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In a recent trademark dispute between Emami Limited and Hindustan Unilever Limited (hereinafter referred to as “HUL”), the Bombay High Court dismissed an appeal which was filed by Emami Limited, challenging an ex-parte order that was passed by a Single Judge Bench on 6th July, 2020. The order had given interim relief to Hindustan Unilever Limited in the ongoing trademark dispute between the two companies, over the names of their fairness creams. Both Emami and HUL claim to have a trademark over the name “Glow and Handsome”. The dispute started when HUL branded their cosmetic product “Fair and Lovely” (for women) and “Fair and Handsome” (for men) as “Glow and Lovely” and “Glow and Handsome” respectively.
Facts of the Incident
The dispute began when HUL made a formal announcement that its trademark brand “Fair and Handsome” under its skin care range of products for men is rebranded as “Glow and Handsome”. HUL started commercial advertising of the product under the said name from 4th July in various newspapers and on various digital platforms. In response to the said advertisements, Emami Ltd. gave statements in newspapers allegedly threatening to take legal actions against HUL for violating its rights under the trademark. HUL then filed a case against Emami, under Section 142 of the Trademarks Act, 1999 against the statements published by Emami. According to its counsel, HUL had filed application for the trademark “Glow and Handsome” and “Glow and Lovely” on 7th September, 2018.
According to the counsel, the trademark application was filed after duly searching the Register of Trademark and this year in the month of June, HUL again filed for the said trademark on proposed to be used basis. The counsel also submitted in the Court that on 3rd July, it got the FDA license to manufacture the product under the name “Glow and Handsome” following which, it issued advertisements and made an official announcement. The Court in the impugned order, observed that since the plaintiff (HUL) had duly filed for the trademark in the month of September and then July, the plaintiff adapted the mark before. However, whether the statements made by Emami had some ground is to be decided after hearing both the parties. Emami Ltd. had filed an Appeal against this order of the Bombay High Court which granted interim relief to HUL. The Appeal was heard by a division bench of the Bombay High Court comprising of Justice VG Bisht and Justice RD Dhanuka. The bench dismissed the appeal after perusal of the impugned order stating that since the Single Bench had directed to list the interim application for further relief on 27th July, it is thus not inclined to interfere with the order passed.
Legal Provisions Involved
Section 142 of the Trademarks Act, 1999 prevents a person from issuing groundless threats to a registered trademark user, and if someone does so, then the registered trademark user may obtain an order for injunction against the continuance of such threats and also recover any damages that he might have suffered due to such threats. Thus, in the instant case, HUL might get relief if it proves that the alleged threats issued by Emami did not have any merit and were groundless. The Court in the interim order had also observed that Emami must give a prior notice of 7 days to HUL before initiating any legal action against HUL. This principle was upheld by the HC previously in the case of Kokanratna Holiday Resorts vs. Millennium & Copt Horne International Limited. In this case, the Bombay High Court had observed that the defendant shall give a prior written notice of 7 days to the plaintiff before initiating any legal proceedings against them pertaining to the trademark.
From the above discussion, it is clear that in order to bring a successful claim HUL needs to prove, firstly, that it got the trademark registered for “Glow and Handsome” before Emami and secondly, that the statements issued by Emami in newspapers were groundless. While Emami on the other hand must prove that it was an honest and prior adapter of the trademark and HUL’s use of it constitutes a trademark infringement.
HUL had applied for numerous trademarks along with “Glow and Handsome” while a few of them got approved, “Glow and Lovely” and “Glow and Handsome” were not granted. It was stated by the Trademark Registry that they lacked intended designated purpose and were non-distinctive. This matter is separately pending before the Intellectual Property Appellate Board. However, the filing of new applications by HUL before the launch of its rebranding campaign gives it an upper hand over Emami since it didn’t file for the trademark even after 7 days of launching it digitally. Registration is one of the primary claims in ownership of a trademark however the Indian Trademark Act, 1999 gives priority to ‘adoption and use’ over ‘registration’ while determining the owner of a trademark. Section 34 of the Act provides that a registered proprietor of a trademark cannot interfere with the rights of a prior user of an identical or similar mark. Hence, it would be interesting to see in whose favour the Court decides this dispute.
Disputes arising in Intellectual property rights are growing day by day. It is important to prevent businesses from adopting unfair trade practices in order to maintain a level playing field for everyone. A well thought approach towards filing trademark applications before launching a product can save businesses from getting into legal troubles like the one in the instant case. The final outcome of the case is yet to be decided and the issue shall be resolved by the Bombay High Court in the next hearing on 27th July 2020.
Author: Avani Jain from National Law Institute University, Bhopal.
Editor: Astha Garg, Junior Editor, Lexlife India.