The Bombay High Court on Monday, in an ex-parte order, granted relief to Hindustan Unilever Limited and restrained Emami from initiating any legal proceedings against HUL for use of the trademark 'Glow & Handsome' without giving a seven day prior written notice to the plaintiff.
Justice BP Colabawalla heard the commercial suit filed by HUL via video conferencing after the matter was mentioned by plaintiff's counsel Advocate Hiren Kamod pressing for urgency. The Court prima facie noted that the statements made on behalf of the defendant Emami in newspapers amount to a threat against HUL and no prejudice would be caused to Emami if limited relief is granted.
HUL filed the suit under Section 142 of the Trade Marks Act, 1999 seeking injunction to restrain Emami from issuing "groundless threats" to the plaintiff in respect of the use of its trademark 'Glow & Handsome'.
Advocate Hiren Kamod submitted that on September 7, 2018, after conducting a search in the Register of Trademarks, the plaintiff independently and honestly coined and adopted the trade marks 'Glow & Lovely' and 'Glow & Handsome' in respect of its skin care products. In order to secure statutory rights in the two marks, HUL filed multiclass applications on September 7, 2018 on proposed to be used basis.
Initially, the Registrar of Trademarks raised an objection under Section 9(1)(a) of the Trade Marks Act, 1999 in his preliminary examination report dated October 10, 2018 in respect of the plaintiff's mark 'Glow & Handsome'. Moreover, in an order dated July 26, 2019, the Registrar of Trademarks refused registration of the HUL's mark 'Glow & Handsome'. An appeal was filed against the said decision of the Registrar of Trademarks before the Intellectual Property Appellate Board, which is pending.
In June 2020, HUL filed another set of trade mark applications seeking registrations of the trade mark labels and respectively on proposed to be used basis. Thereafter, on July 2, 2020, HUL made an official announcement that its trademark/brand 'Fair & Lovely' is rebranded as 'Glow & Lovely' for its skin care range of products and the plaintiff's skin care range of FAIR & LOVELY products for men will be called as 'Glow & Handsome'.
HUL's counsel told the Court that the plaintiff was granted its FDA License to manufacture its skin care products under the mark 'Glow & Handsome' on July 3, 2020. Thereafter, HUL immediately issued commercial advertisements in respect of its products bearing the trademark 'Glow & Handsome' not only on social media but also in the newspapers, including the first page of the Economic Times and Business Line News Paper on July 4, 2020.
Furthermore, immediately after the plaintiff made the announcement on July 2, the defendant gave statements in various newspapers threatening to adopt legal action against HUL for violating their alleged rights in its mark 'Emami Glow & Handsome'.
Statements issued by the defendant and published in various online and print media are unjustifiable and groundless within the meaning of Section 142 of the Trade Marks Act, 1999. The defendant's claim of proprietorship over the marks 'Glow & Handsome'/ 'Emami Glow & Handsome' is false and misconceived. The plaintiff is the prior adopter and user of the trade mark 'Glow & Handsome', Adv Kamod argued.
After conclusion of Kamod's submissions, Court observed-
"Prima facie it does appear that having filed its trade mark application in September 2018 and subsequently on 25th June 2020 for the mark 'Glow & Handsome', plaintiff is the prior adopter of the said mark. Further, from a perusal of the newspaper cutting, it prima facie appears that the Plaintiff has already started commercial advertisements in respect of the trade mark 'Glow & Handsome'. It prima facie appears that the Defendant has adopted the 'Glow & Handsome' mark for the first time on 25th June 2020 and has not commercially used it till date. The statements made by the Defendant and published in various newspapers annexed to the Plaint do amount to a threat, however, whether they are unlawful or groundless, that is something that will have to be decided after hearing both the sides.
Today, the Plaintiff is pressing for a limited relief that the Defendant should give at least 7 clear days prior written notice to the Plaintiff before initiating any legal proceedings in any court or claiming any interim or ad-interim reliefs against the Plaintiff as threatened in the statements issued / made on behalf of the defendant against the plaintiff's use of the trademark 'Glow & Handsome'. Considering the facts and circumstances of the present case, I believe that no harm or prejudice would be caused to the Defendant if the said limited relief is granted."
Next date of hearing in the matter is July 27.
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