The Bombay High Court on Thursday dismissed an appeal filed by Emami Limited against an ex-parte order passed in favour of Hindustan Unilever Limited restraining Emami from initiating any legal proceedings against HUL for use of the trademark 'Glow & Handsome' without giving a seven day prior written notice.
A division bench of Justice RD Dhanuka and Justice VG Bisht heard via video conferencing an interim application in the appeal filed by Emami. The Court noted that in the impugned order, the single Judge (Justice BP Colabawalla) granted liberty to the defendants to apply for variation of the said order with 48 hours prior notice to the plaintiff's advocate and on the said ground refused to interfere with the said order.
Apart from challenging the single bench order on Thursday, applicant company Emami also filed proceedings before the Calcutta High Court seeking to restrain HUL from using the trademark 'Glow and Handsome'.
Firstly, HUL filed the suit under Section 142 of the Trade Marks Act, 1999 before the Bombay High Court seeking injunction to restrain Emami from issuing "groundless threats" in respect of the use of its trademark 'Glow & Handsome'.
Advocate Hiren Kamod submitted on behalf of HUL 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'.
In the impugned order, Court prima facie observed that having filed its trademark application in September 2018 and subsequently on June 25, 2020 for the mark 'Glow & Handsome', the plaintiff is the prior adapter of the mark.
Moreover, the Court said-
"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."
The next date of hearing in the matter before the single bench is on July 27.
Finally, after examining the impugned order, the bench noted-
"In paragraph (17) of the interim order, the learned Single Judge has granted liberty to the defendants to apply for variation of the said order with 48 hours prior notice to the plaintiff's advocate. The learned Single Judge also directed to place the interim application for further reliefs on 27th July, 2020.
We are thus not inclined to interfere with the order passed by the learned Single Judge on this ground. Appeal is accordingly dismissed. No order as to costs."
Case Number: Ad-hoc Appeal No. 159 of 2020 Along With Interim Application No. 1 of 2020 Case name: Emami Limited Vs. Hindustan Unilever LimitedCoram: RD Dhanuka & VG Bisht JJCounsel: Sr Adv Janak Dwarkadas With Adv Farid Karachiwala, Adv Sneh Parikh i/b J Sagar Associates For the Applicant Emami and Sr Adv Virag Tulzapurkar With Adv Hiren Kamod, Adv Vaibhav Keni i/b Legasis Partners For The Respondent HUL
Case Number: Ad-hoc Appeal No. 159 of 2020 Along With Interim Application No. 1 of 2020
Case name: Emami Limited Vs. Hindustan Unilever Limited
Coram: RD Dhanuka & VG Bisht JJ
Counsel: Sr Adv Janak Dwarkadas With Adv Farid Karachiwala, Adv Sneh Parikh i/b J Sagar Associates For the Applicant Emami and Sr Adv Virag Tulzapurkar With Adv Hiren Kamod, Adv Vaibhav Keni i/b Legasis Partners For The Respondent HUL
Click Here To Download Order