On June 25, 2020, Hindustan Unilever Limited announced to rebrand its decades-old popular flagship brand, Fair & Lovely by dropping ‘Fair’ to take forward the brand’s journey towards more inclusive beauty standards.
What followed was rebranding exercises, regulatory approvals, extensive print and digital media advertisements, promotions panning India and abroad, and a potential threat of legal action from a fierce competitor, Emami Limited. Established in 1974, Emami Limited is one of the leading and fastest growing personal and healthcare businesses in India with a portfolio of over 300 + products with operations expanding to more than 60 countries worldwide. Emami Limited had recorded a turnover of Rs 2655 crore in 2019-20.
Details of the case:
Hindustan Unilever Limited (HUL) filed the suit before Bombay High Court under provision of ‘Groundless threats of legal proceedings’ seeking an ex-parte interim injunction against Emami Limited from issuing groundless threats to HUL in respect of latter’s use of its trade mark “GLOW & HANDSOME”. The Single Judge granted the relief directing Emami to give at least 7 days prior written notice to HUL before initiating any legal proceedings in any court or claiming any interim or ad-interim reliefs against HUL as threatened.
Background of HUL’s trademarks:
HUL stated following contentions in support of its case which explains the chronological chain of events:
- HUL is India’s largest fast-moving consumer goods (FMCG) company, with leadership in Home & Personal Care Products and Foods & Beverages under its established household brands.
- One of HUL’s trademarks is ‘Fair & Lovely’ which was adopted for a fairness face cream product around the year 1975 which was hugely popular amongst women consumers.
- In 2006, HUL wished to target the men’s consumer segment and launched ‘Fair & Lovely, Men’ which was later renamed as ‘Men’s Fair & Lovely’.
- In September 2018, HUL independently came up with ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ for its skincare range. Trademark applications were filed in both classes 3 and 5 on intent to use basis. Official objections on absolute grounds of refusal were raised i.e. mark is non-distinctive. The trademark applications were refused, and appeals were filed before the Intellectual Property Appellate Board (IPAB) against the Registrar’s refusal decision.
- Again, on June 17, 2020, and June 25, 2020, trademark applications for
and
were filed by HUL respectively in classes 3 and 5 on intent to use basis.
Rebranding:
On July 02, 2020, HUL made an official announcement that ‘Fair & Lovely’ is being rebranded as ‘Glow & Lovely’ and the corresponding men’s skincare product will be changed to ‘Glow & Handsome’. FDA (regulatory) license was granted to HUL for ‘Glow & Handsome’ products on the next day and HUL immediately issued commercial advertisements for its ‘Glow & Handsome’ products on social media, newspapers, etc.
Simultaneously, Emami published its statements in various newspapers threatening to take legal action against HUL for violating Emami’s rights in its mark ‘EMAMI GLOW AND HANDSOME’ which was launched digitally, a week before HUL’s July 2nd announcement.
After effects:
Upon coming across Emami’s statements, a search was conducted in the online database of Trade Marks Registry by HUL and it was found that Emami filed an application for ‘GLOW AND HANDSOME’ on June 25, 2020, with no user claim. The other applications for EMAMI GLOW AND HANDSOME,
and
were filed on June 27, 2020, with user claim since June 26, 2020. However, no such product was launched by Emami.
HUL’s claims in the suit:
- Emami’s blasting statements published on several media is unjustifiable and groundless within the meaning of Section 142 of the Trade Marks Act, 1999.
- Emami’s claim of proprietorship over ‘GLOW AND HANDSOME’ / ‘EMAMI GLOW AND HANDSOME’ is false and misconceived since HUL is the prior adopter and user of ‘Glow & Handsome’ mark.
- With no use by Emami, it cannot disturb the honest and bona fide use of HUL’s prior adopted ‘Glow & Handsome’ mark.
- HUL’s ‘Glow & Handsome’ products have been commercially advertised and that Emami is likely to wrongfully initiate proceedings in any court in India and try to obtain ex-parte ad-interim reliefs against HUL in respect of its mark ‘Glow & Handsome’.
On reviewing the HUL’s case, the Single Judge observed that with first trademark application dated September 2018, prima facie it appears that HUL is the prior adopter of ‘Glow & Handsome’ mark. Further, commercial advertisements of such brand had also started. Whereas Emami adopted ‘GLOW AND HANDSOME’ mark in June 2020 with no commercial use till date. While Emami’s statements published in newspapers amount to a threat, however, if those are unlawful or groundless can only be decided after hearing both the sides.
The Judge issued an order dated July 6, 2020 and concluded that since HUL is only seeking limited relief, no harm or prejudice would be caused to Emami if such limited relief is granted.
Emami appealed against the above order and the Division Bench of Bombay High Court refused to interfere with the Single Judge’s order.
The initial interim application filed by HUL was next listed on July 27, 2020 granting them liberty to renew its application for further reliefs. Meanwhile, Emami moved an application to set aside the above July 06, 2020 order which was disposed off on this date.
Emami pleaded that the July 6, 2020 order was contrary to provision of ‘Groundless threats of legal proceedings’ (Section 142 of Trade Marks Act) i.e. relevant sub-section 2 of this provision clearly states that preceding sub-section 1 shall not apply if the registered proprietor/registered user of the trademark, with due diligence, commences and prosecutes an action against the person threatened for infringement of the trademark.
HUL apprised the Court that Emami had already filed a suit before Calcutta High Court on July 7, 2020 and therefore, Emami has duly complied with the July 6, 2020 order. Thus, no further notice would be required regarding suit filed before the Calcutta High Court.
The Judge sided with Emami’s contention that Section 142 (1) would not apply if the registered proprietor/ registered user of the trademark diligently commences and prosecutes an action against the person threatened for infringement of the trade mark. Hence, it would not be correct to direct Emami to give 7 days’ notice to HUL before they file any suit or proceedings in a Civil Court.
However, this provision does not prevent the Court from issuing such directions to Emami to give adequate notice to HUL before the former files for ad-interim/interim reliefs in the proceedings initiated by them. Finding HUL’s counsel suggestion as fair one, the Judge modified the previous order directing Emami to give atleast 5 days’ notice to HUL before applying for any ad-interim/ interim relief in any other proceedings in a Civil Court (other than the one filed before the Calcutta High Court) in relation to the trade mark “GLOW & HANDSOME”.
Emami’s request of issuance of same directions against HUL were not admitted. The Judge gave tentative opinion that HUL has filed the present suit and hence, Emami cannot get any relief in the present suit. In case Emami wants to seek such reliefs against HUL, they are free to do so in the suit filed before the Calcutta High Court which can be decided therein.
With two FMCG giants at loggerheads, we are yet to see how these suits and proceedings between them unravel. As of now, Emami is already displaying logo
in the product section of their website.
However, it has again outlined the fact that prior trademark availability search is an essential step to form robust brand portfolio and helps in maintaining a brand owner’s image of being diligent and sensitive to third-party IP rights.
Article by Manisha Singh and Akanksha Kar
1st published on Lexology.