Reiterating that the Hindustan Unilever Limited (HUL) was prima facie the prior adopter of the mark ‘Glow and Handsome,’ the Bombay high court (HC) temporarily restrained Emami Ltd from using the same trade mark for grooming and skincare products until further orders. The court also observed that the order would, however, not restrain Emami from gaining a similar order in the suit it filed in the Calcutta HC.
The single bench of justice SC Gupte was hearing the interim application in a commercial suit filed by HUL – seeking a restraint on Emami from using the trademark ‘Glow and Handsome’. The counsels for HUL submitted that the mark was adopted by the company in September 2018 and it also applied for permission from the Food and Drug Administration to change the mark ‘Fair and Lovely’ to ‘Glow and Handsome’, which was granted on August 2 this year.
The counsels further submitted that in July this year, HUL announced its decision to change the mark and also submitted details of the sales of its products under the new trademark as well as the expenditure it incurred for the promotion of the new trademark. Senior counsel Virag Tulzapurkar and advocate Hiren Kamod for HUL submitted that as Emami was in process of launching products under the trademark on August 17 or 18 and announced its intentions on July 27, the application seeking an interim injunction restrained Emami from using the trademark “Glow and Handsome”.
Senior advocate Jishnu Saha for Emami opposed the application and said that it had been marketing skin care products under the trademark “Fair and Handsome” and if HUL was allowed to use the trademark “Glow and Handsome” for a similar product it would infringe their registered trademark. He also submitted that Emami had adopted the mark before and applied for its registration on June 25. He added that Emami moved an application against HUL before the Calcutta HC related to the use of the trademark in question, and did not obtain any interim order therein.
Saha further submitted that if HUL was allowed to market its products under the “Glow and Handsome” mark, there was a concrete likelihood of confusion and deception in the public, if identical marks are allowed to hold the field for popular and much sold commodities.
After hearing the submissions, the court noted that HUL’s action was an action in passing off, since it did not hold the registration of the trademark “Glow & Handsome”. The court then said that as Emami did not introduce its products into the market under its proposed trademark “Glow & Handsome”, it deserved to be restrained from doing so and passed an ad-interim injunction restraining Emami from using the alleged mark till the final disposal of the suit.
The court while directing Emami to file its reply to the application within two weeks said, “It is made clear that this order shall not in any manner come in the way of the defendant (Emami) claiming in its own suit in Calcutta high court a restraint order against the plaintiff’s (HUL) use of the trademark “Glow & Handsome”.