Our Associate, Aishwarya Pande discusses “Battle Over GLOW & HANDSOME: The ‘Un’fair Saga Continues”
On July 6, 2020, a single judge of the Bombay High Court had granted ad-interim relief to Hindustan Unilever Limited (“HUL”) by directing Emami Limited (“Emami”) to give seven (7) days’ prior notice to HUL before initiating legal proceedings against HUL’s use of the mark GLOW & HANDSOME. [Read here]
On July 16, 2020, Emami appealed against the decision of the single judge. Dismissing the appeal, a division bench refused to interfere with the order of the single judge and directed him to take up the matter for further arguments on July 27th.
Aggrieved, Emami moved an application before the single judge, seeking to set aside the order of July 6, 2020. Emami argued that, as per the Trade Marks Act, 1999 (“Act”), a suit for groundless threats of legal proceedings cannot be initiated by a party if the party making threats has filed an infringement suit against the first party. Since Emami had already initiated a suit for infringement against HUL before the Calcutta High Court, the single judge’s order runs contrary to the Act.
HUL agreed with Emami’s submission that the single judge’s order was in contravention to the Act. However, HUL argued that the order of the single judge requiring Emami to give a give seven (7) 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. As such, HUL requested the court to substitute its earlier order with a direction that Emami shall give at-least 5 (five) days’ notice to HUL before applying for any ad-interim/ interim relief in any other proceedings that Emami may choose to initiate against HUL in a civil court in relation to the GLOW & HANDSOME mark.
The court agreed with HUL’s submissions and directed Emami to give five (5) days’ notice to HUL before moving to any civil court in any other proceedings against HUL’s use of the GLOW & HANDSOME mark.
Emami contended that a similar order be passed against HUL, precluding it from initiating any legal proceedings in any civil court against Emami without giving a five (5) days’ notice. HUL argued that such an order would be unnecessary, given that HUL has not till date filed any legal proceeding against Emami. The court agreed and stated that in the event that Emami wishes to seek such relief, it should be done in the proceeding initiated by Emami against HUL before the Calcutta High Court.