Calcutta High Court Restrains HUL From Using 'Glow & Handsome' Trademark In Infringement Suit By Emami

The Calcutta High Court has restrained consumer goods giant Hindustan Unilever Ltd (HUL) from using the 'Glow & Handsome' trademark to sell its men's care products following a suit by Emami Ltd. whose brand "Fair & Handsome" allegedly held the major market share.In 2020, HUL changed the name of its men's skin cream from “MEN'S FAIR & LOVELY” to “GLOW & HANDSOME.” Emami immediately challenged HUL's use of the mark “GLOW & HANDSOME” before the Calcutta High Court, on the basis that this constitutes infringement and passing off of Emami's well-known and reputed mark “FAIR AND HANDSOME.”In finally deciding the case, a single bench of Justice Ravi Kishan Kapur held:A conscious and deliberate decision by a competitor in adopting a leading, prominent and essential component of a trade rival while seeking to change the name of its existing brand is not something which can be disregarded. 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.Brief factsEmami argued that it had registered 'Fair and Handsome' as a trademark across the world and that the variations of the same were registered by it as well, which would make the word 'Handsome' a prominent and essential feature of its well-known mark which has been used since 2005.It was argued that Emami's use of the mark had long preceded HUL's 'Glow and Handsome' and both products were rival goods operating in the same class, with Emami's product holding a market share of 65%.Emami claimed that HUL's use of their mark was deceptively similar to Emami's mark which had acquired a secondary meaning and distinctiveness.It was stated that HUL's mark was misleading and likely to cause deception and misrepresentation to the consumer.Respondents argued that the mark 'handsome' was descriptive and could not be called distinctive. It was stated that the word was a generic term being used by competitors in the industry and was not exclusively identified with the petitioner, who had not used it in a standalone manner.Court's VerdictIt was noted that Emami had been using its trademark since 2005, and HUL had launched its mark in 2020. Court observed that Emami had spent large sums of money in marketing its product around the word 'Handsome' and that HUL was unable to give any prior use of 'Handsome' in its mark though registration had been granted.In examining whether the term "Handsome" had acquired a secondary meaning or distinctiveness, the Court stated:Prima facie, the petitioner has always used “Handsome” in a generic sense or a descriptor. It is well settled that if the proponent of an alleged trade mark itself uses the term in a generic sense or as a descriptor, this in itself is not only strong evidence of genericness, but also prevents the proponent of the alleged trade mark from claiming any monopoly based on secondary meaning. Court further held that HUL sought to use the mark "Glow and Handome" knowing full well that it had adopted an essential feature of its competitor's trademark and that although HUL had rebranded its product "Fair and Lovely" as Glow and Handsome, it was obligated to ensure that its new name did not deceive the consumer or lead to infringement.Of all the available names, the respondent 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, it was stated.Court stated that although the claim for infringement had failed in the present case, an action of passing off could still succeed if the respondent's goods were likely to deceive the public to think that they were goods of the plaintiff. It held that the respondent had changed the name of their earlier product and deliberately chosen a prominent feature of its competitor's product and that though the packaging may be different, an unwary purchaser would likely be deceived by the misleading word "Handsome", leading to damage to Emami's goodwill and reputation. Accordingly, the Court held that HUL would be restrained from using its mark and allowed them a month for compliance with the same.Emami was represented by a team led by Sr. Adv. Ranjan Bachawat, and Mr. Shwetank Ginodia, Partner at R. Ginodia & Co. LLP. Mr. Ginodia said “We are glad that the Hon'ble Court has allowed Emami's application...

Calcutta High Court Restrains HUL From Using 'Glow & Handsome' Trademark In Infringement Suit By Emami

Srinjoy Das