Sanjib Banerjee, J.
1. The plaintiff founds this action in passing off on the first defendant allegedly copying the plaintiffs slogan in the second-last frame of the plaintiffs television commercial relating to its Horlicks health food drink powder. The plaintiff says that the slogan being the most prominent feature of its commercial, which is also the theme used in danglers and other promotional material used by the plaintiff, it has come to be so exclusively associated with the plaintiffs product that any form of imitation thereof by any other person would amount to deceit for filching the trade and trading upon the goodwill of the plaintiff and its renowned product.
2. There appears to be little doubt that the plaintiffs is a well-known product. The first defendant has not contested either the plaintiffs or its said product's reputation. The plaintiff shows - and there is no reason to disbelieve the plaintiff - that it has expended several tens of crores in its advertisement campaign in which the punch-line in the television commercial is the most recognisable feature. The plaintiffs impressive turnover and the substantial sales figures of its Horlicks product also remain unquestioned at this stage.
3. The plaintiff does not complain of the television commercial that the first defendant has hit upon in connection with its competing product by the name of Pedia Sure. The plaintiffs grievance is limited to the last frame of the first defendant's commercial and, in particular, to the three superlatives used therein. These, the plaintiff alleges, are so closely resembling the three comparative adjectives in the second-last frame of the plaintiffs commercial that it would lead to confusion in the sense that a viewer would associate the first defendant's product with the plaintiff or form an impression that PediaSure came from the same stable as Horlicks.
4. This species of passing off, exhorts the plaintiff, is recognised in a judgment reported at 1981(1) All ER 213 (Cadbury Schweppes Pty. Ltd. and Ors. v. Pub Squash Co. Pty. Ltd.) and the plaintiff asserts that it founded the present action on the basis of the law as recognised in such judgment. In that case the Privy Council, while considering an appeal from a decree in an action for passing off and unfair trading delivered by the Supreme Court of New South Wales, accepted the position that if a party in promoting its product confused or deceived the market by conveying an element of association with a product of another it would amount to passing off. Such case also involved the adoption by the defendant in the action of an advertising campaign based on themes and slogans closely related to those which the plaintiff had developed and made familiar to the market in radio and television advertisements.
5. The Privy Council approved a century-old principle that misrepresenting one's goods as the goods of some one else was not a separate genus of actionable wrong but a particular species of a wrong included in a wider genus.
6. The law enunciated by the Privy Council recognised that the tort is no longer anchored to the name or trademark of a product or business, it is wide enough to encompass other descriptive material such as slogans or visual images or advertising campaigns. The test, it was found, was whether the product had derived from the advertising a distinctive character which the market recognised.
7. The plaintiff says that it called upon the first defendant to desist from continuing the telecast of the first defendant's commercial carrying the same exit theme in early April, 2008 and received a reply only in end-June, 2008. The plaintiff says that its commercials have been broadcast since June, 2005, that the plaintiff noticed in February, 2008 that the first defendant had launched a campaign with a deceptively similar exit frame, that the first defendant's campaign was put on hold for sometime lulling the plaintiff into believing that it had been abandoned and was only reintroduced after June, 2008. The plaintiff relies on the first defendant's assertion in its letter of June, 2008 to say that the first defendant had accepted that 'proprietary lights' could be acquired by a television commercial, albeit the first defendant charging in such letter it was the plaintiff which was infringing the first defendant's proprietary rights by the telecast of the Horlicks commercials.
8. The second last frame in the plaintiffs Horlicks commercial shows the product with the stylised and slanted writing in the middle, in three different colours, of the words 'Taller', 'Stronger' and 'Sharper'. In print campaigns, whether by way of bookmarks, posters, flyers or danglers, the Horlicks bottle with a similar tri-coloured depiction of the said three words appear prominently as the most striking feature thereof.
9. In short, the plaintiffs entire campaign may be called the 'taller, stronger, sharper' campaign. That is plain to see. What is of importance is as to whether the three words have, or even the theme conveyed by the three words has, come to be so exclusively associated with the plaintiff or the plaintiffs product and the recall value thereof is so overwhelming that it leads to confusion and deceit that are the twin planks in establishing passing off; and, whether the plaintiff can, in law, claim any exclusivity over the concept and the manner of depiction thereof.
10. The plaintiff refers to a judgment reported at 2003 7 AD (Delhi) 405, ICC Development (International) Ltd. v. Arvee Enterprises and Anr., to suggest that such nature of passing off is recognised in this country and the Cadbury Schweppes principle has been applied here.
11. The first defendant says that it used the catch-line 'sabse tallest, strongest, brightest' as a prominent feature of a commercial that it launched in the year 2001 and the modified storyboard of its present commercial contains the same catch-line. The first defendant asserts that in the promotion of a nutritional drink, it is only natural that the manufacturer would harp on the efficacy of the product in honing physical and mental attributes. The first defendant argues that no one manufacturer of a nutritional drink can claim a monopoly over an idea that is generic to the product and is directly connected to the alleged efficacy of the product.
12. A number of authorities have been brought by the first defendant. The judgment reported at 1989 RPC 27 (Klissers Farmhouse Bakeries Ltd. v. Harvest Bakeries Ltd.) is placed for the principle that the more descriptive the words used for a product the greater the burden on the party asserting exclusivity to establish such exclusivity. The case, however, was an action in passing off relating to the form of packaging in polythene bags used in connection with the sale of bread.
13. It was found that the check pattern of the packaging producing a ponytail effect was neither novel when the plaintiff had introduced it nor were all features of the defendant's packaging so resembling the plaintiffs that there was any likelihood of confusion. The plaintiff here is right in its assertion that such case cannot be cited for the matter in issue as oranges and apples cannot be bunched for comparison.
14. The first defendant refers to an another judgment reported at 1983 FSR 76 (Adidas Sportschuhfabriken Adi Dassler K.G. v. Charles O'neill & Co. Ltd.), a decision rendered at the trial of the action where the owners of brand Adidas complained of the defendant's imitation of the three-stripe configuration used by Adidas in connection with its products. The Judge observed that to his personal knowledge children had worn stockings with a variety of stripes round the tops and suggested that the plaintiffs attempt in the action was not so much to do with any confusion as about obtaining a symbol. The view expressed was that the objective would be better achieved by means of registration of trademarks or designs or patents, and not by an action for passing off.
15. The further judgment having any bearing on the matter in issue that the first defendant brings is one reported at 1989 BCJ No. 631 (Westfair Foods Ltd. v. Jim Pattison Industries Ltd.). The plaintiff in that action used the words 'permanent discount' in its advertising. The defendant used the same slogan in its displays. The plaintiff sought to restrain the defendant, claiming exclusive proprietary right to the words and charging the defendant with breach of a tort of misappropriation of quasi-property rights. The interlocutory order noticed the defendant's candid admission that it was aware of the 'permanent discount' slogan used by the plaintiff and adopted such slogan as none other more aptly conveyed the message about the defendant's price policy.
16. The first defendant has allowed the Court the benefit of viewing the three commercials in Court - its initial but apparently short-lived commercial of 2001, the plaintiffs commercial and the first defendant's present commercial with the impugned punch-line in its tail.
17. There is no doubt as to the maintainability of the action, in the sense that such a right as the plaintiff canvasses can be seen as an intangible property right in the advertised description of a product by a manufacturer. It is possible that by virtue of an advertising campaign a manufacturer gives his product a distinctive character which the market exclusively associates with the product or the manufacturer. The test is to inquire whether there is a likelihood of confusion resulting from the manner in. which the first defendant's product has been advertised, particularly at the closing stage Jhereof; and, whether the plaintiff is entitled to exclusive use of the idea.
18. Laudatory epithets may be used by a manufacturer but to claim exclusivity a higher element of distinctiveness has to be demonstrated. A shoemaker may use an epithet indicating comfort, another for its longevity and a third for its quality. Every shoe manufacturer would attempt to promote its product by harping on one or the other or all of the three features in its promotional campaign. The more descriptive the epithets, the closer the resemblance of the epithets to the efficacy of the product, the more remote will be the presumption as to the exclusivity of the combined effect of the epithets.
19. The manufacturer of a nutritional drink would seek to impress on the healthy values of the drink. The target users in case of these rival products are children. Every nutritional drink has to be allowed the freedom to puff and emphasise on the features of growth that will result in its user gaining height, weight and mental sharpness for these are but attributes of growth that a nutritional drink would seek to profess.
20. The nature of the right that is sought to be asserted would make it irrelevant as to whether a part or the entirety of the slogan is copied. That the three key words used by the first defendant in its exit line vary in form, or in one case in the use of the word, matters little if it is appreciated that it is the theme over which a manufacturer can claim exclusivity. It is, thus, irrelevant that the plaintiff and the first defendant use different grammatical variations of the words 'tall' and 'strong' and that 'sharp' and 'bright' are distinct, albeit bearing the same sense that is sought to be projected. The essence of a right that the plaintiff here canvasses is as much dependent on the resemblance of the words as on the identity of its thematic content.
21. As much as the intangible property right that a suitor asserts may require protection, unless a more comprehensive case of exclusivity is established at the interlocutory stage, the Court would be loath to hand the plaintiff a ticket to monopoly. If in puffing its product, the plaintiff and the first defendant hit upon features that are generic to the nature of the product, the earlier user or the bigger player or the large spender cannot claim exclusivity on the epithets. If it is the idea of taller, stronger and sharper that the plaintiff seeks to make as its very own, it may not have it. If it is a much lesser case of confusion arising out of the verisimilitude of the manner of depiction thereof of the same idea by another trader, the complaining trader may get the consolation of the defendant being required not to copy the form of expression of the idea. The exclusivity in such a case will not be in the words or the theme used by way of puff, but in how they are said or shown or depicted. The first defendant does not copy the stylised form in which the plaintiff presents its slogan in the commercial.
22. Both the plaintiff and the first defendant labour to demonstrate that their products have been designed and contain ingredients to enhance growth. The plaintiff has also brought an impressive report following a market survey that it had commissioned. But the tentative view taken in principle renders such facts irrelevant at this stage.
23. The plaintiff has failed to establish a prima facie case warranting the stopping of the first defendant's advertisement campaign. GA No. 2257 of 2008 fails. Costs cost in the cause.
24. Urgent certified photostat copies of this judgment, if applied for, be supplied to the parties upon compliance with all requisite formalities.