Delhi High Court Restrains HUL From Comparing Its 'Ponds' Products With 'Nivea', Says In-Mall Marketing Campaigns Also Advertisements

The Delhi High Court has restrained Hindustan Unilever Limited from engaging in marketing or advertising activity of comparing its 'Ponds' products with 'Nivea' products, either expressly or by implication or association, through sale representatives in various malls in the national capital and Gurugram. 

Observing that the activity amount to disparagement or denigration of the latter's products or business, Justice Anish Dayal said:

“…this Court is of the opinion that the impugned activity undertaken by defendant choosing to compare plaintiff's 'NIVEA' products (either expressly or by implication or association) and defendant's products, especially those under the trademark 'Ponds', are prima facie misleading and disparaging, and cause irreversible prejudice to plaintiff.”

The court passed the order in an interim injunction application filed by Beiersdorf AG, the company manufacturing Nivea products, in its suit against HUL.

Beiersdorf AG claimed a highly distinctive trade dress for its 'NIVEA' brand of products written over a distinctive blue background, created and developed for its products 'NIVEA Crème' in 1925.

It was the plaintiff's case that around 2021, it became aware that HUL had been undertaking marketing activities wherein their sales representatives present in various malls in Delhi and Gurgaon were showing a comparison of a cream in a blue tub identical to NIVEA Crème blue tub (used without the sticker) and 'Ponds Superlight Gel'.

As per the plaintiff, sales representatives of HUL would apply cream from the “blue tub” on the skin of the walk-in customers on one hand and Ponds product on the other hand- would then use a magnifying glass in an attempt to assure the customers that blue tub product left an oily residue on their skin as compared to Ponds Super Light Gel.

Justice Dayal observed that prima facie, the colour blue was certainly associated for years with the plaintiff's product 'NIVEA', which has achieved distinctiveness and has become popular.

“Plaintiff claiming exclusivity in this colour is not the issue, however, the use by defendant in the impugned activity of a blue colour tub is too much of a coincidence to ignore. The allusion seems to be to the distinctive blue colour used by plaintiff,” the court said.

It further said that there was no reason why HUL could not have used a heavy cream in a different colour tub in order to compare.

On puffery and disparagement, the court observed that the law relating to advertisements in any form whether print, digital, TVC will extend to in-mall marketing campaigns as well.

The court reasoned that ultimately, in mall marketing campaigns it is a method of promotion and marketing of company's product to a consumer, in a much more personalised and interactive set up.

“At least in an advertisement in print digital, medium or TVC, the assessment is limited to what is seen or heard in the commercial. In an in-mall marketing campaign, the possibilities of imputation, aspersion, implication, overstatement, leading to even a slight disparagement, will be limitless,” the court said.

It thus ordered: “Defendant, their directors, wholesalers, distributors, partners, proprietors, agents or assignees are restrained from conducting the impugned activity or such similar marketing/advertising activity, comparing plaintiff's 'NIVEA' products (either expressly or by implication or association) and defendant's products (especially those under the trademark 'Ponds'), which amount to disparagement or denigration of plaintiff's products or business.”

Counsel for Plaintiff: Mr. M.S. Bharath, Mr. V.S. Krishna, Mr. Ayush Sharma and Mr. Ashish Sharma, Advocates

Counsel for Defendant: Mr. Chander M. Lall, Sr. Advocate along with Ms. Pragya Mishra, Mr. Shashwat Rakshit and Mr. Ankur Sangal, Advocates

Title: BEIERSDORF AG v. HINDUSTAN UNILEVER LIMITED

Citation: 2024 LiveLaw (Del) 588

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