HUL vs Emami : Bombay HC Temporarily Restrains Emami From Using The Mark "Glow And Handsome" [Read Order]

The Bombay High Court on Monday granted a temporary injunction against Emami Ltd, restraining the Kolkata based conglomerate from using the mark "Glow and Handsome" noting that the plaintiff Hindustan Unilever was prima facie the prior adopter and user of the said trademark.

Justice SC Gupte was hearing an interim application in a commercial suit filed by HUL, who claims to be a proprietor and prior user of the mark "Glow & Handsome" for its well known skin cream, thus far marketed under the trademark "Fair & Lovely".

Senior Advocates Virag Tulzapurkar and Venkatesh Dhond appeared for HUL. They argued on behalf of the plaintiff company that the product marketed under the trademark "Fair & Lovely" has become a household brand and a market leader in its category. Moreover, it was submitted that in keeping with the recent trend world over, so as to move away from the focus on the word "fair" as part of a beauty product, the plaintiff has proposed to change its mark from "Fair & Lovely" to "Glow & Handsome".

On September 7, 2018, the plaintiff applied for registration of the new trademark "Glow & Handsome". Then, HUL proceeded to obtain permission from the Food and Drugs Administration for changing its trademark "Fair & Lovely" to the new mark "Glow & Handsome". That permission was granted on August 2, 2020. By a press release dated July 3, 2020, the plaintiff announced its proposed use of the trademark "Glow & Handsome" for the product hitherto marketed under the trademark "Fair & Lovely".

However, it is the plaintiff's grievance that on July 27, 2020, the defendant purported to announce a process of launching products under the trademark "Glow And Handsome". Thus, the plaintiff moved the present application seeking an interim injunction against the defendant from using the trademark "Glow And Handsome".

The bench referred to HUL's suit under Section 142 of the Trade Marks Act filed against Emami and a single judge in an ex-parte order on July 5 directed the Emami to give a minimum seven days prior notice to HUL in case any action was launched by it towards infringement or passing off in respect of the plaintiff's use of the trademark "Glow & Handsome". Emami filed an appeal against the ex-parte order which was dismissed by a division bench on July 16.

Thereafter, the defendant Emami filed a suit against HUL before Calcutta High Court for infringement and passing off after giving a seven day notice to the defendant HUL.

Senior Advocates Jishnu Sinha and Ranjan Bachawat appeared for the defendant Emami and submitted that even if it is assumed that the plaintiff first adopted the mark "Glow & Handsome" and has even used it first in relation to its goods, there is no case of sufficient reputation and public association of the product sold by the plaintiff under that mark with the plaintiff.

Justice Gupte observed-

"So far as this Court is concerned, it is sufficient to note at this early prima facie stage that the plaintiff is a prior adopter and user of the mark "Glow & Handsome"; it has already launched its goods in the market with that trademark; and so far as the defendant is concerned, it is admittedly at the stage of adopting "a process of launching" its goods under the trademark "Glow & Handsome"

Thus, temporarily restraining Emami from using the alleged mark 'Glow And Handsome', Court said-

"In any action of passing off, just as the court considers proprietary interests of rival traders, the court is also essentially concerned with the likelihood of deception amongst the customers and public. The Plaintiff can certainly be said to have sufficiently advertised its new brand "Glow & Handsome" which replaces its earlier well-known mark "Fair & Lovely" and at this threshold stage, it is reasonable to see that there is a concrete likelihood of confusion and deception in the public, if identical marks are allowed to hold the field for popular and much sold commodities."

The next date of hearing is five weeks later

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