Author – Anushree Capoor and Prayank Khandelwal
Background
The aftermath of George Floyd’s death gave rise public outrage against racial discrimination and the #Blacklivesmatter movement. In response to this, various corporates and multi-national companies worldwide took decisions to make their brands less discriminatory. One such company in India was Hindustan Unilever Limited (“HUL”) who rebranded its fairness enhancing cream ‘Fair and Lovely’ to ‘Glow and Lovely’ and ‘Fair & Lovely for Men’ to ‘Glow and Handsome’. HUL’s decision garnered a lot of criticism from the consumers as well as its rival brand Emami. Emami claims that it had rebranded its product ‘Fair and Handsome’ to ‘Glow and Handsome’ and launched it digitally a week before HUL announced its rebranding. Emami alleged HUL’s decision to be an unfair business practice since their products now had the same brand name.
The rivalry between Emami and HUL is not new. Both brands have had a history of defaming the other in advertisements and promotional strategies. The rift began in late 2000s when Emami, realizing the potential in fairness creams for men, launched its brand ‘Fair and Handsome’ in June 2005. HUL followed soon after with ‘Fair and Lovely for Men’ in 2006. Since then both companies have been bad-mouthing each other in advertisements and several controversies have been settled by the courts. However, in the men’s fairness cream category, Emami has always enjoyed a greater market share which currently is over 65% [https://www.moneycontrol.com/news/business/all-is-fair-in-business-and-war-hul-versus-emami-who-will-dominate-mens-fairness-cream-space-5513641.html]. With renaming of its brand to ‘Glow and Handsome’, HUL attempts to capture more market share than before.
Bone of contention
The bone of contention in this matter is the use of word mark ‘Glow and Handsome’ as has been filed for by both HUL and Emami.
Trademark history till date
HUL has been attempting to find a suitable name to rebrand its product ‘Fair and Lovely’ since September, 2018. It has thus filed for several trademarks such as ‘Even & Lovely’, ‘Always Lovely’, ‘Glow and Lovely’, ‘I am Lovely’, ‘Bright & Lovely’, ‘Truly Lovely’, ‘Care & Lovely’, and ‘Bold & Lovely’. A few of these trademarks have been granted while others have been objected or refused. ‘Glow and Lovely’ and ‘Glow and Handsome’ were two such word marks that had been refused by the Trademark Registry on grounds of non-distinctiveness and designating intended purpose. Review petitions filed by HUL have been rejected as recently as February 18, 2020. An appeal has thus been referred against the order of refusal which is currently pending with the IP Appellate Board.
The move of HUL rebranding itself to ‘Glow and Lovely’ and ‘Glow and Handsome’ on June 25 can be said to be a tactful move to gain popularity and acquire secondary meaning in the minds of consumers. The media coverage given to the HUL’s decision has already attracted widespread attention of consumers. Further, in order to expand their trademark base and strengthen their claim, they have filed two more applications for device marks of ‘Glow and Handsome’ on June 16, 2020 and June 25, 2020.
On the other hand, Emami claims to have announced its rebranding from ‘Fair and Handsome’ to ‘Glow and Handsome’ digitally one week before HUL’s launch. It also claims to have made filings with relevant authorities beforehand. However, this does not appear to be true. Emami may claim prior launch of the product but its filings for word marks and device marks have been as recent as 25th June, 2020 and 27th June, 2020. Two of its word marks have passed formality checks and are pending approval from the Registry while its device marks have been sent for Vienna codification.
Relief granted by Bombay High Court
In response to the ‘groundless’ threats received from Emami, HUL approached the Bombay High Court for an ad-interim relief to protect itself. The Bombay High Court granted the relief while observing that:
“Prima facie it does appear that having filed its trade mark application in September 2018 and subsequently on 25th June 2020 for the mark ‘GLOW & HANDSOME’, the Plaintiff (HUL) is the prior adopter of the said mark.” [Hindustan Unilever Limited v. Emami Limited, LD/VC/IA/1/2020, decided on 06-07-2020]. The relief granted directs Emami to give HUL a prior written notice, seven days in advance before initiating any legal proceedings over the Trademark for “Glow & Handsome”. However, there is still uncertainty around various legal issues relating to the grant of trademark which will have to be resolved by the courts. Two questions that will need to be determined by courts in all likelihood pertain to:
1.Distinctiveness of ‘Glow and Handsome’; and
2.Determination of prior user of the mark in question.
Analysis of the situation
HUL made a smart decision in 2018 when it decided to file applications for the several prospective marks as an alternate to ‘Fair and Lovely’. The filing of fresh applications for the trademark 10 days before its announcement was also a good decision taken by HUL’s IP team who were vigilant. However, it did not use those marks in relation to any goods until 25th June, 2020 when the rebranding was announced.
Emami, on the other hand, failed to file applications for registration of its brand name ‘Glow and Handsome’ until a week after its digital launch. Though Emami could build a case on deceptive similarity, its legal position is weak when compare to HUL since registration is the primary proof of ownership. The only route for Emami in this situation would be to claim ‘prior use’ of the trademark and allege failure of use of trademark by HUL.
Prior Use of Trademark in India
Indian Trademark Act, 1999 holds priority in adoption and use over priority in registration to determine the owner of a mark. Section 34 of the Act states that, a registered proprietor of a trademark cannot interfere with the rights of a prior user of an identical or similar mark. This principle protects a bonafide owner from being stripped of his rights over his trademark. The Supreme Court has recognised four principles governing the right so a prior user [ Neon Laboratories Ltd. v. Medical Technologies Ltd. and Ors. 2015 (64) PTC 225 (SC)]:
- The use of a mark resembling the registered mark, must be in relation to the same goods and services as the registered mark;
- The prior user must have been in continuous use of the trademark in India;
- The trademark must be put to use by the proprietor;
- The mark must have been used from a date prior to the use of the registered trademark or the date of registration, whichever is earlier.
If the IP Appellate Board accepts HUL’s appeal for grant of ‘Glow and Handsome’ and if the application is registered, it will be dated to the date of its application in September, 2018. In such a situation, the claim prior use may also be weak since Emami put the mark to use only in June, 2020.
Conclusion
The present dispute between Emami and HUL is a classic example of why businesses must not wait for launch or release of its product/ services and file trademarks beforehand. HUL’s practice of filing trademark applications in advance before launching the product has given it an upper hand in the forecasted legal disputes. It is on this basis that the Bombay High Court has held HUL to be the prior adopter of ‘Glow and Handsome prima facie and has granted it a preemptive order mandating Emami to give seven days prior notice before filing a legal suit.
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