Hindustan Unilever Limited on June 25th 2020 announced a rebranding exercise that constituted dropping the word “Fair” from their popular “Fair & Lovely” product, and renaming it to “Glow & Lovely”. Hindustan Unilever Limited also announced that their products for men’s range will be known as ‘Glow & Handsome’. What followed was a possible threat action from Emami Limited stating that they were the previous user of the name “Glow & Handsome”, which led Hindustan Unilever Limited in filing a suit under Section 142 of the Trademarks Act in the Bombay HC for Trademark Dispute.
Decision by Single Judge Bench
The Bombay HC dismissed the appeal filed by Emami Limited challenging the ex-parte order that was conceded by a Single Judge Bench on July 6th, 2020. The order had provided interim relief to Hindustan Unilever Limited in the continuing trademark dispute between the two companies.
Both Emami and Hindustan Unilever Limited claim to have a trademark over the mark “Glow and Handsome”. The Trademark dispute started when Hindustan Unilever Limited recognized their cosmetic products “Fair and Lovely” and “Fair and Handsome” as “Glow and Lovely” and “Glow and Handsome” correspondingly.
Fair & Lovely to Glow & Lovely
Hindustan Unilever in recent times announced that it is going to drop all words extended prejudice such as “light”, “fair”, and “white” from its promotion as well as a branding campaign. However the effectiveness of change in the name of cosmetic[1] products remains disputed. Unilever reportedly earns approx INR 3250 crores annually from the sale of Fair & Lovely solely in India.
As brands progressively realize their social importance, Unilever initiated a massive campaign against discrimination originated from skin colors and decided to rename its product line Fair & Lovely to Glow & Lovely.
What are the Facts of the Incident?
The trademark dispute began when Hindustan Unilever Limited made a formal announcement that the trademark brand “Fair and Handsome” for men is renamed as “Glow and Handsome”. Hindustan Unilever Limited started marketable advertising of the product under the said name from 4th July in various newspapers as well as digital platforms.
In response to the advertisements, Emami Limited gave statement in the newspapers supposedly threatening to take legal actions against Hindustan Unilever Limited for violating its trademark rights. Hindustan Unilever Limited then filed a case against Emami Limited under Section 142 of the Trademark Act, 1999 against the statement published by the other company. The legal counsel on behalf of Hindustan Unilever Limited filed application for the trademark “Glow and Handsome” and “Glow and Lovely” on September 7th, 2018.
According to the advisors, the trademark application filed after duly searching the Trademark Register and in the month of June in the year 2020, HUL again filed for the trademark registration on its products. The committee submitted the proof for FDA License attained to manufacture the products under the mark ‘Glow & Handsome’ in the Court on 3rd July. The License was issued to advertise the products and to make an official announcement.
Observation by the Court
The Court observed that since the plaintiff (Hindustan Unilever Limited) has duly filed for the trademark application in the month of September, 2018 and then July, 2020 but the plaintiff adapted the mark before filing of the application for Trademark.
Question arises that whether the statements made by Emami Limited had some grounds to be decided after hearing both the parties. Emami Limited had filed for an Appeal against the order of the Bombay HC that granted interim relief to HUL. The Appeal was then heard by a division bench of the Bombay HC comprising Justice VG Bisht and RD Dhanuka.
The bench then dismissed the appeal after inspection of the impugned order stating that since the Single Bench intended to list the interim application for further relief seeked on 27th July thus it is not inclined to interfere with the previous order passed.
Read our article:A Deep Analysis on Benefits of Trademark Registration
What are the Legal Provisions Involved?
Section 142 of the Trademarks Act, 1999 averts a person from issuing any groundless threats to a registered trademark user and if someone does so then the registered trademark user can acquire an order for injunction against the continuation of such threats and can also recover any damages that might be caused due to such threats.
Hindustan Unilever Limited can get relief if it proves that the threats issued by Emami Limited did not have any worth and are groundless. The Court in its interim order observed that Emami Limited should provide a prior notice of 7 days to Hindustan Unilever Limited before initiating any legal action against. From the discussion above, it is clear that to bring a successful claim Hindustan Unilever Limited needs to prove two points-
While Emami should prove that it sincerely and formerly adapted the trademark “Glow & Handsome” and Hindustan Unilever Limited’s use of it comprises infringement of Trademark.
Critical Analysis
Hindustan Unilever Limited applied for several trademark application with “Glow and Handsome” while only few of them got approved, “Glow and Lovely” and “Glow and Handsome” were not granted trademark registration. It was declared by the Trademark Registry that they were deficient in planning the designated purpose and were non-distinctive.
The matter is pending before the Intellectual Property Appellate Board (IPAB). On the other hand, filing of new applications by Hindustan Unilever Limited before the launch of rebranding campaign gives it a better claim over the claims by Emami Limited since it did not file for registration of trademark even after 7 days of introducing it in the digital market.
Registration is one of the primary claim in ownership of any trademark however the Indian Trademark Act, 1999 gives precedence to ‘adoption and use’ over ‘registration’ while determining the owner of any trademark. Section 34 of the Trademark Act provides that any registered owner of a trademark can’t obstruct with the rights of a prior user of an identical or similar mark. For this reason, it will be appealing to see in whose favor the Court decides the Trademark dispute.
Hindustan Unilever Limited’s Announcements & Permissions
Hindustan Unilever Limited said that its plan to change its mark from “Fair & Lovely” to “Glow & Handsome” was done keeping it up with recent trends and to move away the focus on the word “fair” as part of a beauty product. Consequently in September 2018 Hindustan Unilever Limited applied for registration of the new trademark “Glow & Handsome” in place of “Fair & Handsome”.
Hindustan Unilever Limited proceeded to attain permission from the Food and Drugs Administration for changing its trademark “Fair & Lovely” to the new mark “Glow & Lovely” for which the permission was granted on 2nd August 2020.
By a press release on 3rd July 2020, Hindustan Unilever Limited announced its planned use of “Glow & Handsome” for products formerly marketed as “Fair & Lovely”.
Emami’s Claims & Contentions
Emami Limited contented that it has been marketing its men’s skin care product under the trademark “Fair & Handsome”. According to Emami, Hindustan Unilever Limited is not permitted to use the trademark “Glow & Handsome” for a similar product that would infringe Emami Limited’s registered trademark “Fair & Handsome. The above mentioned contention will amount to passing off.
Claims by the Emami Limited
The Claims by the Emami Limited are-
Emami limited’s legal advisors argued that even after assuming that Hindustan Unilever Limited adopted the mark “Glow & Handsome” first and also used it first in relation to its products, there is no case of adequate reputation and public association of the goods sold by the Hindustan Unilever Limited.
Emami Limited’s legal advisors submitted that while Hindustan Unilever Limited could undoubtedly said to have amply advertised its new brand “Glow & Handsome” that replaces its previous well-known mark “Fair & Lovely” and at this stage, it was reasonable that there was a solid probability of uncertainty and confusion in the public if identical marks are permitted to hold the place for popular merchandises.
Conclusion
Trademark Dispute arising in Intellectual property rights are rising day by day. It is important to avert businesses from adapting unfair trade practices in order to maintain a playing field for everyone.
A well consideration approach towards trademark applications filing before launching a commodity can save businesses or corporations from getting into any legal troubles like the one in the case of Hindustan Uniliver Limited and Emami Limited. The final result of the case is yet to be decided and the issue shall be resolved by the Bombay High Court in the next hearing.
Read our article:Trademark Infringement: Meaning, Types and Remedies
