Calcutta High Court restrains HUL use of Glow & Handsome mark after Emami alleges infringement of Fair & Handsome

The Calcutta High Court recently passed an interim order restraining Hindustan Unilever Limited (HUL) from using the mark Glow and Handsome which contained an essential feature of Emami's Fair and Handsome trademark [Emami Limited v. Hindustan Unilever Limited]..Justice Ravi Krishan Kapur noted in the order,"The HUL has an existing brand and in changing its name has intentionally opted to choose a leading, prominent and essential feature of its competitor’s product. It is true that the packaging of both the products are different. However, an unwary purchaser of average intelligence and imperfect recollection who only remembers the one word 'Handsome' is likely to be deceived by the misleading indicia 'Handsome' and this has now been intentionally made a cause for confusion and deception."It is also a reasonably foreseeable consequence that Emami's business and goodwill would be damaged as a result of the misrepresentation, the Court said."In choosing the word 'Glow and Handsome' there is also an element of taking unfair advantage of a leading, prominent and essential feature of the petitioner’s mark which deceives or is likely to deceive. Nobody has any right to represent the goods of somebody else. In doing so, the rival takes a 'free ride.' There is no line between permissible free riding and impermissible free riding. All 'free riding' is unfair," Justice Kapur held.The judge, therefore, held that Emami made out a strong prima facie case for passing off and that the 'balance of convenience' lies overwhelmingly in its favour..The Court was dealing with a trademark infringement plea filed by Emami seeking an injunction against HUL from using the mark Glow and Handsome on the ground that it was similar to its own product Fair and Handsome.Emami contended that the word 'Handsome' is prominent, leading and essential feature of the company's mark and has also acquired a distinctive and a secondary meaning.On the other hand, HUL contended that the mark 'Handsome' is purely descriptive and is not distinct but only a generic term, also used by other competitors in the industry.It argued that the mark is not exclusively identified with Emami as the company has never used the said mark as a standalone mark..After hearing the parties, the Court noted,"In brief, the mark 'Fair and Handsome' is the creation of Emami. It is the result of considerable investment made by the company. It has been devised, brought up and maintained by promotion and is to be valued by itself. The HUL has been unable to give any proof of actual use of the mark 'Handsome' by any other entity in relation to men’s fairness creams."HUL has sought to use the mark Glow and Handsome with full knowledge that it was adopting an essential feature of its competitor’s trade mark, the Bench said. It noted that an application for registration of the mark Glow and Handsome had been dismissed and the same was allowed only after a period of 11 months. There was an obligation on HUL to ensure that the new name of its product is not likely to deceive or constitute infringement, the Court said."Of all the available names, HUL intentionally chooses as part of its name which is also a prominent, essential and leading feature of its competitor’s mark. The chronology of events commencing from the date of the public announcement, the application for registration of the impugned mark, the belated filing of an appeal against the order of the Registrar, the suit filed before the High Court at Bombay, all combine and prima facie points towards unfairness and a desperation to use the word 'Handsome' even as part of the impugned mark," the judge underscored.It thus granted interim relief to Emami. .Senior Advocate Ranjan Bachawat along with Advocates Debnath Ghosh, Sanjay Ginodia, Adreeka Pandey, Satyaki Mukherjee and Mini Agarwal appeared for Emami.Senior Advocates SN Mookherjee and Ratnanko Banerji along with Advocates Arunabho Deb, Soumabho Ghose, Deepan Kumar Sarkar, Ashika Daga, Arti Bhattacharyya, Jishnujit Roy and Aayush Lakhotia represented HUL..[Read Order]