FACTS
The Petitioner, Emami Ltd., registered and has been using its mark ‘Fair and Handsome’ since 2005 for men’s skincare products. Emami also had word and label registrations over the variants of the ‘Fair and Handsome’ mark like ‘Hi Handsome’ and ‘Active Handsomeness’ and a few others. Emami gave prominence to the mark ‘Handsome’ in its publicity campaigns and advertisements by spending over Rs. 400 crores since 2005. The Respondent, Hindustan Unilever Ltd., adopted the mark ‘Glow and Handsome’ in 2020 for its men’s skincare cream that competed in the same category as Emami.
EMAMI’s GROUNDS
Emami filed a suit for infringement and passing off against Unilever for its use of the mark ‘Glow and Handsome’. Emami filed the suit on four grounds:
- Unilever’s ‘Glow and Handsome’ was deceptively similar to Emami’s registered trademark ‘Fair and Handsome’.
- Unilever aimed to mislead the average consumer and harm Emami’s brand and market position.
- Emami claimed that Unilever’s mark had infringed upon its mark as the word ‘Handsome’ had acquired a distinctive and secondary meaning due to its market share of over 65 per cent, goodwill and reputation established, since 2005.
- Unilever had obtained similar injunctions against other parties for using the Marks ‘Fair’ or ‘Lovely’ alone.
UNILEVER’s CONTENTIONS
Unilever defended its stance in response by stating that:
- The word ‘Handsome’ in Emami’s mark ‘Fair and Handsome’ was purely generic and descriptive and incapable of any distinctiveness.
- Emami had never used ‘Handsome’ as a standalone mark.
- Emami is barred by the principle of prosecution history estoppel from claiming rights over the word ‘Handsome’ which it had disclaimed at the time of registration.
- ‘Glow and Handsome’ was the result of an overall companywide shift away from ‘Fair & Lovely’ towards a more inclusive version of beauty and that such a decision-making process had begun in 2018.
COURT’S ANALYSIS
A. Infringement
The Court noted that words and terms that are prima facie descriptive could, in certain cases, acquire a secondary meaning. However, if the mark in question itself is used in a generic or descriptive manner, it would be strong evidence of generic-ness. The Court referred to the case of People Interactive (India) Pvt. Ltd. Vs Vivek Pahwa, which held that generic terms could never acquire distinctiveness or secondary meaning. The Court made two observations in this regard:
- Emami neither registered ‘Handsome’ as a standalone mark nor did it use it in such a manner.
- Emami had, at the time of registration, adopted the disclaimer that it would never assert rights over ‘Fair’ or ‘Handsome’ themselves.
Based on these two observations, the Court held that there was no merit in the case of infringement.
B. Passing Off
The Court applied the classic trinity test where reputation, misrepresentation and damage to goodwill are the essential ingredients in order to succeed in an action for passing off. The Court noted that a conscious and deliberate decision made by a competitor to adopt a leading, prominent and essential component of a trade rival while seeking to change the name of its existing brand could not be disregarded. The Court also mentioned that a consumer of average intelligence and imperfect recollection who only remembers the one word “Handsome” is likely to be deceived by the misleading indicia “Handsome”. The deception and misrepresentation created by Unilever could be reasonably foreseeable damage to Emami’s business and goodwill.
With respect to passing off, the Court made the following observations.:
- Unilever’s use of the mark ‘Glow and Handsome’ was a conscious and deliberate decision for passing off its product as Emami’s.
- Unilever could not give a satisfactory response to why it adopted the word ‘Handsome’ when the same had been rejected in its attempt to register the mark in 2018.
- Unilever, as a rival competitor in the same segment, also had an obligation to ensure its product would not deceive or infringe on the rights of Emami’s marks.
- Unilever had also agreed not to use ‘Fair’ or ‘Lovely’ separately, however, multiple injunctions were still obtained for the same.
- Emami had also approached the Court immediately upon Unilever launching its product, and therefore, there was no delay in approaching the Court.
COURT ORDER
The Court concluded that although Emami had not been able to establish a case for infringement it had established a prima facie case for passing off. The Court stated that it is well settled, that an action in passing off could succeed even when a claim for infringement had failed. Hence, the Court passed an order against passing off as prayed for by Emami, and Unilever was given one month to comply with the order.
Citation: Emami Limited v Hindustan Unilever Limited decided by Calcutta High Court on 9th April 2024, CS-COM/189/2024 (Old case no. CS/62/2020)
Authored by Ms. Kavya Sadashivan, Consulting & Strategy Team, BananaIP Counsels.
Reviewed and confirmed by Ms. Naika Salaria, Trademark Team, BananaIP Counsels.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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