NEWS: [HUL vs. Emami] Bombay High Court Momentarily Restrains Emami from Utilizing the Sign “Glow & Handsome”

The Bombay High Court on Monday conferred a temporary injunction against Emami Limited, restricting the Kolkata based company from using the mark Glow & Handsome stating that the Plaintiff Hindustan Unilever was prima facie the preceding adopter & user of the stated trademark.

Justice SC Gupte was trial an interim application in a commercial suit lodged by HUL, who claims to be an owner & prior customer of the mark, Glow & Handsome for its well-known skin cream, thus far advertised under the trademark Fair & Lovely.

Senior Advocates Virag Tulzapurkar & Venkatesh Dhond seemed for HUL. They contended on behalf of the plaintiff company that the merchandise marketed under the trademark “Fair & Lovely” has developed a household brand & a market leader in its classification. Moreover, it was accepted that in staying with the modern vogue world over, to move away from the focus on the phrase “fair” as a component of a beauty product, the Plaintiff has intended to change its symbol from “Fair & Lovely” to “Glow & Handsome.”

On September 7, 2018, the Plaintiff used for registration of the latest trademark  Glow & Handsome. Then, HUL ensued to obtain permission from the Food & Drugs Administration for shifting its trademark “Fair & Lovely” to the original mark Glow & Handsome. That approval was given on August 2, 2020. By a press statement dated July 3, 2020, the Plaintiff declared its proposed use of the trademark “Glow & Handsome” for the merchandise hitherto sold in the trademark “Fair & Lovely.”

Nevertheless, the Plaintiff complains that on July 27, 2020, the defendant alleged to announce a method of launching commodities under the trademark Glow & Handsome. Thus, the Plaintiff went the present application requesting a temporary injunction against the defendant from utilizing the trademark Glow & Handsome.

The bench mentioned to HUL’s suit under Sec. 142 of the Trade Marks Act lodged against Emami & a single judge in an ex-parte directive on July 5 directed the Emami to give a minutest 7 days erstwhile notice to HUL in case any action was hurled by it towards breach or passing off in admiration of the Plaintiff’s usage of the trademark Glow & Handsome. Emami appealed against the ex-parte directive, which was rejected by a division bench on July 16.

After that, the defendant Emami lodged a suit versus HUL before Calcutta High Court for violation and passing off after providing a 7-day notice to the defendant HUL.

Senior Advocates Jishnu Sinha & Ranjan Bachawat appeared for the defendant Emami & presented that even if it is expected that the Plaintiff first accepted the mark Glow & Handsome & has even castoff it first concerning its properties, there is no case of adequate reputation & public connotation of the product vended by the Plaintiff in that mark with the Plaintiff.

Justice Gupte observed that so far as this Court is anxious, it is adequate to note at this initial prima facie phase that the Plaintiff is a prior adopter & operator of the mark Glow & Handsome; it has previously hurled its goods in the market thru that trademark; & so far as the defendant is troubled, it is certainly at the stage of assuming a procedure of launching its properties under the trademark Glow & Handsome.

Thus, momentarily restraining Emami from using the suspected mark Glow & Handsome, Court further stated that – In any act of passing off, just as the Court reflects exclusive benefits of rival traders, the Court is also fundamentally worried about the likelihood of dishonesty between the customers & public. The Plaintiff can assuredly be said to have adequately advertised its new brand Glow & Handsome which substitutes its earlier well-recognized mark Fair & Lovely & at this verge stage; it is sensible to see that there is a real likelihood of confusion & dishonesty in the public if undistinguishable marks are permissible to hold the field for general & much-sold merchandises.

The next date of trial is 5 weeks after.