Image from here
[This post is authored by SpicyIP intern Srujan Sangai. Srujan is a second-year BA LLB student at the National Law School of India University, Bengaluru. He is interested in intellectual property law and technology law.]
Dhruv Rathee, a popular Youtuber found himself in a court battle against Dabur India (Dabur India Limited v. Dhruv Rathee) for criticizing its “Real” packaged fruit juice in his (now removed) video ‘Is Fruit Juice Healthy? | The Harsh Truth’. Dabur, who is no stranger to product disparagement litigations, (see here, here and here) approached the Calcutta High Court, alleging disparagement. Consequently, the court on March 15, 2023 directed Rathee to remove some allegedly disparaging parts of the video. The rationale for this order was that the video contravenes section 29(9) of the Trademarks Act and is targeted towards ‘Real’. However, in a subsequent order dated March 24, 2023 the Calcutta HC has ordered Youtube to take down the video entirely. In this article, I will firstly, provide the background and explain the court’s order. Secondly, I will argue that the court’s reasoning fails to satisfy the tests provided for Section 29(9) and ignores Section 30 in entirety. Thirdly, I will look at the issues of disparagement, the grant of injunction and the cover the possibility of trademark bullying in the present case. Lastly, I will look at the case through the lens of free speech and the possible implications it may have.
Dabur alleged that by comparing carbonated drinks with “ready to serve” (RTS) fruit beverages, Rathee has made unfair comparisons between the two products and has thus caused a generic disparagement of all packaged drinking fruit juices. Dabur further contended that the video specifically targets its ‘Real’ fruit juices by using partially blurred ‘Real’ logo and promotional advertising clips.
The Court at the outset recognizes that dissemination of information through any medium is a reality today, however, such dissemination should be legal. Article 19(1)(a) guarantees the freedom of speech and expression but is limited through Article 19(2). In the concerned video, an advertisement has been shown which was aired by ‘Real’ and its product has been blurred in the video. Thus, the court reached the conclusion that any consumer would infer that the product shown in the video belongs to the petitioner.
The Court also relied on section 29(9) of the Trademarks Act, which talks about infringement of a mark by its spoken use or visual representation, to conclude that the unsanctioned use of packaging, label and logo of the product Real in the video violated the trademark and copyright protection.
The interpretation of the said section was done by the Delhi HC in the case of Hamdard National Foundation v. Hussain Dalal wherein it has said that ““spoken words should be misstatement or causing confusion and deception which is the gist of the passing off action or in the alternative, the said spoken words should cause infringement by way of diluting the distinctive character and repute of the trade mark which may either intention or unintentional. Therefore, while intent to defame or malign the reputation of the mark is a no consideration here, what needs to be seen is that the alleged actions are misstatement, causing confusion and deception.
In the present case, Rathee has expressed his opinion backed by facts, referencing to the table of “Real” fruit juice’s ingredients and deducting the product’s implication on health. Though this case was passed by another court and thus holds a mere persuasive value, Calcutta High Court’s order clearly lacked due process and the elements of fairness and justice. Firstly, the court did not carry out an inquiry as to whether the statements and claims made in the video are correct or incorrect and failed to distinguish facts from opinions. This enquiry is relevant since if the video contains opinions, then those cannot form the basis of either defamation or disparagement claims as has been highlighted by Prashant here. Secondly, the court as per the requirements of the section failed to specifically identify the distinctive character that was identifiable in the video which is mandated by the section. Thirdly, even if trademark can be violated through speech, the court has failed to identify specific portions from the video in which Rathee has allegedly violated the trademark.
Another important aspect of the case that the court missed is to see the applicability of section 30(1) of the Trademark Act to the present case. The section states that honest use of the mark without taking unfair advantage or denigrating the use of the mark will not be an infringement.
In the present case, the court has refrained from invoking this section. While it can be argued that a co-joint reading of section 29(9) and 30(1) may make a prima facie case against Rathee for disparagement. However, it is also pertinent to note that the impugned video does not utter the words “Dabur” “Real” and in fact, by Dabur’s own admission, shows its mark in a blurred manner. Furthermore, freedom of speech is a fundamental right and creative freedom being an integral part of the right, the courts must harmoniously balance the right of the petitioners to protect their trademark and the right of the respondent to express his views. Thus, a greater leeway should be provided in generic disparagement cases to creative freedom even though a prima facie case could be made. I talk elucidate upon this proposition in the next section.
Disparagement or Not?
Disparagement and in this case, product disparagement is closely related to denigrating a product with a misleading remark. However, it is important to note that the jurisprudence around disparagement in India has largely revolved around issues concerning advertisements. Thus, in this case, legal development related to disparagement would have persuasive value, however, even still a strong case is made in favour of Rathee. In the case of Hindustan Unilever Limited v. Gujarat Co-operative Milk Marketing Federation, the Bombay HC stated that the disparagement would be constituted if the following elements are met:
The information provided is false
The said act is done with malicious intent
The decimation of such information leads to special damage to the plaintiff.
Even if assuming the first requirement is met, inferring malicious intent would be a very far-fetched argument to make. Furthermore, recently in Zydus Wellness Products Ltd. V. Dabur India Ltd., Dabur (ironically) had argued for creative freedom in comparative advertisements and the court had held that a generic comparison or reference would not constitute disparagement. The threshold for the video in consideration should be even lower since people do not choose to watch advertisements and is not a voluntary exercise. However, in case of YouTube, people make a conscious choice of watching the video after reading what the video is about.
Furthermore, it seems that the court may have conflated Section 29(9) with disparagement. As stated above, the section is applicable regardless of the intention of the respondent; however, in disparagement cases, intention is an essential element in determining liability. The court must clarify its position on whether ‘intention’ of the respondent is a material fact or not in determining liability in such cases.
In a Hurry to Grant Interim Injunctions?
It is a well-settled principle that there are three essential elements that courts have to look at to grant interim injuction in intellectual property matters:
Establishment of Prima Facie case
Balance of Convenience in whose favour
Irreparable Injury caused to the plaintiff
In the immediate matter, while the court has touched upon these requirements, it fails to provide reasons as to why the Balance of Convenience lies in favour of the petitioners and how does the video cause irreparable damage to the plaintiffs. To grant an interim injunction, all the three requirements have to be met and established beyond reasonable doubt which does not seem to be the case here. The video did not make any direct reference to the product itself and the advertisement that was shown had been blurred. Even if the court granted an interim injunction, the order should have been limited to removal of that advertisement alone.
It is interesting to note that since the video was posted online, Dabur could have approached any HC but chose to approach Calcutta HC because the jurisprudence around trademark is different than Bombay HC or Delhi HC. Such corporations have offices in every major part of the country and are prepared to sue in any such part. However, it becomes much more cumbersome for the comparatively smaller businesses to engage in such litigations because of location as well.
Another interesting point to note here is that Dabur chose to pursue a trademark disparagement case instead of a defamation case. It is well known that in defamation cases, truth is an exception from liability. Thus, the inquiry would have been whether Dhruv Rathee was speaking the truth or not. However, presently, the inquiry is completely different and concerns interpretation of the Trademark Act. In some of the other cases, corporations have pursued a defamation case as well. (Prashant has covered the Bearded Chokra case here)
Freedom of Speech
As has been argued in one of the previous posts, Article 19(1)(a) encompasses the right to information, which is relevant to the protection of consumers’ right to knowledge and access to information. In addition, the right to freedom of speech and expression incorporates the right to education and information. Therefore, one could contend that such videos provide consumers with the right to learn, be informed, and receive necessary information. Furthermore, I am concerned about the potential impact or the chilling effect that the recent order will have on the creative freedom of up-and-coming influencers who produce informative videos. The recent judgement has ordered YouTube and Meta to remove the video in question from their respective platforms. This order is clearly a disproportionate measure since the first order passed by the court required only the contested portions to be removed from the video. The order’s implementation may restrict their ability to share information and express their opinions on various topics, which could stifle their growth and development as content creators thereby challenging their right to livelihood as enshrined under Article 21.
Additionally, this order’s limitations may result in a lack of diversity in the content available to viewers. If young influencers are unable to share their unique perspectives, the content landscape may become homogenized, reducing the opportunities for new and innovative ideas to emerge. Thus, it is essential to ensure that such orders do not stifle creativity and the free expression of ideas, particularly among young and upcoming influencers who are just beginning to find their voices in the digital space.
The judgement and subsequent orders passed by the court are problematic in nature as has been pointed out in the post. This judgement is also a missed opportunity to see whether generic disparagement or Section 29 is applicable in cases of non-advertisement videos, since most of the jurisprudence developed around disparagement has been in the context of advertisements. The position of law is also not clear as to when and in what situations is Section 29(9) applicable. Finally, the court must take cognizance of freedom of speech and expression and must provide leeway to content creators and others in such cases.