The Calcutta High Court has issued an interim order that prevents Hindustan Unilever (HUL) from using the ‘Glow and Handsome’ mark, as it includes key elements of Emami‘s ‘Fair and Handsome’ trademark.
According to reports, following a petition from Emami regarding trademark infringement, the court has instructed FMCG giant HUL to remove ‘Glow & Handsome’ products from the shelves within one month.
As per the reports, Justice Ravi Krishan Kapur noted in the order, “The HUL has an existing brand and in changing its name has intentionally opted to choose a leading, prominent and essential feature of its competitor’s product. It is true that the packaging of both the products are different. However, an unwary purchaser of average intelligence and imperfect recollection who only remembers the one word ‘Handsome’ is likely to be deceived by the misleading indicia ‘Handsome’ and this has now been intentionally made a cause for confusion and deception.”
The Court noted that it was a reasonably foreseeable consequence that Emami’s business and goodwill would suffer damage due to the misrepresentation.
Justice Kapoor said, “In choosing the word ‘Glow and Handsome’ there is also an element of taking unfair advantage of a leading, prominent and essential feature of the petitioner’s mark which deceives or is likely to deceive. Nobody has any right to represent the goods of somebody else. In doing so, the rival takes a ‘free ride.’ There is no line between permissible free riding and impermissible free riding. All ‘free riding’ is unfair.”
The judge concluded that Emami presented a strong prima facie case for passing off and determined that the ‘balance of convenience’ overwhelmingly favours Emami.
The Court was addressing a trademark infringement plea by Emami, which sought an injunction to prevent HUL from using the mark ‘Glow and Handsome’ on the basis that its similar to Emami’s own ‘Fair and Handsome’ product.
On the other hand, HUL argued that the mark ‘Handsome’ is merely descriptive and lacks distinctiveness, labeling it as a generic term that is also utilised by other competitors in the industry. The company said that the mark in question cannot be exclusively associated with Emami, as the company has never utilised the mark as a standalone mark.
The court, after hearing the parties, said, “In brief, the mark ‘Fair and Handsome’ is the creation of Emami. It is the result of considerable investment made by the company. It has been devised, brought up and maintained by promotion and is to be valued by itself. The HUL has been unable to give any proof of actual use of the mark ‘Handsome’ by any other entity in relation to men’s fairness creams.”
The Bench stated that HUL deliberately adopted the mark ‘Glow and Handsome’, fully aware that it closely resembled an essential feature of a competitor’s trademark. It was also noted that HUL’s initial application to register the mark was dismissed, and approval was only granted after a waiting period of 11 months.
The court highlighted that HUL had a responsibility to ensure that the new name of its product didn’t deceive or infringe upon others’ rights.
“Of all the available names, HUL intentionally chooses as part of its name which is also a prominent, essential and leading feature of its competitor’s mark. The chronology of events commencing from the date of the public announcement, the application for registration of the impugned mark, the belated filing of an appeal against the order of the Registrar, the suit filed before the High Court at Bombay, all combine and prima facie points towards unfairness and a desperation to use the word ‘Handsome’ even as part of the impugned mark,” the judge stated.
Thus, the court granted interim relief to Emami.
