On July 6th, the Bombay High Court granted interim relief to Hindustan Unilever Limited (HUL) in the case of HUL v. Emami Limited. It issued an injunction against threats by Emami for the use of the trademark ‘Glow & Handsome.’
The plaintiff enterprise HUL is India’s most significant fast-moving consumer goods (FMCG) Company. It owns everyday brands such as Kissan, Lux, Lifebuoy, Dove, Clinic Plus, Rin, Wheel, etc. One of its trademarked brands ‘Fair & Lovely’, was adopted in the year 1975 for use as a fairness face cream. The product became a household name and continues to be a market leader since its launch. In 2006, the plaintiff company launched ‘Men’s Fair & Lovely’ to target the population of men. HUL trademarked both product names.
The plaintiff stated that it adopted the new trademarks as early as September 7th, 2018. The changed trademarks were ‘Glow & Lovely’ and ‘Glow & Handsome’. They did so with an honest intention, after looking through the Register of Trade Marks. On not finding any similar trademark, they proceeded. To secure statutory rights, HUL also filed a multi-class application in 2018. The Registrar of Trade Marks, however, refused it in July 2019. The plaintiff then preferred an appeal against the decision. The appeal is still pending under the Intellectual Property Appellate Board. The plaintiff also filed another set of trademark applications in June 2020.
On July 2nd, 2020 HUL formally announced that its trademark ‘Fair & Lovely’ was rebranded as ‘Glow & Lovely’. The men’s range was now called ‘Glow & Handsome’. The plaintiff also received licensing by the FDA in the effect of the above. HUL after that, issued commercial advertisements about the rebranding of its products.
The plaintiff stated that Emami immediately issued threats of legal action. HUL produced the printouts of newspaper articles bearing such threats before the Court. The statements issued quoted Emami terming HUL’s rebranding as an ‘unfair business practice’. They stated that they had a similar product called ‘Emami Glow & Handsome’ and that it was digitally launched by them a week before HUL’s announcement.
After that, HUL conducted another search in the Register of Trademarks. It found out, for the first time, that Emami had filed for a similar trademark on June 25th, 2020. They emphasized that the defendant had not launched their product to date. Furnishing of extracts from the media accounts and website of Emami proved the same.
The plaintiff submitted that the statements published by the defendant company are groundless and unjustifiable within the meaning of Section 142 of the Trade Marks Act, 1999. It amounts to damages in case of unwarranted threats. HUL feared wrongful obtainment of ex-parte order by Emami and hence pleaded for an injunction on the threats issued by them. HUL further prayed for a 7-day prior written notice by Emami to be given before initiating any legal proceedings or claiming an interim relief. It was also submitted that such an ad-interim relief would not be prejudicial to the defendant.
The Court observed that prima facie, HUL is the prior adopter of the trademark ‘Glow & Handsome’. They had also started advertising the said trademark. The Court further observed that the defendant had first adopted the trademark in June 2020, but had not used it commercially yet.
The Court acknowledged that the statements issued by the defendants amount to a threat. The lawfulness of the defendant’s claim can be determined after hearing both sides. However, considering the facts of the case, the Court agreed to grant relief to ‘HUL for the time being. It ordered Emami to give written notice to HUL 7 days before initiating legal proceedings. Emami can apply for a variation of the said order after giving 48 hours prior notice to the plaintiff.
The matter is posted to be heard next on July 27th, 2020.
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