All is Fair in Trademark Wars: the Glow & Handsome saga continues

The battle for the ownership of the trademark “Glow & Handsome” between two fast moving consumer goods (FMCG) giants continues. On 17 August 2020, Hindustan Unilever Limited (HUL) obtained an order from the Bombay High Court to temporarily restrain Emami Ltd. from using the mark “Glow & Handsome”. The Court ordered that at this early prima faciestage, it appears that HUL is the prior adopter and user of the mark as it has already launched its goods in the market, while Emami is admittedly, still at the stage of adopting “a process of launching” its goods under the trademark.

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 25 June 2020 announced a rebranding exercise which included dropping the word “fair” from their popular “fair & lovely” products, and instead, renaming it “glow & lovely”. HUL also  announced that their men’s range of the products would be called ‘Glow & Handsome’. What followed was a potential threat action from Emami Limited claiming that they were the prior user of the mark “Glow & Handsome”, which led to HUL filing a suit under Section 142 of the Trade Marks Act in the Bombay High Court. In a short span of time, this case has already seen suits and applications being filed from either side, thus indicating the high stakes that are at play here. A brief summary of the proceedings follows:

  • On 6 July 2020, a Single Judge of the Bombay High Court granted an ad-interim to HUL directing Emami to give a minimum of seven days’ notice to HUL before any initiating legal action. We blogged about this in detail here.
  • On 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 the July 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 the Calcutta 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.

Interim Application filed by HUL against Emami at the Bombay High Court

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

  • 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 September 2018, HUL applied for registration of the new trademark “Glow & Handsome”.
  • 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 on 2 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’s Claims & Contentions

  • 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.
  • 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 the Trademark Journal (which HUL said it would be opposing). Emami also claimed to have digitally launched the trademark “Glow & Handsome” on 27 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.

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 Calcutta High Court. It was also made clear that HUL could not claim any equities so far as its use of the mark “Glow & Handsome” hereafter is concerned.

Hindustan Unilever Ltd. vs Emami Ltd.

Order dated 17 August 2020, Bombay High Court