicial determination which of the two was the better.‖

28. The above decision was further explained by the Chancery Division in the case of De Beers Abrasive Products Ltd. and Others v. International General Electric Co. of New York Ltd. and Another: 1975 (2) All ER 599, wherein while considering an allegation of false advertising causing injury to a rival traders group, the court observed as under:-

―the law is that any trader is entitled to puff his own goods, even though such puff must, as a matter of pure logic, involve the denigration of his rival's goods........ ―The best tailor in the world,‖ ―The best tailor in this town,‖ and ―The best tailor in this street,‖ none of the three committed an actionable wrong ...... Where, however, the situation is not that the trader is puffing his own goods, but turns to denigrate those of his rival, then, in my opinion, the situation is not so clear cut. Obviously the statement: ―My goods are better than X's‖ is only a more dramatic presentation of what is implicit in the statement: ―My goods are the best in the world.‖ Accordingly, I do not think such a statement would be actionable. At the other end of the scale, if what is said is: ―My goods are better than X's, because X's are absolute rubbish,‖ then it is established by dicta of Lord Shand in the House of Lords in White v. Mellin [1895] A.C. 154, 171, which were accepted by Mr. Walton as stating the law, the statement would be actionable.‖

29. Thus, as long as claims made in an advertisement are considered only as puffery, no interference with the same by the courts would be warranted. This is for a simple reason that puffing involves expressing opinions and are not considered as statements of fact which can be taken seriously. As puffery is neither intended to make a representation as to facts nor is considered as such by the target audience. The advertisement involving puffery, thus, cannot be stated to be misrepresenting facts. It is common for advertisements to make extravagant and exaggerated claims in relation to goods and services. It is expected that an advertiser would embellish the goods and services that are advertised and such puffery is neither expected to be nor is taken seriously by any average person. This was also observed by the Chancery Division in De Beers Abrasive Products Ltd. (supra) as under:-

―In other words, in the kind of situation where one

expects, as a matter of ordinary common experience, a person to use a certain amount of hyperbole in the description of goods, property or services, the courts will do what any ordinary reasonable man would do, namely, take it with a large pinch of salt.‖

30. Having stated the above, it is equally well settled that a trader is not entitled to denigrate or defame the goods of his competitor's, while comparing his goods with that of the other traders. In comparative advertising, the comparing of one's goods with that of others and establishing the superiority of one's goods over that of others is permissible, however, while doing so, one is not allowed to make a statement that the goods of others are bad, inferior or undesirable as that would amount to defaming or denigrating the goods of other's, which is actionable. In the case of Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd. & Anr.: 167 (2010) DLT 278 (DB), a Division Bench of this Court reviewed the propositions on comparative advertisement as held by the Calcutta High Court in the case of Reckitt & Colman of India Ltd. v. M.P. Ramchandran and Anr.,: 1999 (19) PTC 741 and held as under:-

―23. Finally, we may mention that Reckitt & Colman of India Ltd. v. M.P. Ramchandran and Anr.,1999 (19) PTC 741, was referred to for the following propositions relating to comparative advertising:

(a) A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue.

(b) He can also say that his goods are better than his competitors', even though such statement is untrue.

(c) For the purpose of saying that his goods are the best in the world or his goods are better than his competitors' he can even compare the advantages of his goods over the goods of others.

(d) He however, cannot, while saying that his goods are better than his competitors', say that his competitors' goods are bad. If he says so, he really slanders the goods of his competitors. In other words, he defames his competitors and their goods, which is not permissible.

(e) If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation an action lies and if an action lies for recovery of damages for defamation, then the Court is also competent to grant an order of injunction restraining repetition of such defamation.

These propositions have been accepted by learned Single Judges of this Court in several cases, but in view of the law laid down by the Supreme Court in Tata Press, that false, misleading, unfair or deceptive advertising is not protected commercial speech, we are of the opinion that propositions (a) and (b) above and the first part of proposition (c) are not good law. While hyped-up advertising may be permissible, it cannot transgress the grey areas of permissible assertion, and if does so, the advertiser must have some reasonable factual basis for the assertion made. It is not possible, therefore, for anybody to make an off-the-cuff or unsubstantiated claim that his goods are the best in the world or falsely state that his goods are better than that of a rival.‖

31. There is no dispute as to the principles as enunciated in Dabur India Limited (supra) and it is common ground between the appellants as well as the respondent that the present case must be adjudged on the principles as referred in that case.

Discussion regarding multiple meaning rule

32. Although, there is no controversy regarding the law on disparagement, there has been much debate with respect to the applicability of multiple meaning rule to the facts of the present case. The learned counsel for the appellants has relied upon the decision in Ajinomoto Sweeteners Europe SAS (supra). In that case, the claimant company manufactured and sold aspartame, an artificial sweetener. A super market chain selling its own brand of health foods packaged some of its products in packaging which carried the following message ―no hidden nasties‖ together with a legend reading ―no artificial colours or flavours and no aspartame‖. The claimant therein contended that the message on the packaging indicated that aspartame was potentially harmful or unhealthy and was something which health conscious consumers would avoid. Tugendhat J (Trial Court) considered the meaning of the words used on the packaging and concluded that the following meanings were possible A: That aspartame is harmful or unhealthy. B: That there is a risk that aspartame is harmful or unhealthy. C: That aspartame is to be avoided. D: That these foods were for customers who found aspartame objectionable. The meaning A was rejected outrightly. Meaning C was found to add nothing to meaning B and was also, therefore, not relevant. After having concluded that meanings B and D were both plausible, the Judge applied the single meaning rule and meaning D was adopted as the same was inoffensive while meaning B would convey a message disparaging aspartame. The said decision was carried in an appeal which was considered by the Court of Appeal in Ajinomoto Sweeteners Europe SAS (supra). The Court traced the development of law in this regard. Earlier, the view held was that words were always to be construed in the most inoffensive sense reasonably possible. However, this practice subsequently gave way to the rule that the words and expressions were to be understood ―according to the general and natural meaning, and agreeable to the common understanding of all men‖. The Court of Appeal also noted that Levinz J in Naben v. Miecock: (1683) Skin. 183, explained this rule by holding that the words must be understood ―in their natural, genuine and usual sense and common understanding, and not according to the witty constructions of lawyers, but according to the apprehension of by- standers. The Court of Appeal held that the single meaning rule is not to be imported into the tort of malicious falsehood and further held as under:-

33. But where it is capable of being applied, as it is in the present claim, the rule is productive of injustice. On the judge's unchallenged findings, the meanings which reasonable consumers might put on the claimant's health-food packaging include both the damaging and the innocuous. Why should the law not move on to proof of malice in relation to the damaging meaning and (if malice is proved) the consequential damage without artificially pruning the facts so as to presume the very thing -- a single meaning -- that the judge has found not to be the case?

34. I do not accept that doing this will make trials of malicious falsehood claims unwieldy or over-complex. This is not because these claims are always tried by a judge alone: the experience of common law judges is that juries are on the whole very good at assimilating and applying sometimes complicated directions. It is because it makes the trial of the issues fairer and more realistic. Instead of (as here) denying any remedy to a claimant whose business has been injured in the eyes of some consumers on the illogical ground that it has not been injured in the eyes of others, or alternatively (and Mr Caldecott's case necessarily involves this) giving such a claimant a clear run to judgment when in the eyes of many customers the words have done it no harm, trial of plural meanings permits the damaging effect of the words to be put in perspective and both malice and (if it comes to it) damage to be more realistically gauged.

35. For these reasons I would hold that the single meaning rule is not to be imported into the tort of malicious falsehood.

33. The multiple meaning rule by itself is not determinative in a case of malicious falsehood. The multiple meaning rule has to be applied in conjunction with determining the intent of the person against whom a claim of malicious falsehood is launched. If the statements made are honest and without any malintent then it is obvious that a single meaning rule would be applicable and the meaning which is inoffensive would be considered over offensive ones. This was also held in the case of the Lait v. Evening Standard Ltd.: [2011] 1 W.L.R. 2973, wherein it was held as under:-

The first question is whether the single meaning rule, as explained by Diplock LJ in Slim v Daily Telegraph Ltd [1968] 2 QB 157 , 171-174, and as discussed more recently by Sedley LJ in Ajinomoto Sweeteners Europe SAS v Asda Stores Ltd [2011] QB 497, applies where the defence is one of honest comment. In my view, it does. First, given the rationale for the rule in the field of defamation (which has been affirmed in Charleston v News Group Newspapers Ltd. [1995] 2 AC 65 , 71-72), it is a little hard to see why, as a matter of principle, it should not apply when the court is assessing a defence of honest comment. Secondly, it appears to me that it would be inconvenient, particularly if the case was being tried by a jury, if the single meaning rule applied in a defamation trial for some purposes, but not for others. Thirdly, a number of authorities support this conclusion: see Merivale v Carson 20 QBD 275 , 279, 281 and 282, and Burstein v Associated Newspapers Ltd [2007] 4 All ER 319, paras 7-8. I also agree with Laws LJ that the approval in the Charleston case [1995] 2 AC 65 of Diplock LJ's judgment in the Slim case appears to support this conclusion.‖

34. However, in the event, it is found that the intent itself is to convey the meaning which is disparaging then merely because an innocuous meaning is available, the action by an aggrieved party would not be frustrated. Thus, if a person wilfully and intentionally uses a disparaging expression and puts out an advertisement which can, plausibly, be construed as disparaging the goods and services of the other and the intention of putting out that advertisement is to seek benefit from making disparaging statements against competitor's goods, it would hardly be just or fair to afford such party the defence that the advertisement could also, possibly, be construed in an innocuous manner which is not harmful.

35. The learned counsel for the respondent has advanced his contentions in respect of the multiple meaning rule on the fundamental premise that it is mutually exclusive to the test, as to the inference drawn by an average reasonable man reading or viewing the advertisement. However, this in our view is erroneous as applying the multiple meaning rule does not, by implication, exclude the need to examine as to how the advertisement is viewed by an average reasonable person. It is now well settled that in order to examine the question, whether an advertisement is misleading or whether the same disparages the goods/services of another or leads a viewer to believe something which is not true, it must be examined as to how the same is perceived by an average reasonable man. But we do not think that in order to examine how a reasonable man views an advertisement, all perceptions except one must be discarded. While determining how an advertisement is viewed by a reasonable person, in some cases, it may be necessary to examine whether an average reasonable person could view the advertisement in a particular manner, even though another reasonable view is possible. We do not think, it is necessary that all reasonable views except one must be discarded while determining the question as to how an advertisement is perceived. The presumption that there must be a single reasonable man militates against the principle that two or multiple acceptable views may be adopted by different persons who are fully qualified to be described as reasonable persons.

36. The decision in Tesla Motors (supra) also does not support the view that multiple meaning rule has not been followed in United Kingdom as was contended by the learned counsel for the respondent. The facts in that case related to an action that was instituted for claiming damages for libel, for malicious falsehood and for an injunction to prevent further publication of statements which was a subject matter in those proceedings. Tesla Motors Limited and Tesla Motors Inc. (referred to as ‗Tesla') were manufacturers of motor vehicles and had made available two vehicles for a review by a well-known television programme ―Top Gear‖ which was broadcast by the respondent. In one episode of the programme that was telecast, the cars (Roadsters) that were made available by Tesla were shown to be tested. The tests were designed to push the car to the limits of their performance in terms of acceleration, straight-line speed, cornering and handling. The presenter of the programme, a well-known personality Jeremy Clarkson, who was filmed as driving one of the cars around the track, made various comments regarding the motor vehicle. Some of which were complementary, however, some of the comments were not. Tesla took an exception to two portions of the film including one portion which is described as under:-

―..begins with Mr.Clarkson praising the car and saying:

‗This car, then, really was shaping up to be something wonderful. But then....'At this point there is the artificial sound of a motor slowing down and stopping, followed by a shot of Mr. Clarkson sitting in what has become a stationary vehicle saying: ‗Oh! ... Although Tesla say it will do 200 miles, we worked out that on our track it would run out after just 55 miles and if it does run out, it is not a quick job to charge it up again.' There follows a shot of people pushing one of the Roadsters into the hangar and Mr. Clarkson plugging in the cable in order to re-charge it.‖ It was contended on behalf of the Tesla that the statement, ―although Tesla say it will do 200 miles, we worked out that on our track it would run out after just 55 miles‖, was defamatory as it meant that Tesla had, recklessly, grossly mislead potential purchasers by claiming that its vehicles had a range of 200 miles, while in fact, the range of the vehicle was only about 55 miles. This contention was not accepted as the Court of Appeal held that the statement made by the presenter in the programme related to the range of the vehicle in test conditions. The Court further viewed the film to ascertain the impression that it conveyed and held as under:-

―21. For the purposes of the appeal I have watched the whole of the film a number of times. In my view it was important to do so because, although the transcript with which the court was provided is a helpful reminder of what was said and shown, it does not convey the same impression as the film itself. One important matter which is vividly conveyed by the film is the nature of the testing that was carried out by the ‗Top Gear' team, which involved violent acceleration (described as a ―drag race‖), continuous high-speed driving at or near the limits of the car's capability and heavy cornering. Testing of this kind is typical of ‗Top Gear', as most viewers of the programme would know, but even a person viewing the programme for the first time would immediately realise that the style of driving bears no relationship to that which could be engaged in on a public road, even if the car were to be driven quickly by normal standards. It was for this reason that Mr. Caldecott Q.C. submitted that no reasonable person could draw the inference that the car's range undernormal, albeit quick, driving conditions was only 55 miles or that in claiming that it had a range of 200 miles Tesla had dishonestly set out to mislead the public.

22. At the heart of this part of the case is the allegation that the statement contained in the film meant that the true range of the Roadster was in the order of 55 miles. That is important, because it is the extent of the discrepancy between the claimed range of 200 miles and the alleged true range of about 55 miles that supports what is said to be the implied assertion of dishonesty. Indeed, so great is the discrepancy that, if it were true, it is difficult to see what other inference could reasonably be drawn. However, it is clear from what the viewer sees of the tests carried out on the car that they bear no relationship to driving on public roads, or at any rate to the kind of driving on public roads of a kind on which a manufacturer could possibly base an estimate of range. It would be obvious to a reasonable viewer, therefore, that the range derived from track testing was not in any meaningful sense the car's ―true range‖ and he would therefore have no reason to infer that by claiming a range of 200 miles Tesla had set out to mislead.

37. It is apparent from the above that this was not a case where the Court was presented with a set of facts where two meanings were possible. The multiple meaning rule is applied only in cases where two meanings are plausible and thus there was no scope of applying multiple meaning rule in Tesla Motors (supra).

38. Our attention was drawn to paragraph 19 of the aforesaid judgment in Tesla Motors (supra) which reads as under:-

―19. It was common ground that the judge applied the correct principles for the purposes of determining what meanings relating to the Roadster's range the programme was capable of bearing. They were derived from Skuse v Granada TV [1996] EMLR 278 and Jeynes v News Magazines Ltd [2008] EWCA Civ 130 (unreported) and are summarised as follows in paragraph [10] of his judgment:

(1) The court should give to the material complained of the natural and ordinary meaning which it would have conveyed to the ordinary reasonable reader reading the article or viewing the programme once.

(2) The hypothetical reasonable reader (viewer) is not naïve but he is not unduly suspicious. He can read between the lines. He can read in an implication more readily than a lawyer and may indulge in a certain amount of loose thinking. But he must be treated as being a man who is not avid for scandal and someone who does not, and should not, select one bad meaning where other non-defamatory meanings are available. (Emphasis added.)

(3) While limiting its attention to what the defendant has actually said or written the court should be cautious of an over-elaborate analysis of the material in issue.

(4) The reasonable reader does not give a newspaper item the analytical attention of a lawyer to the meaning of a document, an auditor to the interpretation of accounts, or an academic to the content of a learned article.

(5) In deciding what impression the material complained of would have been likely to have on the hypothetical reasonable reader the court is entitled (if not bound) to have regard to the impression it made on them.

(6) The court should not be too literal in its approach. The above list was broadly followed by the Court of Appeal in Jeynes v News Magazines Ltd [2008] EWCA Civ 130 at [14], save that it added the important point that the hypothetical reader is taken to be representative of those who would read the publication in question.

39. We do not think that there is any quarrel with the principles as enunciated in the above referred passage from the decision in Tesla Motors (supra). While determining as to how average men view an advertisement, it cannot be assumed that the average men tend to choose a derogatory meaning where other simple non-disparaging meanings are available. However, in cases where the advertisement presents an impression which any reasonable person could perceive as being derogatory or defamatory or disparaging, the goods/services of another person then certainly it would not be reasonable to discard that view only because certain other meanings are also possible. The aid to the multiple meaning rule must be taken only in such circumstances where two plausible meanings are possible and it is probable that certain viewers (readers) would adopt a view which is disparaging. In the present case, it is not necessary for us to delve into these contentions much further as, in our view, the facts of the present case do not suggest the dilemma of two divergent plausible views.

Impugned TVC

40. Having briefly outlined the principles of law that are applicable, we may proceed to examine the impugned advertisements.

41. The impugned TVC starts with a close up of a signage which reads as ―PREVENTIVE CAVITY TEST‖. The font size of the word ―PREVENTIVE‖ is significantly smaller than the font size of the words ―CAVITY TEST‖. The advertisement thereafter shows two children with their respective mothers standing behind them. The children are shown brushing their teeth. While one child is shown to be brushing with Colgate ST (hereinafter referred to as ‗Colgate child'). The other child is shown to be brushing with Pepsodent GSP (hereinafter referred to as ‗Pepsodent child'). The children seem to be participating in some sort of an experiment which relates to the effectiveness of the two Toothpastes. The packaging of both Colgate ST and Pepsodent GSP are clearly visible in the TV Commercial. After the children finish their brushing, the Colgate child shows his teeth to the dentist and invites him to test his teeth. In conformity with the storyline, this can only mean the Preventive Cavity Test which was indicated at the commencement of the commercial. The dentist does not conduct the test and asks the Colgate child to go, on which the Colgate child shows his surprise and states ―Aapne hi to bola tha, Cavity Test Hoga‖ (freely translated means ―you only said that there would be a Cavity Test‖). The dentist then explains to the Colgate child ―Asli Test Ab Nahi, Tab Karenge Jab Cavity Ka Khatra Zyada Ho‖ (freely translated means ―the real test would not be now, but would be done subsequently when the danger of cavity is higher').

42. The next shot of the commercial depicts the children four hours later and this is indicated by a Super appearing on the left hand side of the frame simultaneously on the right hand side of the frame a clock is seen rapidly moving from 8 to 12. This clearly depicts the passage of time of four hours. The next set of frames depict both the 'Colgate' and 'Pepsodent' children with their respective lunch boxes and at that moment, the dentist appears alongwith the respective mothers of the two children. The dentist takes out some sort of hand held scanning device which is depicted as a tool to examine the teeth of the two children. The next frame is a split frame where the light emanating from the scanning device is shown to pan on the teeth of the two children. On the left hand side (Colgate Child's side of the screen) the product Colgate ST is clearly visible and which identifies that the Colgate child has used Colgate ST. Similarly, on the right hand side (Pepsodent Child's side of the screen) Pepsodent GSP is visible. A screen shot of this frame is reproduced herein below:-

43. The next frame is again a split screen where alien looking creatures depicting Triclosan as soldiers are shown. The Triclosan soldiers pertaining to Colgate are shown in red and Triclosan soldiers pertaining to Pepsodent are shown in blue. The right hand side frame also bears the caption 100% germ attack power, below the Pepsodent GSP tube. The expression "INDEX 100%" is indicated at the bottom of both the split frames. A screen shot of the frames is reproduced herein below:-

The right hand side split screen expands rapidly and the term 100% in the caption "100% germ attack power" is also shown increasing to 130%. Simultaneously, the Colgate side of the screen diminishes in proportion. A screen shot of the frames is reproduced herein below:-

At this stage, the following super appears at the bottom of the screen:-

―Creative Visualization of the Action of Triclosan on Cavity causing Germs. New Pepsodent Germicheck enhances delivery of Triclosan in the mouth. Claim based on In-Vivo study where Germ Attack Power refers to amount of Triclosan remaining in mouth, 4 hours after brushing, where COLGATE STRONG TEETH is indexed at 100% and PEPSODENT

GERMI CHECK is Brush twice daily.

The impugned TVC then ends with a statement ―Naya Pepsodent Germicheck Colgate Ke Mukable Germ Check Power‖ (freely translated means ―new Pepsodent Germ check gives germ check power in comparison with Colgate‖).

44. It is contended on behalf of the appellants that the impugned TVC is per se disparaging the product and goodwill of the appellants. The test which is shown to be conducted is a cavity test and it is contended that no such test, in fact, exists. The impugned TVC is stated to depict the mother of the Colgate child as wearing a worried and a concerned look in contradiction to the mother of the Pepsodent child who appears as being confident and satisfied. The expression of the Pepsodent Child's mother indicates superiority, which it is contended, is meant to show the superiority of Pepsodent GSP. It is contended that the impression that is conveyed is that Colgate child's mother is circumspect about Colgate ST. Much emphasis was laid by the learned counsel for the appellants on the depiction of the triclosan soldiers, while triclosan soldiers in blue, which pertain to Pepsodent GSP, are shown to be increasing and subsequently occupying the entire screen, the triclosan soldiers shown in red, pertaining to Colgate, are shown to be diminishing. It is contended that this depiction is mischievous as Triclosan is not a live organism and does not multiply. The learned counsel for the appellants has also sought to attribute meaning to the word ―ATTACK which is exclaimed by the child after the cavity test.

45. The examination of the impugned TVC frame by frame and its detailed analysis of the words used or the expressions of the mothers and attributing a message to them, is in our opinion, not the correct way to view any advertisement. The advertisement must be viewed in its entirety and it is not necessary to dissect each word or expression. In the case of McDonald's Hamburgers Ltd v. Burgerking (UK) Ltd.: [1986] F.S.R. 45, the Chancery Division stressed that the advertisement should be considered as a whole in the case of disparagement and held as under:

―Advertisements are not to be read as if they were some testamentary provision in a will or a clause in some agreement with every word being carefully considered and the words as a whole being compared.‖

46. The relevant question to be asked is what is the story line of the impugned TVC, the intent of the advertiser and the message that it leaves with the consumers/prospective consumers. In the case of Pepsi Co., Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr.: 2003 (27) PTC 305 (Del.), a Division Bench of this Court had held that factors which are required to be considered while deciding the question of the disparagement are (1) Intent of the commercial (ii) Manner of the commercial (iii) Story line of the commercial and the message sought to be conveyed by the commercial. These factors were further clarified by a Division Bench in the case of Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd. & Anr. (supra) wherein the court held as under:-

(1) The intent of the advertisement -- this can be understood from its story line and the message sought to be conveyed.

(2) The overall effect of the advertisement -- does it promote the advertiser's product or does it disparage or denigrate a rival product?

In this context it must be kept in mind that while promoting its product, the advertiser may, while comparing it with a rival or a competing product, make an unfavourable comparison but that might not necessarily affect the story line and message of the advertised product or have that as its overall effect.

(3) The manner of advertising -- is the comparison by and large truthful or does it falsely denigrate or disparage a rival product? While truthful disparagement is permissible, untruthful disparagement is not permissible.

47. The learned Single Judge has examined the impugned TVC in detail and has come to a conclusion that the impugned TVC does not depict the Colgate child in any bad light or points out any defect in Colgate ST. Although, it had been contended on behalf of the appellants that the mother of the Colgate child looked worried and concerned and the teeth of the Colgate child did not look as well formed as that of the Pepsodent child, the learned Single Judge after examining the frames has not found any such derogatory representation and has come to a conclusion that impugned TVC cannot be held to be disparaging Colgate ST. A comparative advertisement is permissible and it is open for a trader to compare his goods and services with that of his competitors and, if true, also proclaim his goods/services as better than those of competitors. However, he cannot proclaim that the goods of competitors are bad or make any disparaging statements about the goods/services of his competitors. We have also viewed and examined the impugned TVC and, without going into the truthfulness and accuracy of the message conveyed by the impugned TVC, it is not possible to conclude that the advertisement per se denigrates or slanders Colgate S.T. It is not possible to come to a conclusion that the Colgate child has been shown in a bad light or to be suffering from any dental ailment and in that view of the matter while the impugned TVC does proclaim Pepsodent GSP to be 130% better than Colgate, it cannot be stated that the impugned TVC per se denigrates Colgate ST.

48. Having stated the above, it would also be necessary to examine the intent and the overall effect of the advertisement. Following the decision in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd. & Anr. (supra), it is also important to examine the storyline and the message that the impugned TVC conveys to an average person who is a consumer or a prospective consumer of the products that are advertised. An average person cannot be assumed to be gullible and is presumed to have the ability to ignore puffery. However, an average viewer is likely to accept the factual representations that are conveyed by an advertisement if the same are conveyed as serious statements of fact and not as hyperbole. An average viewer does not analyse an advertisement and is likely to be receptive to the message that the advertisement projects. A similar view has been articulated by a Single Judge of this Court in Glaxo Smithkline Consumer Healthcare Limited and others v. Heinz India Private Limited and another: I.A. No.15233/2008 in CS (OS) No.2577/2008, Decided on 12.11.2010, wherein this court held as under:-

―An application of the principles discussed previously in this judgment, would mean that the Court has to, as far as possible, consider the overall effect of the advertisements; a minute dissection of each term, or phrase is uncalled for, and the stand point from where the Court should judge the nature of the alleged disparagement should be not of the aggrieved trader, but the reasonable, or average consumer, who is conscious of trading rival's propensities to puff and exaggerate their products. At the same time, this reasonable or average consumer is likely to be influenced by factual assertions made in such advertisements. Specific assertions, or claims, in advertisements are more likely impact directly, as contrasted with vague and general claims.‖

49. If one considers the question, what is the message that is conveyed by the impugned TVC, we have little doubt that any reasonable person who views the impugned TVC would receive the message that Pepsodent GSP is 130% more effective than Colgate ST insofar as combating cavities is concerned. Certain consumers who are not aware of the appellants products in premium segment are also likely to conclude that Pepsodent GSP is better than the Colgate toothpastes in view of the voice-over at the end of the impugned TVC. The entire theme of the impugned TVC is conduct of a cavity test (the expression ―preventive‖ only appears, in a smaller font size, on the banner at the commencement of the impugned TVC and is not referred to thereafter). While the Pepsodent child clears the test with flying colours apparently the Colgate child does not fare that well. Any reasonable person viewing this advertisement would take with him the message that Pepsodent GSP is significantly better in combating tooth decay and oral germs/bacteria than Colgate/Colgate ST. A scientific basis is sought to be supplied for the expression ―130% better, thus this cannot be ignored as hyperbole. The erroneous usage of percentage as a measure may be ignored but the statement that Pepsodent is better that Colgate in respect of combating cavity causing germs is, undoubtedly, a statement of fact. The message that Pepsodent GSP is better than Colgate ST in combating tooth decay (cavities) is the message that the impugned TVC delivers and this is a serious representation of fact. Thus, the question that requires to be addressed is whether this claim by the respondent is truthful or not.

50. The entire basis of the claim being made by the respondent is that the In vivo and In vitro test conducted by independent laboratories have found that concentration of triclosan in dental plaque, after four hours of brushing, is higher where Pepsodent GSP has been used in comparison with cases where Colgate ST is used. These findings are also disputed. However, notwithstanding the dispute, the question which arises is, does this parameter by itself lead to an inference that Pepsodent GSP is more efficient in combating tooth decay and cavities in comparison with Colgate ST. The co-relation between higher concentration of Triclosan after four hours of usage of Pepsodent GSP as claimed by the respondent and cavity prevention qualities of the two compared products is vital to determine the truthfulness of the impugned TVC. In the event, it is found that this co- relation is illusory and a higher concentration of Triclosan in dental plaque does not have a proportionate impact in combating tooth decay or germ build up or that Colgate ST has certain other ingredients in addition to Triclosan which also prevent tooth decay then clearly the message sent out by the impugned TVC would be untruthful and thus impermissible. To illustrate this point, let us take a hypothetical case of comparison between two motor vehicle manufacturers. While one manufacturer may use an engine of a higher cubic capacity, the other manufacturer, while using an engine of a lower capacity may tune it differently and employ a better fuel injection system which, in fact, leads to delivering more power to the wheels in comparison to the vehicle employing the larger capacity engine. While it would be appropriate for the car manufacturer using a larger engine to put out a comparative advertisement indicating that the engine used in vehicles manufactured by him were of a higher capacity than the engine used by other car manufacturer, it would be completely misleading if the former car manufacturer would on the basis of a higher capacity engine proclaim that the vehicles manufactured by him were more powerful and faster than that of his competitor. The essential message conveyed by the advertisement must be truthful and given the fact that in a case of comparative advertisement where the reputation of the products/services of another dealer/person is at stake, the truthfulness of the essential message should be strictly tested.

51. In the case of Lakhanpal National Ltd. v. M.R.T.P. Commission: (1989) 3 SCC 251, the Supreme Court explained that an advertisement may contain inaccurate facts yet convey an essentially truthful message. On the other hand, an advertisement may be entirely accurate on facts but convey a completely misleading message. In that case, advertisements were issued by a dry cell battery manufacturer who was manufacturing and dealing in power cells under the brand name ―Novino. The advertisements announced that Novino batteries were manufactured in collaboration with National Panasonic of Japan using National Panasonic techniques. In fact, there is no company known as National or Panasonic. The same were brands names of Mitsushita Electric Industrial Co. Ltd. Technically viewed, the advertisement contained inaccurate facts, however, the Supreme Court held that viewed from the perspective of the message that was being communicated, the same could not be held to be untrue. This was explained by the Supreme Court in the context of unfair trade practice as under:-

7. However, the question in controversy has to be answered by construing the relevant provisions of the Act. The definition of ―unfair trade practice‖ in Section 36-A mentioned above is not inclusive or flexible, but specific and limited in its contents. The object is to bring honesty and truth in the relationship between the manufacturer and the consumer. When a problem arises as to whether a particular act can be condemned as an unfair trade practice or not, the key to the solution would be to examine whether it contains a false statement and is misleading and further what is the effect of such a representation made by the manufacturer on the common man? Does it lead a reasonable person in the position of a buyer to a wrong conclusion? The issue cannot be resolved by merely examining whether the representation is correct or incorrect in the literal sense. A representation containing a statement apparently correct in the technical sense may have the effect of misleading the buyer by using tricky language. Similarly a statement, which may be inaccurate in the technical literal sense can convey the truth and sometimes more effectively than a literally correct statement. It is, therefore, necessary to examine whether the representation, complained of, contains the element of misleading the buyer. Does a reasonable man on reading the advertisement form a belief different from what the truth is? The position will have to be viewed with objectivity, in an impersonal manner. It is stated in Halsbury's Laws of England (4th Edn., paras 1044 and 1045) that a representation will be deemed to be false if it is false in substance and in fact; and the test by which the representation is to be judged is to see whether the discrepancy between the fact as represented and the actual fact is such as would be considered material by a reasonable representee. ―Another way of stating the rule is to say that substantial falsity is, on the one hand, necessary, and, on the other, adequate, to establish a misrepresentation‖ and ―that where the entire representation is a faithful picture or transcript of the essential facts, no falsity is established, even though there may have been any number of inaccuracies in unimportant details. Conversely, if the general impression conveyed is false, the most punctilious and scrupulous accuracy in immaterial minutiae will not render the representation true‖; Let us examine the relevant facts of this case in this background.

52. The disclosure of the basis on which the message of the impugned TVC is predicated (i.e. the Super indicating that basis to be In vivo study) would not be an adequate defence if the message conveyed by the impugned TVC advertisement is found to be untruthful.

53. We find that this aspect of the matter has not been considered by the learned Single Judge. Even before us, arguments on this aspect were also advanced at the stage of rejoinder and the respondent did not have an occasion to contest the same. In these circumstances, we consider it appropriate if the matter is remanded to the learned Single Judge for considering this aspect of the matter afresh, based on the material that may be produced by the appellant in support of its contentions.

54. We have refrained from examining whether the essential message which is conveyed by the impugned TVC is untruthful or inaccurate as the same had not been placed before the learned Single Judge. However, we must add that in the event the learned Single Judge, on the basis of the material placed by the parties, comes to a conclusion that the appellant's contention that higher concentration of Triclosan as claimed by the respondent does not, prima facie, establish that Pepsodent GSP is superior in its efficacy to combat tooth decay in comparison with Colgate ST then in such event the telecast of the impugned TVC would be liable to be interdicted as the balance of convenience is squarely in favour of the appellants. In the event that impugned TVC is found to be, prima facie, misleading and inaccurate, it would follow that the appellant's contention that they must be protected against the injury being caused to their reputation and goodwill is liable to be accepted. Restraining the telecast of the impugned TVC would not result in any significant damage or injury to the respondent even if, subsequently, the claim against them is not established. As indicated earlier, in our view, the balance of convenience in this case would lie squarely in favour of the appellants provided they are able to, prima facie, establish that the message of the impugned TVC, as discussed hereinbefore, is not accurate or is misleading or untruthful.

55. We may add that the appellants have a product in their portfolio, Colgate Total, which, admittedly, delivers a sustained release of triclosan. Admittedly, the concentration of triclosan in dental plaque, after four hours of brushing with Pepsodent GSP, does not exceed the concentration of Triclosan where Colgate Total is used. The learned counsel for the respondent has explained that Colgate Total is a product in the premium segment and the comparative advertisement is not in respect of Colgate Total. In this view of the matter, the voiceover at the end of the impugned TVC which proclaims Pepsodent GSP to be better than Colgate is indisputably inaccurate and prima facie mischievous. In this view of the matter, this voiceover is liable to be deleted altogether or modified. The Super in the impugned advertisement which explains the basis of indexing of , is alleged to be not visible when the advertisement is viewed on an ordinary Television Set, this aspect has not been seriously contested by the respondent. In the event, the super is not visible on ordinary television sets, the impugned TVC would also require to be modified to ensure that the super is clearly visible to all viewers including those that view the impugned TVC on ordinary television sets.

Impugned print advertisement

56. A full page advertisement that was published in the Hindustan Times showed a hand gripping a product Pepsodent GSP and below which was a caption ―IT'S TIMES TO ATTACK. The lower half of the page of the impugned print advertisement depicted a comparison between Colgate ST and Pepsodent GSP and the caption boldly stated read as ―PEPSODENT - NOW BETTER THAN COLGATE STRONG TEETH. DELIVERS GERM ATTACK POWER.‖ Lower half of the impugned print advertisement is split in two parts, one part is the Pepsodent side which is in a blue background. The other part is the Colgate side which is in a red background. Each part has picture of a child. The child on the Pepsodent side (referred to as the ―Pepsodent Child‖) is depicted holding a spoon and is in the process of consuming a visibly appetising dessert (a slice of cake or pastry which has a liberal dose of chocolate syrup) which is placed before him. The product Pepsodent GSP is clearly visible on the Pepsodent side of this advertisement. On the Colgate side, the child (referred to as the ―Colgate Child‖) is shown to be unhappy. Although, a plate of dessert is before him, he is not shown to be consuming the same but is shown as having placed his clenched fist on his jaw clearly depicting certain amount of discomfort, obviously, on account of a dental problem. The dessert placed before the child is also not as appetising. On the centre of the lower half of the page is a depiction of a tooth, which on the Pepsodent side is shown as covered in green spots barring one spot which is shown in white. The Colgate side of the tooth is depicted having red and white spots. The caption on the tooth states ―4 Hours After Brushing‖. On the lower portion of the impugned print advertisement, a picture of Pepsodent GSP alongwith the caption ―Non-Stop Attaaaack! on cavity causing germs‖ is printed. The advertisement contains a Super which is in fine print and reads as under:-

Creative Visualization of the Action of Triclosan on Cavity causing Germs. New Pepsodent Germicheck enhances delivery of Triclosan in the mouth. Claim based on In-Vivo study where Germ Attack Power refers to amount of Triclosan remaining in mouth, 4 hours after brushing, where COLGATE STRONG TEETH is indexed at and PEPSODENT

GERMI CHECK is 130%. Brush twice daily.The lower half of the impugned print advertisement is reproduced herein below:-

57. The tests to determine whether an advertisement is disparaging or misleading as are discussed in respect of the impugned TVC are equally applicable to the impugned print advertisement. One has to only look at the advertisement to realise that the visual story that is conveyed is that while the Pepsodent child is happy, healthy and can enjoy his dessert, the child using Colgate is uncomfortable and clearly unable to consume the dessert, presumably on account of a dental ailment toothache which is depicted by the child holding his jaw on a clenched fist.

58. The learned counsel for the appellants has made submissions as to how the colour scheme and certain finer aspects of the advertisement are all designed to disparage Colgate ST and has also handed over a glossy print of the advertisement alongwith comments pointing out as to how the Pepsodent GSP is shown not only to be superior than Colgate ST but also depicting that use of Colgate would cause discomfort to its user. We do not find it necessary to examine each of those comments separately, as in our view, an advertisement must be viewed in the perspective of the impression that is obtained by an average consumer/prospective consumer who views/reads the advertisement. Viewed from the perspective of an average person with imperfect recollection, we are in no manner of doubt that the advertisement not only conveys an impression that use of Colgate would not be as effective as Pepsodent but also conveys an impression that use of Colgate ST instead of Pepsodent GSP would result in causing harm and discomfort to its consumers. This is clearly the essential message of the visual story depicted by juxtaposing the two children, one happy and enjoying his dessert and the other who is in discomfort and unable to consume the dessert placed before him on account of a dental ailment. Given the fact that advertisements are not analysed carefully but are usually glanced over by most readers. It is apparent that a consumer who glances at this advertisement would, surely carry the impression as stated above. Thus, in our view, the impugned print advertisement is prima facie disparaging of the appellant's goodwill and its product Colgate ST.

59. In our view, even if, we assume that the representation that Pepsodent is more effective in combating germs, 4 hours after brushing, in comparison with Colgate ST, is correct even then, prima facie, the advertisement would be disparaging as it also conveys the message that Colgate is ineffective and lacks the requisite quality to maintain oral hygiene and combat tooth decay and its usage, as depicted by the Colgate child, would result in the user ending up with a tooth related ailment. As explained in Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd. & Anr. (supra) a trader cannot, while saying that his goods are better than his competitors', say that his competitors' goods are bad. If he says so, he really slanders the goods of his competitors. In other words, he defames his competitors and their goods, which is not permissible. In our view, this is precisely what the impugned print advertisement conveys by its advertisement theme and the visual story.

Conclusion

60. To sum up, in our view, the impugned TVC cannot be stated to be per se disparaging Colgate ST. However, the voice over at the end of the impugned TVC which states ―Naya Pepsodent Germi Check Colgate Ke Mukable 130 pratishat Germ Attack Power‖ (freely translated means ―in comparison to Colgate New Pepsodent Germi Check has 130% Germ Attack Power‖) is misleading and inaccurate. Thus, this statement in the voiceover is directed to be deleted from the impugned TVC or at the option of the respondent, may be suitably modified to refer only to Colgate ST (Colgate Strong Teeth). The respondent is further directed to ensure that the Super which reads as ―Creative Visualization of the Action of Triclosan on Cavity causing Germs. New Pepsodent Germicheck enhances delivery of Triclosan in the mouth. Claim based on In-Vivo study where Germ Attack Power refers to amount of Triclosan remaining in mouth, 4 hours after brushing, where COLGATE STRONG TEETH is indexed at 100% and PEPSODENT GERMI CHECK is 130%. Brush twice daily.‖ is clearly visible when the impugned TVC is viewed on any television set. The matter is remitted to the learned Single Judge to consider afresh the aspect whether the essential message conveyed by the impugned TVC is prima facie truthful or misleading in the light of the observations made hereinbefore.

61. We further restrain the respondent and or its agents from publishing the impugned print advertisement or any other similar advertisement which disparages Colgate ST (Colgate Strong Teeth) or any other product of the appellants.

62. The present appeal and the application stand disposed of with the aforesaid directions. The parties are left to bear their own costs.

VIBHU BAKHRU, J

BADAR DURREZ AHMED, J

DECEMBER 10, 2013

U. VARADARAYA NAYAK case

COMMENT: 1.The Suit relates to infringement of Patent. The Hon’ble Court declined the injunction.

2. The Hon’ble Delhi High Court has reiterated the General Principles of Interim Injunction, which is as follow: On the question of grant of interim injunction it may be useful to recall the principles explained by the Supreme Court in Wander Limited v. Antox India Private Limited 1990 Supp (1) SCC 727 as under: "Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted." (Para 25).

3. Regarding the challenge of the Patent by the Defendant, the Hon’ble Delhi High Court has given the following finding:

In F. Hoffmann-LA Roche v. Cipla Ltd. 159 (2009) DLT 243 a Division Bench of this Court was considering, in the context of the prayer for an interim injunction in a patent infringement action, the question whether the Defendant therein had raised "a credible challenge to the validity of the patent". The Court held out that "the Defendant resisting the grant of injunction by challenging the validity of the  patent at this stage is required to show that the patent is vulnerable and that the challenge raises a serious substantial question and a triable issue." (Para 30).

4.         Expanded Metal Company v. Bradford 214 U.S. 366 to urge that merely because the invention seems simple after it is made, it does not cease to be novel and that the person who first discovers and makes improvements is entitled to protection as an inventor.

5.

                        IN THE HIGH COURT OF DELHI AT NEW DELHI

                        IA No. 3997 of 2012 in CS (OS) No. 523 of 2012

                                        Reserved on: November 26, 2013

                                                Decision on: December 12, 2013

U. VARADARAYA NAYAK ..... Plaintiff Through: Ms. Swathi Sukumar with

Mr. Anirudha Mitra, Ms. Anur Paarcha and Ms.Essenese Obhan, Advocates.

                                                    Versus

S.K. ANAND & ORS. ..... Defendants Through: Mr. Mahender Rana, Advocate for

Defendant No. 1.

Mr. Amarjeet Singh, Mr. Hari Subramanium, Ms. Vernika Tomar and Ms. Vibha Arya, Advocates for Defendants 2 to 4.

Mr. Sanjeev Mahajan, Advocate for Defendants 5 and 6.

CORAM: JUSTICE S. MURALIDHAR

JUDGMENT

12.12.2013

1. This judgment disposes of the application by the Plaintiff U. Varadaraya Nayak under Order 39 Rules 1 and 2 of the Code of Civil Procedure 1908 ('CPC') for interim relief.

Background facts

2. The Plaintiff has filed the above suit seeking a permanent injunction to restrain the Defendants from infringing Patent No. 184118 granted in his name for "a twin blade razor". At the time of filing of the suit on 28th February 2012, the Plaintiff was 68 years old and a retired school teacher living in Mangalore, Karnataka. He states that he holds a B.Sc. degree in Physics, Chemistry and Mathematics and a B.Ed. in Education from Mysore University. He is stated to have been bestowed four National Awards and three International Awards for his research and innovations. He states that he has also been working as an individual inventor in the field of technologies related to solar energy, laboratory apparatus, teaching apparatus, utility devices such as shaving razors etc. for the last 29 years.

3. On 7th March 1994, the Plaintiff applied for a patent for an invention titled 'a twin blade razor'. It is stated that the grant of patent was opposed by Gillette Company, USA. After the examination of the patent as well as the opposition, the Controller of Patents ('COP'), by an order dated 9th April 2008, granted the Plaintiff the patent for the above invention. The grant of patent was recorded in the Register of Patents on 29th July 2008. The patent is valid for a period of 20 years from the date of filing. In other words, the patent is valid up to 7th March 2014.

4. It is stated that by an order dated 14th December 2007 the Deputy COP, Chennai held that the inventive feature of the Plaintiff's Patent No. 184118 was "the novel manner in which the holes are positioned in relation to the upper blade and lower blade". It was held that positioning of holes "can neither be a routine choice for the cartridge designer nor can the cartridge designer be aware of it and therefore is non-obvious...[in] the sense that it would not have occurred to any specialist in the field of razor manufacture or design, had such a specialist been asked to find a solution to the particular problem of cleaning the gap between blades (5,6)." It was held that the inventive feature of Patent No. 184118 did not occur to the opponent though it was simple.

5. The Plaintiff states that there are as many as five claims in the above Patent No. 184118. It is stated that the novelty and inventive step of the suit patent reside in the combination of the following integers/elements of the Plaintiff's razor:

"(a) A lower blade separated from an upper blade by a spacer

(b) The lower blade partly overlapped by the upper blade

(c) Holes provided on the lower blade such that each hole is partly covered by the upper blade and remains partly exposed."

The plaint

6. In para 13 of the plaint, the Plaintiff states that he wrote a letter dated 8th October 2003 to Laser Shaving (India) Pvt. Ltd. ('LSIPL') (Defendant No.2) having its offices at New Delhi, Hyderabad and Mumbai, expressing his willingness to license/assign his inventions related to shaving equipments (i.e. the then pending suit patent and granted Patent No. 181580 related to a protective case for a safety razor head). The Plaintiff states that in the said letter he had explained the inventive features of his inventions to Defendant No.2.

7. In para 14, the Plaintiff states that Mr. S.K. Anand (Defendant No.1), "is CS (OS) No. 523 of 2012 Page 3 of 28 believed to be the Chief Executive Officer ('CEO') in Harbans Lal Malhotra & Sons Pvt. Ltd. (Defendant No.3)". In the same paragraph the Plaintiff avers that LSIPL (Defendant No.2), Malhotra International (P) Ltd. (Defendant No.4), Vidyut Metallics Pvt. Ltd. (Defendant No.5) and Supermax Personal Care Pvt. Ltd. (Defendant No. 6) are associated companies of the 'House of Malhotra' and involved in the activity of manufacturing and selling razors that are using the Plaintiff's patented invention, thereby infringing the patent of the Plaintiff. It is further averred that Defendants are a common economic entity. The Plaintiff states that the exact relationship between the Defendants could be ascertained after discovery in the present suit.

8. In para 15 of the plaint it is stated that following the letter of 8th October 2003, the Plaintiff on 14th October 2003 had a telephonic conversation with Mr. S.K.Anand (Defendant No.1) in respect of both the inventions related to shaving equipments. It is further stated that Defendant No.1 responded to the Plaintiff's letter dated 8th October 2003 written to Defendant No.2 and requested the Plaintiff to send him the detailed specifications of both inventions along with the correspondence related to the suit patent. The Plaintiff states that he sent a letter dated 22nd October 2003 to Defendant No.1 sending him the "complete specifications, drawings and patent certificate in respect of Patent No. 181580 and in the same letter assured him that he would be sending documents pertaining to the suit patent including the documents related to the opposition proceedings initiated by the Gillette Company, USA." It is then stated that on 23rd October 2003, the Plaintiff sent Defendant No.1 the documents pertaining to the suit patent which included provisional as well as complete specifications, drawings related thereto and all the documents and correspondences received by the Plaintiff from the Patent Office, Chennai. By a letter dated 29th October 2003, the Plaintiff requested Defendant No.1 to "reconsider his Patent No. 181580 for assignment/licensing." It is stated that when he did not hear from the Defendants, the Plaintiff sent reminder letters dated 27th December and 29th December 2003 requesting them to let the Plaintiff know if they were interested in licensing/assignment of any of his inventions.

9. In para 20 of the plaint, it is stated as under:

"20. It is only thereafter when the Plaintiff had a telephonic conversation sometime in January 2004 with Defendant No.1 that the Defendants responded that they are not interested in any of his inventions. Considering that the Defendants indicated disinterest in commercial exploitation of the invention forwarded by the Plaintiff, the Plaintiff considered the matter closed and did not thereafter pursue or interact with the Defendants".

10. The plaint is silent on what happened for a period of seven years thereafter. In para 21 it is stated as under:

"21. In or around last week of December 2011, the Plaintiff was shocked to learn that the Defendants are involved in the manufacture and sale of razors that using the same technology/invention shared by the Plaintiff in 2003. The Plaintiff had in good faith treated the matter as closed and did not anticipate that the Defendants would blatantly exploit the Plaintiff's invention shared by the Plaintiff with the Defendants in good faith in 2003. It is pertinent to note that despite coming from a less privileged economic background, the Plaintiff had diligently expended his meagre resources in renewing the Patent No. 184118 from time to time spending in excess of Rs.43,000/-. The  consistency with which the Plaintiff, a retired school teacher, has maintained his rights in the suit patent speaks volumes about the faith that he reposed in the commercial viability of his invention and in the patent system of his country".

11. In para 22 of the plaint, the Plaintiff has listed out 12 infringing products manufactured by Defendants 2, 4, 5 and 6. It is not in dispute that each of the products list in para 22 is a triple blade razor. In para 25 it is stated that upon coming to know the above fact, the Plaintiff himself conducted an investigation and found that the Defendants' infringing products, using a technology identical to the one under the suit patent, were being sold in the domestic market including within the territorial jurisdiction of this Court.

12. In para 26 of the plaint, the Plaintiff sets out the particulars of infringement. He states that on perusal of the triple blade razors procured by the Plaintiff from the market, the Plaintiff noticed that the Defendants have unauthorisedly copied/incorporated all the essential elements and combination of elements/integers of the Plaintiff's registered patent namely: "(a) a lower blade separated from an upper blade by a spacer (b) the lower blade partly overlapped by the upper blade (c) holes provided on lower blade such that each hole is partly covered by the upper blade and remains partly exposed."

13. The Plaintiff has in his plaint relied upon a technical report obtained by him from Professor K.V. Gangadharan, National Institute of Technology, Surathkal, Mangalore, Karnataka ('NITK'). The comparison charts and tables explaining the similarities between the infringing products of the Defendants and the elements of claims of the Plaintiff in the suit patent have been set out in para 26. It is stated in para 29 that "the cause of action for the present suit arose when the Plaintiff came to know in or around last week of December 2011 that the Defendants were manufacturing and marketing the Plaintiff's 'Twin Blade Razor' using identical technology and know-how as that of the Plaintiff's patent". The cause of action is said to have further arisen in January 2012 when the Plaintiff received the report of Professor K.V. Gangadharan from NITK. Apart from praying for a permanent injunction, the Plaintiff has also claimed damages in the sum of Rs.20 lakhs and for rendition of accounts and profits earned by the Defendants and delivery up of infringing goods for destruction.

The written statement of Defendant No.1

14. Summons in the suit and notice in the application IA No. 3997 of 2012 were issued on 2nd March 2012. Defendant No.1 in his written statement filed on 16th April 3012 stated at the outset that there was no cause of action disclosed against him in the plaint. He was neither manufacturing nor selling any twin blade razor. He stated that the Plaintiff was aware that Defendant No.1 had retired from the services of Defendant No.3 way back in 1998 and was not thereafter entitled to represent Defendant No.3. Defendant No.1 denied having any telephonic conversation or correspondence with the Plaintiff in respect of the suit patent either in his personal capacity or on behalf of Defendant No.3. Defendant No.1 alleged that the Plaintiff had fabricated the correspondence to mislead the Court. He contended that he was neither a necessary nor a proper party to the proceedings.

15. Defendant No.1 pointed out that the product 'Laser3Petals' and Topaz3' have been manufactured and marketed only by Defendant No.2 and not by Defendant No.3. He further pointed out that Defendants 5 and 6 are competitors of Defendants 2, 3 and 4 and, therefore, the suit is bad for misjoinder of parties. Defendant No.1 has also listed out the prior art in the US and Canadian patents as well as some Indian patents in terms of which, according to him, the claims made by the Plaintiff in the suit patent were in public domain and, therefore, not an invention within the meaning of the Patents Act, 1970 ('PA'). Reference is made to US Patent No. 4641429 (hereafter 'US Patent '429') filed on 24th December 1984 i.e. at least nine years before the date of fling of Patent No.184118. Reference is also made to US Patent No. 3724070 (hereafter 'US Patent '070') filed on 15th March 1971 which also showed the presence of holes in the lower blade and that the holes in the lower blade were partly covered by the upper blade. Canadian Patent No. 1101652 filed on 31st October 1978 showed that the lower blade and the holes therein extended forward relative to the cutting edge of the upper blade. Reference is also made to PCT Publication No. WO 1991/19596 (hereafter 'PCT 596') published on 26th December 1991 i.e. 18 months before the filing of the suit patent which was also related to a twin blade assembly with the lower blade edge extending outward of the shaving edge of the upper blade. Since the alleged novel feature of Patent No. 184118 was anticipated by PCT 596, Patent No. 184118 was rendered invalid. Reference is also made to US Patent No. 4345374.

The written statement of Defendant Nos. 2 to4

16. A written statement was filed by Defendants 2 to 4 on 9th April 2012. They also filed a counter claim, CC No. 14 of 2012, seeking revocation of Patent No. 184118 granted in favour of the Plaintiff. Apart from reiterating that the suit patent lacked novelty and is, therefore, invalid, they stated that Defendants 2 to 4 are among the leading companies manufacturing and marketing safety razor blades for more than sixty years enjoying tremendous goodwill and reputation in the market. They contended that Claim 2 of the suit patent stipulated a mathematical theory whereby an artificial and non- constructional feature i.e. a plane drawn perpendicular to the plane surface of the lower blade, the shaving edge of the upper blade lying on the said plane, whereby the plane intersects the lower blade into the first portion and the second portion, cannot be patented under Section 3(k) of the PA. Further, Claim 3 envisaged each hole being quadrilateral and not circular or square whereas the holes in the infringing products did not contain square holes. Claim 3 of the suit patent was not workable and not capable of industrial application and, therefore, not an invention under Section 2(1) (j) of the PA. Further, there was no demonstration in the suit patent that the feature under Claim 4 i.e. the spacer strip extending from one end to the other on the longitudinal axis and tapering towards the shaving edge of the upper blade was practically feasible even as a working model. Claim 5 of the suit patent was an omnibus claim with no standing on its own.

17. Defendants 2 to 4 further pointed out that in 1984, CS (OS) No. 873 of 1984 was filed by the Gillette Company U.S.A against Defendants 3 and 4 and others for infringing Indian patents granted in favour of Gillette which pertained to a twin blade shaving system. These facts are urged to show that a complete arrangement with a lower and upper blade and with lower blade having holes was already in the public domain and, therefore, the said feature of the impugned patent could not be termed as a novelty. It was submitted that apart from the patent being revocable under Section 64(1) (e), (f) and (g) it was also revocable under Section 64(1) (j) of the PA since the Plaintiff had appropriated technology from the public domain through a copy-paste method in order to obtain an unjust enrichment on false pretentions. Inasmuch as Claim 1 was not an invention, it was not patentable under Section 64(1) (k) of the PA.

The written statement of Defendant Nos. 5 and 6

18. Defendants 5 and 6 filed their written statement on 11th April 2012. They submitted that there was a memorandum of understanding executed between the three sons of late Mr. Harbans Lal Malhotra on 19th August 1995. There was a settlement between the Harbans Lal Malhotra group ('HLM Group') (Defendants 2 to 4) on the one hand and Vidyut Metallics Pvt. Ltd and Supermax Personal Care Pvt. Ltd (Defendants 5 and 6) ('the Supermax Group') on the other. It is stated that the HLM Group and the Supermax Group are independent groups and competitors. The plaint failed to disclose any common dispute or common transaction to which the Supermax Group were parties. The plaint disclosed that the Plaintiff had correspondence with Defendant No.1 only. No cause of action was disclosed against the Supermax Group.

19. Defendants 5 and 6 also contended that the suit was bad for misjoinder of parties and causes of action. In addition to the grounds urged by Defendants 2 to 4, Defendants 5 and 6 urged that the complete specification of the suit patent "does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention, as contained in the complete specification are not by themselves sufficient to  enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection and which constitutes a ground for revocation of the patent under sub-Section (h) of Section 64 of the Act." It was submitted that the grounds of revocation of the suit patent under Section 64 (1) (g), (i) and (j) are also attracted.

20. Defendants 5 and 6 raised the plea of delay and laches. It is stated that Defendant No.5 began independently manufacturing the twin blade razors with improvised computer controlled assembly machine in the year 1986. They were under the brands SuperMax SII, SuperMax Style, SuperMax Lubra and SuperMax Delux. It is stated that the research and development ('R&D') for the three blades and four blades razors commenced in 1994 and the designs were ready in 1998. Manufacturing of three blade razors commenced in 2000 and marketing soon thereafter. Four blade razors were sold since 2006. It is stated that the Plaintiff at that time was certainly "quite aware of the fact that Defendant No.5 were manufacturing and selling twin blade razors fitting the description of what the Plaintiff calls conventional razors in his patent specification." It is also submitted that the suit patent has not been worked for the last 18 years. It is contended that the Plaintiff has filed a vexatious litigation more than 12 years after the three blade razors of Defendants 5 and 6 were manufactured and introduced in the market. It is denied that the Plaintiff ever corresponded with Defendants 5 and 6. Therefore, there was no question of them having any access to his patent.

21. Defendants 5 and 6 have assailed the expert report of Professor K.V. Gangadharan of NITK. In particular, it is pointed out that his report is only based on a visual analysis of the components of each razor. It is submitted that Professor K.V. Gangadharan had only analysed the suit patent vis-à-vis the Gillette Presto razor as prior art and he had not analysed the suit patent vis-à-vis other prior art razors such as the twin blade razors manufactured by the Defendants 5 and 6 or the prior published patent documents. It is pointed out that he had not disclosed the parameters set by him to perform the alleged rinsing operation on the Gillette Presto razor and the alleged prototype working model of the suit patent; he had not mentioned the details and conditions for conducting such experiments including the test subjects; he had failed to disclose details of fluid characteristics, viscosity, composition of the slurry being in shaving debris and the co-efficient of flow which influenced the experiment and on which he had based his conclusions. It is submitted that the conclusion of Professor Gangadharan that the triple blade razor of Defendants 5 and 6 can be described as a combination of an upper twin blade razor and a lower twin blade razor was 'preposterous'.

22. In the written statements filed by Defendants 5 and 6 it is further pointed out that the only way to establish infringement was to compare a razor manufactured on the basis of the suit patent with that manufactured by Defendants 5 and 6 but no razor was in fact manufactured on the basis of the suit patent. It was pointed out that the technology and engineering design for the twin blade on one hand and three and four blade razors on the other are completely different considering the size, positioning and alignments of blades in twin, triple and quadra blades razors. It is submitted that in triple and quadra blades only about 10% of the hole is exposed whereas 90% of the hole remains covered by the upper blade and the protrusion in the holes is not because of the change in size or placement of the holes but because the size of the upper blades gradually decreases in size which leads to the holes in the lower blade getting slightly exposed without there being any change in the size and placement of holes. Importantly, it is pointed out that the lowest blade in the three and four blades have two rows of holes in comparison to one row of holes in the suit patent. The size of lower blades is bigger in three and four blades. Defendants 5 and 6 have also filed a counter-claim, CC No. 73 of 2012 seeking revocation of the suit patent.

23. The Plaintiff has filed replication to the written statements as well as written statements to the counter-claims.

24. Ms. Swathi Sukumar, learned counsel for the Plaintiff, Mr. Mohinder Rana, learned counsel for Defendant No.1, Mr. Amarjeet Singh, learned counsel for Defendant Nos. 2 to 4 and Mr. Sanjeev Mahajan, learned counsel for Defendants 5 and 6 have addressed arguments on the question of grant of interim relief.

General principles regarding grant of interim relief

25. On the question of grant of interim injunction it may be useful to recall the principles explained by the Supreme Court in Wander Limited v. Antox India Private Limited 1990 Supp (1) SCC 727 as under: "Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."

Prima Facie Case

26. The Court first proposes to examine whether the Plaintiff has made out a prima facie case for the grant of an interim injunction in his favour.

27. In response to the query by the Court whether a prototype was developed from the suit patent and whether that was used for comparison with the infringing products by the expert, Ms. Sukumar, the learned counsel for the Plaintiff, initially showed a wooden model, the photographs of which have been included at pages 406 to 408 of the Plaintiff's documents. Later she produced a prototype purportedly used by the expert while preparing his examination report. She stated that he examined a Gillette blade which was available in the market and which was modified to incorporate the suit patent. The expert does not say so in his report. He states that he was given a 'working model/prototype' by the Plaintiff. He does not describe what the model was or how it was made. It will also have to be explained by the expert on what basis the Gillette Presto blade stated to have been modified to incorporate the suit patent can be compared for infringement with the products of the Supermax Group. The abstract preceding the report of the expert states that the analysis is based on visual inspection and analysis of the function of components in the devices. The expert, however, fails to notice or comment on the fact that there is more than one row of holes in the lower blade in the triple and quadra blade.

28. It was then urged by Ms. Sukumar that in a patent infringement action, the comparison is between the claim under the suit patent and the infringing product and not between the patented product and the infringing product. However, even on this basis there are several unanswered questions at this stage. The allegedly infringing products of Defendants 2 to 6 are three-blade and four-blade razors whereas the suit patent is for a twin-blade razor. Samples of blades used in the triple-blade and quadra blades have been produced in the Court. It is seen that in a triple-blade, the first blade has one row of holes, the second blade two rows of holes and the third blade, three rows of holes. The size of the first lower blade is bigger than the upper blade and the size of the second lower blade bigger than the first and so on. The shape and positioning of the holes in each of the lower blades is different. The report of the expert relied upon the Plaintiff is silent on whether the expert noticed the above features i.e. the number of rows of holes, the size, position and alignment of blades in the twin blades as compared to the triple and quadra blades. He will have to be questioned at the trial on whether the protrusion of the holes are not caused because of the change in size or placement in the holes but because of the size of the upper blades gradually decreasing when compared to the size of the lower blades. In short, the question which is yet to be convincingly answered by the Plaintiff is whether the three-blade and four-blade razors of the Defendants have been manufactured by using the suit patent.

29. In support of the plea that a triple blade or a quadra blade is merely an extension of a twin blade, and that in any event the claims in the suit patent are not confined to a twin blade razor, Ms. Sukumar relied upon the decision dated 29th April 2005 of the US Court of Appeals in The Gillette Company v. Energizer Holding Inc. The Defendants pointed out that in the said case Claim No.1 of the patent in question described the invention as relating to "particular safety razor blade having blade units with plurality of blades". In the instant case, the first paragraph of the specification of the suit patent states "this invention relates to a twin blade razor". There is no reference to 'plurality' of blades. Para 29 of the plaint states that "the cause of action for the present suit arose when the Plaintiff came to know in or around last week of December 2011 that the Defendants were manufacturing and marketing the Plaintiff's twin blade razor using identical technology and know-how as that of the Plaintiff's patent."

Vulnerability of the suit patent

30. The Court next takes up the question of vulnerability of the suit patent to a challenge as to its validity. In F. Hoffmann-LA Roche v. Cipla Ltd. 159 (2009) DLT 243 a Division Bench of this Court was considering, in the context of the prayer for an interim injunction in a patent infringement action, the question whether the Defendant therein had raised "a credible challenge to the validity of the patent". The Court held out that "the Defendant resisting the grant of injunction by challenging the validity of the  patent at this stage is required to show that the patent is vulnerable and that the challenge raises a serious substantial question and a triable issue." The Court referred to the decision dated 22nd June 2006 of the U.S. Court of Appeals for the Federal Circuit in Abbot Laboratories v. Andrx Pharmaceuticals Inc. where it was held that "in resisting a preliminary injunction, however, one need not make out a case of actual invalidity. Vulnerability is the issue at the preliminary injunction stage, while validity is the issue at trial. The showing of a substantial question as to invalidity thus requires less proof than the clear and convincing showing necessary to establish invalidity itself."

31. The Plaintiff has admitted that two of the three features integral to Claim 1 of the suit patent are known features through the prior art. These are: (i) One lower blade separated from the upper blade by a spacer and (ii) Lower blade partly overlapped by upper blade. This is evident from the reply filed by the Plaintiff on 28th August 2001 to the opposition by Gillette at the pre- grant stage before the Deputy COP where he states "the use of spacer means is not the novel feature or claim of my invention of Patent No.184118. The provision of apertures or holes for the passage of lather and debris in the lower leading blade as in the conventional twin blade razors wherein all the holes/apertures are wholly situated beneath the upper blade is not the claim of my invention of Patent No.184118." The use of the twin blade system i.e. providing a razor with upper trailing blade and lower leading blade is also admitted by him to be known. What the Plaintiff claims as a novel feature is providing apertures or holes in the lower blade of twin blade shaving system such that one part of each of the holes lie in the portion of the lower blade situated beneath the upper blade and the remaining part of each hole lie in the remaining portion of the lower blade situated beyond (outside) the shaving edge of the upper blade.

32. Ms. Sukumar relied on Expanded Metal Company v. Bradford 214 U.S. 366 to urge that merely because the invention seems simple after it is made, it does not cease to be novel and that the person who first discovers and makes improvements is entitled to protection as an inventor. The Defendants argue that the prior art sufficiently depicts the partial covering of the holes and that the suit patent is revocable on the grounds of both anticipation and obviousness. At this stage, the Court proposes to discuss illustratively one such prior art referred to in the report of the expert produced by the Supermax Group. The said report refers to US Patent No. '070 and concludes that it shows the existence of partially covered and partially existing holes in the blades. In response, learned counsel to the Plaintiff relies upon the fact that the Deputy COP has in the order dated 14th December 2007 observed that in US Patent No. '070 the lower blade is fully covered by the upper blade and that no portion of the slots and holes in the lower blade are situated forward of any beyond the shaving edge of the secondary blade though they may be proximate to shaving edge. However, the expert produced by the Supermax Group states in his report that US Patent No. '070 is a "prior art showing debris formation proximate to the cutting edge". These are conflicting expert opinions that need to be tested at the trial. The Court is not required to express a final view at this stage. Likewise, there is serious contestation between the parties as regards the other prior art as well, all of which need not be discussed at this stage. Suffice to say that the material placed on record by the Defendants persuades the Court to hold that they have raised a credible challenge to the validity of the suit patent in terms of Section 64 (1) PA.

33. The challenge to the suit patent is also on other grounds. It is urged that it is not clear whether any prototype was examined at the stage of grant of patent. During the hearing it was sought to be explained by the counsel for the Plaintiff that under Section 10 (3) of the PA, the COP had the discretion to ask for a product to be developed for examination and that it was possible to grant a patent even without the product being developed. The novel aspect of the suit patent is purportedly the partial covering of the holes which facilitates easy clearing of the debris when the blade is washed with running water. How this can be verified by the COP without a working model is a matter for experts to explain at the trial.

34. In response to the submission of the Defendants 2 to 6 that the suit patent lacked the requisite complete specification, Ms. Sukumar referred to the decision in Corevalve Inc. Edwards Lifesciences [2009] All ER (D) 66 and submitted that the suit patent sufficiently described how the holes in the blade are designed to achieve the desired result of cleaning the debris and any person involved in manufacturing razors would easily be able to make a workable product out of the specifications. As against this, it is urged by learned counsel for the Defendants that in the above case there was no allegation that no workable device could be produced. A device did exist but its description was such that it could not be implemented clinically. The Defendants argue that in the present case there is no specification of either the size of the holes, the placement of the holes, the number of holes and the manner of achieving the result of the debris being removed by pouring water rather than forcing tap water and that these would be the very basic specifications for making a product on the basis of the suit patent. Given the nature of the product, in the present case, it cannot be concluded, without the matter going to trial, that the specification of the suit patent is sufficient to develop the infringing products.

35. There was much argument on the question whether the fact that the patent was not worked by the Plaintiff could be a ground for revocation of the patent. The Defendants placed considerable reliance Sections 83 and 85 of the PA and on the decision in Franz Xaver Huemer v. New Yash Engineers AIR 1997 Del 79. In response, it is submitted by Ms. Sukumar that the question of non-working of a patent is relevant only in the context of compulsory licensing of the patent which in the instant case has not happened. The Court keeps open these contentions as a decision thereon is not considered necessary for deciding the question of interim relief.

36. The Court holds that while the Defendants have been able to raise a credible challenge to the validity of the suit patent, the Plaintiff has not been able to prima facie show that the Defendants 2 to 6 were, in October 2003, aware of the specification of the suit patent and made the allegedly infringing products on that basis.

The case against Defendants 2 to 6

37. The respective cases of the parties show that the Plaintiff in the first place proceeded on the presumption that the Defendants were either related to each other or were associated companies. Importantly, the Plaintiff presumed that Defendant No.1 continued to be the CEO of Defendant No.3 even as of the date of filing the suit. In the replication filed to the written statement of Defendant No.1, the Plaintiff is unable to dispute the fact that Defendant No.1 has ceased to be an employee of Defendant No.3 since 1998. Defendants 2 to 4 have placed on record a letter dated 1st April 1998 addressed by Defendant No.3 to Defendant No.1 informing him of his retirement with effect from the close of business on 30th April 1998 and documents concerning payment of his gratuity. Prima facie it does show that Defendant No.1 was no longer an employee of Defendant No.3 at the time the Plaintiff purportedly wrote him on 8th October 2003.

38. While Defendant No.1 has completely denied that the Plaintiff wrote to him on 8th October 2003 and the telephone conversation with him on 14th October 2003, the Plaintiff relies on a letter dated 18th October 2003 written by Defendant No.1 acknowledging receipt of the Plaintiff's earlier letter dated 8th October 2003. Defendant No.1 has denied receiving the letter dated 18th October 2003 as well. The Plaintiff has placed on record a copy of the said letter. It is unsigned. The Plaintiff has on 10th September 2013 filed a copy of the cover bearing a postal stamp of 2nd October 2003 of the Post Office at Mangalore. This shows the sender to be Defendant No.3. It is by ordinary post. It will be for the Plaintiff to prove at the trial on the basis of these two documents that the said unsigned letter was in fact sent by Defendant No.1 in a cover bearing the name of Defendant No.3. At this stage, it is not possible to conclude that the said unsigned letter was in fact sent by Defendant No.1. This is an important document for the Plaintiff since it purportedly links Defendant No.1 and through him the remaining Defendants. There is admittedly no correspondence between any of the other Defendants and the Plaintiff. In this background, the burden will on the Plaintiff to show at the trial that despite the fact that Defendant No.1 ceased to be an employee of Defendant No.3 with effect from 1st May 1998, he continued to act on behalf of not only to Defendants 2 to 4 but also on behalf of Defendants 5 and 6 in October 2003.

39. The case of the Plaintiff is that Defendants 2 to 6 became privy to the suit patent specifications and drawings through Defendant No.1. In support of his plea that he sent to Defendant No.1 the complete specifications and drawings of the suit patent, the Plaintiff has placed on record copies of the handwritten letter dated 23rd October 2003 addressed to Defendant No.1 as 'CEO (Mr. Anand)' at the address of Defendant No.3 and the speed post receipts. Photocopies of the subsequent handwritten letters dated 29th October 2003, 27th December 2003 and 29th December 2003, all addressed to 'CEO (Mr. Anand)' at the address of Defendant No.3 have also been filed. All of these documents have been denied by Defendant No.1. Therefore, it would be a matter for proof at trial that these letters were in fact delivered to Defendant No.1 at the address to which it was sent. The further burden on the Plaintiff would be to show that Defendant No.1 in turn handed over or conveyed the contents of these documents to the other Defendants. At the present stage, the documents placed on record do not enable the Court to come to even a prima facie conclusion that the Defendants 2 to 6 were privy to the said information.

40. The Plaintiff then relies on information received by him from BSNL pursuant to an application under the Right to Information Act, 2005 ('RTI Act') about the outgoing calls from his telephone number 2231542 for the period 1st October to 30th November 2003. These show that three telephone calls were made: one on 28th October 2003, the second on 7th November 2003 and the third on 25th November 2003. The two calls on 28th October 2003 were to 03326549000, stated to be the number of Defendant No.5. The lengths of the two calls were 38 seconds and 31 seconds. There is no averment that Defendant No.1 was connected with Defendant No.5. Three calls were to Mobile No. 9831047909. It will be a matter for evidence as to whether this mobile number pertains to any of the Defendants. In any event, the telephonic conversations that the Plaintiff is said to have had as averred in para 15 of the plaint on 14th October 2003 does not appear to be established by the above call details. There is no outgoing call from the Plaintiff's number on 14th October 2003. In the plaint there is no reference to outgoing calls on 28th October 2003, 7th November 2003 and 25th November 2003. As regards the purported telephonic conversation with Defendant No.1 in January 2004, the Plaintiff relies on the call details obtained from the Dakshina Kannada District of BSNL which shows one call made on 12th January 2004 to Mobile No. 98310479091 for a brief duration. These details by themselves do not enable the Court to conclude even prima facie that the conversation pertained to the suit patent.

41. These are the prima facie conclusions of the Court. Certainly, the Plaintiff would have to discharge the burden of proving the facts as pleaded by him in the plaint. For the present purpose, however, the Plaintiff has not been able to even prima facie show that Defendants 2 to 6 would have known of the suit patent as a result of the Plaintiff's alleged correspondence and telephone conversations with Defendant No.1 in October 2003 and January 2004 and despite the latter having ceased to be an employee of Defendant No.3 since 1st May, 1998.

Delay and laches

42. The Court next examines the question of delay and laches. It has been explained by the Supreme Court in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004) 3 SCC 90 that mere delay in bringing an action is not sufficient to defeat the grant of injunction. However, it would have to be shown that the Defendants were dishonest in adopting the suit patent to manufacture the infringing product. As already observed, the Plaintiff has not been able to show that the Defendants 2 to 6 actually knew of the suit patent in October 2003 itself.

43 Ms. Sukumar referred to the decision in IXYS v. Advance Power Technology 321 F. Supp. 2d 1156 (N.D. Cal. 2004) to urge that since Defendants declined to obtain a licence from the Plaintiff, any delay on the part of the Plaintiff in filing the suit cannot be held against him since he was under a bona fide belief that Defendants would honour their decision not to use the suit patent. As already concluded, the Plaintiff has not been able to prima facie show that he ever corresponded with Defendants 2 to 6 and that they communicated to him their disinclination to obtain a licence for the suit patent.

44. The explanation that the Plaintiff gives for waiting till May 2012 to file the present suit is not very convincing. It is difficult to believe that a person who holds patents for several inventions, and has succeeded, in 2008, in obtaining a patent for a twin blade razor after pre-grant opposition, was not aware of similar products in the market till December 2011. The case of the Supermax Group is that they entered the market with the triple and quadra blades in 2000 and 2006 respectively. Their products have been sold throughout the country and abroad. The Supermax Group are proprietors of the trademarks SuperMax SII, SuperMax Style etc. since 1990 and SuperMax Sensation and SuperMax Lubra since 2000 and 2001 respectively. Defendants 2 to 4 have also shown that they are manufacturing their products pursuant to the patent granted in their favour which has not been challenged till date.

45. In the circumstances, the Court is of the view that the Plaintiff has not been able to sufficiently explain the delay in approaching this Court for the grant of interim injunction.

Balance of convenience and hardship

46. The Court next examines the factors of balance of convenience and irreparable hardship. Defendants 2 to 4 and 5 and 6 have produced the sales figures of their products which run into several crores annually. They submit that the grant of an interim injunction would effectively mean shutting down their business. Whereas the Defendants 2 to 6 would be in a position to compensate the Plaintiff if he ultimately succeeds, the Plaintiff would be in no position to compensate the monetary losses likely to be suffered by the Defendants 2 to 6 if ultimately he does not succeed. On the other hand, it is urged by Ms. Sukumar that since the suit patent expires in March 2014, the Plaintiff would suffer irreparable injury if the interim injunction is not granted. It is submitted that if the Court fails to issue an injunction, the Defendant would continue to use the products as if they have a licence for the suit patent and this would set an undesirable precedent for the other potential infringers apart from rendering the Plaintiff's prayer for a permanent injunction infructuous. Reliance is placed on the decision of the Supreme Court inZenit Metaplast Pvt. Ltd. v. State of Maharashtra (2009) 10 SCC 388.

47. Para 23 of the decision in Zenit Metaplast Pvt. Ltd. reads as under: "23. Interim order is passed on the basis of prima facie findings, which are tentative. Such order is passed as a temporary arrangement to preserve the status quo till the matter is decided finally, to ensure that the matter does not become either infructuous or a fait accompli before the final hearing. The object of the interlocutory injunction is, to protect the Plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial". (emphasis supplied)

48. The Plaintiff has not been able to dispute the sales figures of the triple blade and quadra blades since 2000 and 2006 respectively. The documents placed on record by the Defendants 2 to 4 and 5 and 6 show the sales figure for triple blades for the year ending 31st March 2010 was Rs.17,75,38,729 and for the quadra blades it was Rs.2,75,25,184.The Plaintiff filed the suit in December 2012 despite obtaining the patent registration in 2008. If at this stage an interim injunction is granted, the business of the Defendants 2 to 6 in the allegedly infringing products which commenced since 2000 and 2006 would undoubtedly be adversely affected. Also, in that event, the losses of the Defendants 2 to 6 cannot be expected to be adequately compensated by the Plaintiff if he ultimately does not succeed in the suit. In the period during which the Plaintiff has delayed the filing of the suit for infringement, the businesses of the Defendants 2 to 6 have grown significantly. This would be a factor that has to be taken into consideration in deciding where the balance

CS (OS) No. 523 of 2012 Page 26 of 28 of convenience lies. In American Cyanamid Company v. Ethicon Ltd. [1975] 2 W.L.R. 316 it was observed as under:

"the governing principle is that the Court should first consider whether, if the Plaintiff were to succeed at the trial in establishing his right to a permanent injunction, he would be adequately compensated by an award of damages for the loss he would have sustained as a result of the Defendant's continuing to do what was sought to be en joined between the time of the application and the time of the trial. If damages in the measure recoverable at common law would be adequate remedy and the Defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the Plaintiff's claim appeared to be at that stage. If, on the other hand, damages would not provide an adequate remedy for the Plaintiff in the event of his succeeding at the trial, the Court should then consider whether, on the contrary hypothesis that the Defendant were to succeed at the trial in establishing his right to do that which was sought to be enjoined, he would be adequately compensated under the Plaintiff's undertaking as to damages for the loss he would have sustained by being prevented from doing so between the time of the application and the time of the trial. If damages in the measure recoverable under such an undertaking would be an adequate remedy and the Plaintiff would be in a financial position to pay them, there would be no reason upon this ground to refuse an interlocutory injunction."

49. The Court concludes that the balance of convenience in declining the interim relief sought by the Plaintiff is in favour of the Defendants. However, the Defendants 2 to 6 are directed to maintain full accounts of the sales of the respective products listed in para 22 of the plaint as reflected in the audited accounts from the date of filing of the suit and shall produce those accounts at the trial. If the Plaintiff succeeds in the suit, the damages payable to him would be determined on that basis.

50. It is clarified that nothing said in this order will affect the final decision in the suit.

Conclusion

51. IA No. 3997 of 2012 is dismissed with the above directions and observations with no order as to costs.

S. MURALIDHAR, J.

DECEMBER 12, 2013