ASHIM KUMAR BANERJEE, J. - (1.) THE parties are engaged inter alia in manufacture and trade of Dry Cell Batteries. Eveready, the respondent abovenamed manufacturers of Zinc/Carbon batteries as well as alkaline batteries whereas Gillette markets alkaline batteries by the name Duracell. Gillette started advertising their product inter alia claiming, they were ten times better than ordinary batteries.
(2.) IN their advertisement particularly in electronic media they would try to depict, ordinary batteries could not last longer and while showing ordinary battery, they would show red batteries. Eveready would complain, colour red always played a dominant role on their product and Duracell thereby made disparaging remark about their product by giving enough indication to the members of the public that Eveready batteries were inferior to Duracell. We have examined the batteries as well as the advertisements. We would find, ordinary batteries were shown without any label. However, they were painted red. In the printed advertisement the word "Zinc/Carbon batteries " were printed in microscopic font which would not easily attract the notice of the public. Gillette in their defence would contend, they meant Zinc/Carbon batteries as ordinary batteries that were proved to be inferior to alkaline batteries, as alkaline batteries would last long. They did not have any intention to make any disparaging remark about the rival product, far to speak of Eveready. They would also contend, a disparaging action brought by Eveready in 2006 failed before Advertising Board. Hence, subsequent action in 2012 would also fall on the said ground alone. The learned Single Judge while considering the rival contentions, came to finding that the advertisement impugned, would definitely attack Eveready as the Eveready did have the inexplicable link with the colour red. His Lordship directed modification of the advertisement before its publication. According to him, the comparison of Zinc/Carbon battery as ordinary battery was not clear in absence of voice over. His Lordship also observed that similar advertisement had been continuing since 2006, hence, there would be no necessity for stoppage of such advertisement. His Lordship directed modification by adding a voice over, making the comparison more distinct. His Lordship also directed the modification of the print advertisement, by directing the said comparison to be printed with the bigger font, at least 50% larger than the one used.
(3.) BEING aggrieved, Gillette as well as Eveready filed distinctive appeal. Gillette was aggrieved as there was direction for alteration of the advertisement. Eveready was aggrieved as the learned Judge declined to stop the advertisement. We heard both of them. Mr. S.K. Kapoor, learned senior counsel appearing for Gillette contended, the red being a fundamental colour, could not have any monopoly of any product. He put emphasis on the earlier decision of the Advertising Board 2006, rejecting similar complaint. He referred to the decision of Euro-Solo Energy Systems Limited Vs. Eveready Industries India Limited reported in 2009 Volume-IV Calcutta High Court Notes page-162 and contended, the said decision recognized the 'trade dress ' and the 'get-up ' of the Eveready battery, however, did not recognize the right of monopoly of Eveready on the colour red. Per contra, Mr. Ranjan Bachawat, learned senior counsel contended, red having a dominant role on the product of Eveready that was taken judicial notice in earlier precedent, should be reckoned. He put emphasis on the decision in the case of Euro-Solo Energy (supra). According to him, the learned Judge while accepting the argument of Eveready that the advertisement did contain offending materials, erred in not passing of order of injunction. Mere adding of a voice over or a change of font, would not be sufficient to protect Eveready 's product from disparaging attempt on the part of Duracell. He referred to the following decisions in support his contention. 1. Euro-Solo Energy Systems Limited Vs. Eveready Industries India Limited reported in 2009 Volume-IV Calcutta High Court Notes page-162. 2. Karamchand Appliances Pvt. Ltd. Vs. Sh. Adhikari Brothers and Ors. reported in 2005 Volume XXXI Patents And Trade Marks Cases page-1. 3. Eureka Forbes Ltd. Vs. Pentair Water India Pvt. Ltd. reported in 2007 Volume-XXXV Patents And Trade Marks Cases page-556. 4. Dabur India Limited Vs. Emami Limited reported in 2004 Volume-XXIX Patents And Trade Marks Cases page-1. 5. Heinz India Pvt. Ltd. Vs. Glaxo Smithkline Consumer Healthcare Ltd. and Ors. reported in 2009 Volume-II Calcutta High Court Notes page-479. 6. Dabur India Limited Vs. Colgate Palmolive India Ltd. reported in All India Reporter 2005 Delhi page-102. ;