An Un ‘Fair’ Battle Over GLOW & HANDSOME
Our Associate, Aishwarya Pande discusses “An Un ‘Fair’ Battle Over GLOW & HANDSOME”
Two of India’s cosmetics giants, Hindustan Unilever Limited (“HUL”) and Emami Limited (“Emami”), are engaged in a trade mark tussle over the names of their men’s cream brands, GLOW & HANDSOME and EMAMI GLOW & HANDSOME.
Emami took objection over HUL’s announcement regarding the rebranding of its men’s fairness cream brand from MEN’S FAIR & LOVELY to GLOW & HANDSOME. Emami issued statements in various newspapers, inter alia, threatening to initiate a legal action against HUL for violating Emami’s rights in its mark EMAMI GLOW AND HANDSOME.
A comparison of the rival marks is shown below:
Consequently, HUL approached the Bombay High Court seeking an injunction against what it called Emami’s groundless threats in respect of the HUL’s use of its above-noted mark. HUL prayed for a limited relief that Emami should be required to give a seven (7) days prior notice to HUL before initiating any proceeding against HUL’s use of the GLOW & HANDSOME mark.
HUL contended that it is the prior adopter of the mark GLOW & HANDSOME and had also filed a trade mark application for the aforesaid mark in September 2018. This application was refused by the Trade Marks Registry. However, an appeal against the decision of the Learned Registrar is pending before the Intellectual Property Appellate Board. Further, on June 25, 2020, HUL filed another application for the mark GLOW & HANDSOME Design (shown above) in Classes 3 and 5. Moreover, HUL stated that it has advertised its product bearing the GLOW & HANDSOME mark across the country through print and social media. On the other hand, Emami has filed a trade mark application for the mark EMAMI GLOW & HANDSOME Design on June 25, 2020, but has not used the mark till date.
Under the circumstances, the Court came to a conclusion that HUL is a prior adopter of the mark GLOW & HANDSOME and has advertised it across the country. On this basis, the Court held that grant of a limited relief, as sought by HUL, is justified. No harm or prejudice will be caused to Emami by grant of such relief to HUL. As regards the statements issued by Emami against HUL’s use of the GLOW & HANDSOME mark, the Court stated these statements amounted to threats. However, whether these were unfair/groundless or not will have to be decided after hearing both sides.
Accordingly, the Court directed Emami to give a seven (7) days prior notice to HUL before initiating any proceedings in any court or claiming any interim or ad-interim reliefs against the HUL’s use of the trade mark GLOW & HANDSOME.