Introduction:

In a heated legal battle between two consumer goods giants, Emami Limited and Hindustan Unilever Limited (HUL), the Calcutta High Court recently issued a landmark decision regarding the usage of the ‘Glow & Handsome’ trademark by HUL for its men’s care products. Emami, the plaintiff, alleged that HUL’s use of the mark constituted infringement and passing off of Emami’s well-established mark ‘Fair & Handsome’. HUL, on the other hand, argued that the term ‘handsome’ was descriptive and not distinctive, and therefore, not exclusively identified with Emami.

Arguments of both sides:

Emami argued that it had registered ‘Fair and Handsome’ as a trademark globally and had been using variations of the mark since 2005, establishing it as a well-known and prominent brand in the men’s care market. The company claimed that HUL’s adoption of the ‘Glow & Handsome’ mark was deceptively similar to Emami’s mark and could mislead consumers.

HUL countered by asserting that the term ‘handsome’ was generic and descriptive, commonly used by competitors in the industry. The company argued that Emami had not used the term ‘handsome’ in a standalone manner and therefore, could not claim exclusive rights over it.

Court’s Verdict:

The Calcutta High Court, in its verdict, acknowledged Emami’s extensive use of the ‘Fair and Handsome’ mark since 2005, establishing its distinctiveness and reputation in the market. The court noted that HUL had launched its ‘Glow & Handsome’ product in 2020, long after Emami had established its mark. It emphasized that HUL’s deliberate choice of the term ‘handsome’ in its mark amounted to taking unfair advantage of Emami’s brand reputation and goodwill.

The court held that although HUL’s mark did not constitute infringement, it could still lead to passing off if consumers were misled into believing that HUL’s products were associated with Emami. Consequently, the court restrained HUL from using the ‘Glow & Handsome’ mark and granted Emami’s application for interim injunction.