Delhi High Court restrains HUL from comparing Ponds with Nivea in ads

The Delhi High Court has restrained Hindustan Unilever Limited (HUL) from conducting advertising or marketting campaigns that compare its Ponds cream products with NIVEA products, on finding that one such campaign carried out by HUL in malls appeared to be misleading and disparaging

The Court was hearing an injunction plea filed by Beiersdorf AG (Nivea), the manufacturer of Nivea products, which filed a suit against HUL.

In an order dated May 9, Justice Anish Dayal granted Nivea interim relief and restrained HUL from drawing disparaging comparisons between Ponds and Nivea products in ad campaigns.

"Defendant (HUL), 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," the Court ordered.

The main suit will be heard next on July 24.

Beiersdorf AG, which owns Nivea, had told the Court that HUL's sales representatives had been drawing unfair comparisons between Ponds cream and Nivea products during a marketing campaign conducted for "Ponds Superlight Gel" in different malls in Delhi and Gurgaon.

Nivea said that HUL's sales team had been asking mall-goers to apply the Ponds product on one hand, and a cream from an un-labelled blue tub on the other hand.

Notably, the plaintiff claimed that the blue tub resembled Nivea containers, particularly since it was a "Pantone blue colour."

The Court was further told that HUL's sales team would then use a magnifying glass to convince the customers that the product from the blue tub left an oily residue on their skin when compared to the Ponds Super Light Gel.

Nivea argued that this was an impermissible, misleading and unfair comparison since:

a) The unmarked blue tub was a reference to Nivea products as the same shade of blue is usually associated with Nivea. Although Nivea does not hold any intellectual property right over the said colour in India, its rights over the said colour were recognised by the German Patent and Trademark Office;

b) The comparison made by HUL was between a "heavy cream" category of Nivea products with a lighter cream/ gel-based Ponds product. The comparison would have been more fair if a light or gel-based Nivea product was compared to the Ponds product in question.

The Court found prima facie merit in these submissions by Nivea.

"Prima facie, the colour blue, in particular ‘Pantone 280C’, is certainly associated for years with plaintiff’s product ‘NIVEA’, which has achieved distinctiveness for plaintiff’s product and has become popular ... , the use by defendant (HUL) 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.

The Court added that HUL could have chosen any other colour of tub to carry out its comparative marketing campaign if the intent was not to disparage or allude to Nivea products.

The dark blue tub used by HUL in its ad campaign is generally associated with NIVEA by consumers, the Court said.

The Court also agreed with Nivea's stance that HUL had acted unfairly in comparing a heavy cream Nivea product with a gel-based Ponds product.

"By choosing to use a distinctively blue color tub without a label, defendant (HUL) has ventured into the area of deception, misstatement and by implication, into the area of disparagement … Defendant chose to compare their lightest product (‘Ponds Superlight Gel’) to the heaviest product (‘NIVEA Crème’) of plaintiff, is inherently misleading," the Court said.

The Court further noted that the laws governing restraint in whether print or digital advertisements, or TV commercials, would also apply to marketing campaigns conducted in malls.

"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 added, while granting interim relief to Nivea.

Advocates MS Bharath, VS Krishna, Ayush Sharma and Ashish Sharma appeared for Beiersdorf AG, which owns Nivea.

Senior Advocate Chander M Lall, along with Advocates Pragya Mishra, Shashwat Rakshit and Ankur Sangal appeared for HUL, which owns Ponds.

[Read Order]