Emami vs. Hindustan Unilever: Calcutta HC Rules in Favor of ‘Fair and Handsome’ in Trademark Battle

Case 9: Emami Limited v. Hindustan Unilever Limited

Citation: 2024 SCC OnLine Cal 3579
Court: Calcutta High Court
Date Decided: 9 April 2024
Judge: Justice Ravi Krishan Kapur

Background

Emami Limited, a prominent Indian FMCG company, launched its men’s skincare product “Fair and Handsome” in 2005. Over the years, Emami invested significantly in building the brand’s identity, emphasizing the term “Handsome” through extensive advertising campaigns and achieving a substantial market share in the men’s fairness cream segment.

In 2020, Hindustan Unilever Limited (HUL) rebranded its men’s skincare product from “Fair & Lovely Men” to “Glow & Handsome.” Emami perceived this rebranding as an attempt to capitalize on the goodwill of its established brand and filed a suit against HUL, alleging trademark infringement and passing off.

PLAINTIFF’S MARK

DEFENDANT’S MARK

Legal Issues

1. Whether HUL’s use of the mark “Glow & Handsome” infringes upon Emami’s registered trademark “Fair and Handsome.”
2. Whether HUL’s adoption of the mark constitutes passing off by creating confusion among consumers and leveraging Emami’s brand reputation.
3. Whether Emami is entitled to an interim injunction restraining HUL from using the “Glow & Handsome” mark pending the final adjudication of the suit.

Parties’ Contentions

Plaintiff (Emami Limited):

• Asserted that “Fair and Handsome” is a well-established brand with significant goodwill and recognition in the market.
• Claimed that HUL’s adoption of “Glow & Handsome” is deceptively similar and likely to cause confusion among consumers.
• Argued that the term “Handsome” has acquired distinctiveness and a secondary meaning associated with Emami’s product due to extensive use and promotion.

Defendant (Hindustan Unilever Limited):

• Contended that “Handsome” is a descriptive term commonly used in the industry and lacks distinctiveness.
• Argued that Emami had disclaimed exclusive rights over the term “Handsome” during trademark registration, limiting its ability to claim infringement.
• Maintained that there is no likelihood of confusion between the two marks due to differences in packaging and marketing strategies.

Decision

The Calcutta High Court granted an interim injunction in favor of Emami, restraining HUL from using the “Glow & Handsome” mark for its men’s skincare products. The court observed that while Emami could not claim infringement due to the disclaimer over “Handsome,” it had established a prima facie case for passing off. The court noted that HUL’s adoption of a mark with a prominent and essential feature of Emami’s brand suggested an attempt to benefit from Emami’s goodwill, leading to potential consumer confusion. HUL was granted one month to comply with the order.

Ratio Decidendi

• Even if a term within a trademark is descriptive and disclaimed, extensive use and promotion can confer it with distinctiveness and secondary meaning, warranting protection against passing off.
• Adoption of a mark that closely resembles a competitor’s established brand, especially with knowledge of its market presence, can constitute passing off due to the likelihood of consumer confusion and deception.
• Interim injunctions can be granted in passing off cases where the plaintiff demonstrates a strong prima facie case, potential for irreparable harm, and a balance of convenience in its favor.

LEGAL ANALYSIS

• Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 30, 34, 35
• Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

Bibliography

• Emami Limited v. Hindustan Unilever Limited [2024] SCC OnLine Cal 3579
• ‘Fair and Handsome v. Glow and Handsome: Calcutta HC rules in favour of Emami in passing off dispute against Hindustan Unilever’ (SCC Online, 15 April 2024) https://www.scconline.com/blog/post/2024/04/15/fair-and-handsome-glow-and-handsome-calcutta-high-court-rules-in-favour-of-emami-in-passing-off-dispute-against-hindustan-unilever-legal-news/
• ‘Calcutta HC bars HUL from using ‘Glow & Handsome’ mark’ (Mint, 11 April 2024) https://www.livemint.com/companies/news/calcutta-hc-bars-hul-from-using-glow-handsome-mark-11712774606283.html
• ‘Calcutta HC restrains HUL’s ‘Glow & Handsome’ mark’ (Business Standard, 10 April 2024) https://www.business-standard.com/companies/news/legal-fairness-prevails-calcutta-hc-restrains-hul-s-glow-handsome-mark-124041001173_1.html