The battle for the ownership of the trademark "Glow & Handsome" between two fast moving consumer goods (FMCG) giants continues. On
What began as a response to public criticism over its use of the word "fair" in relation to HUL's products, and the connotations it had in an era where racial and cultural differences and stereotypes are constantly being questioned, has snowballed into a trademark war between two companies. This case gives insights into rebranding processes, and offers valuable lessons for corporates intending to pursue similar paths. The matter has by no means ended, and the endgame is not in sight at the moment. While HUL has won this round, it remains to be seen whether it can sustain its case through till the end, when more substantive questions of law, such as prior user, and well-known marks, are discussed.
Brief History
HUL, on
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On
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16 July 2020 , Emami's appeal against the decision of the Single Judge was dismissed by the Court (sitting in a Division Bench of two Judges). Remaining aggrieved, Emami approached the Single Judge with a request to set aside theJuly 6 order. Emami said that a suit for groundless threats of legal proceedings could not be initiated by a party if the party making threats has filed an infringement suit against the first party under the Trade Marks Act, 1999. Meanwhile, Emami initiated a suit for infringement against HUL before theCalcutta High Court . Accordingly, Emami claimed that the Single Judge's order was contrary to the Act. - HUL, although agreeing with Emami's submissions, argued that the Single Judge's order requiring Emami to give seven days' prior notice, would apply only to proceedings initiated in a civil court and not all proceedings, and only in relation to the mark "Glow & Handsome". On HUL's request, the Court substituted its earlier order with a direction that Emami would give at least 5 (five) days' notice to HUL before initiating any other proceedings in a civil court in relation to the "Glow & Handsome" mark.
- HUL also proceeded to obtain permission from the
Food and Drugs Administration ('FDA') for changing its trademark "Fair & Lovely" to the new mark "Glow & Handsome". That permission appears to have been granted on2 August 2020 . - By a press release dated
3 July 2020 , HUL announced its proposed use of "Glow & Handsome" for products previously marketed as "Fair & Lovely". It produced extensive material along with its plaint, setting out the sales effected thus far under the new trademark, as also expenditure incurred for media coverage and promotion of the new trademark. - HUL's grievance was that on
27 July 2020 , Emami purported to announce what it describes as a process of launching products under the trademark "Glow & Handsome". - Emami claimed to be the prior adopter of the mark "Glow & Handsome". It also claimed to have applied for trademark registration of the mark "Glow & Handsome" on
25 June 2020 , which has been accepted and advertised in theTrademark Journal (which HUL said it would be opposing). Emami also claimed to have digitally launched the trademark "Glow & Handsome" on27 June 2020 . - Emami's counsel argued that, assuming HUL first adopted the mark "Glow & Handsome" and has even used it first in relation to its goods, there is no case of sufficient reputation and public association of the product sold by the HUL. Emami's counsel also submitted that while HUL could certainly said to have sufficiently advertised its new brand "Glow & Handsome" which replaces its earlier well-known mark "Fair & Lovely" and at this threshold stage, it wasreasonable that there was a concrete likelihood of confusion and deception in the public, if identical marks were allowed to hold the field for popular commodities.
Interim Application filed by HUL against Emami at the
Thereafter, HUL sought an interim injunction against Emami from using the trademark "Glow & Handsome", on grounds that Emami's action was essentially an action in passing off, since HUL does not yet hold registration of the trademark "Glow & Handsome".
HUL's Claims and Contentions
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HUL said that its plan to change its mark from "Fair & Lovely" to "Glow & Handsome" was in keeping with recent trends and sought to move away from the focus on the word "fair" as part of a beauty product. Accordingly, in
Emami's Claims & Contentions
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Emami contented that it has been marketing its skin care product under the trademark "Fair & Handsome" and that HUL is not entitled to use the trademark "Glow & Handsome" for a similar product, since such use would infringe Emami's registered trademark "Fair & Handsome" and also amount to passing off.
The Court's observations
The Court held that HUL prima facie appears to be a prior adopter and user of the mark "Glow & Handsome". The Court also said that the question of whether the use of the mark by HUL amounts to an infringement of Emami's registered trademark "Fair & Handsome" was not the subject matter to be decided in the present application.
The Court noted that Emami's application for registration of the mark "Glow & Handsome" was subsequent to that of HUL's. HUL had submitted its sales figures as well as advertisement and promotional expenses incurred by it for the trademark. Based on these facts, the Court was inclined to grant an ad-interim injunction to HUL.
The Court closed its order by stating that this order would not come in the way of Emami seeking a restraining order against HUL's use of the trademark "Glow & Handsome" in its own suit in
Order dated
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