Calcutta High Court: In a suit for infringement and passing off under Trade Marks Act, 1999 (‘TM Act’), filed by Emami Limited (‘Emami’), a well-established company in the men’s skincare industry, against Hindustan Unilever Limited (‘Hindustan Unilever’), seeking relief against Hindustan Unilever for their use of the mark “Glow and Handsome,” claiming it bore striking resemblance to Emami’s renowned brand “Fair and Handsome.” Ravi Krishan Kapur, J. granted relief to Emami for passing off, despite Emami failing to prove infringement, and noted the similarity between the marks “Fair and Handsome” and “Glow and Handsome,” recognizing the potential for confusion among the customer and that the intentional adoption of a mark resembling Emami’s, despite lack of infringement, suggested an attempt by Hindustan Unilever to benefit from Emami’s goodwill.
Brief Background
Emami, a prominent entity in the skincare industry, has built a strong brand presence over the years with its product line “Fair and Handsome.” Meanwhile, Hindustan Unilever Limited, also a significant player in the market, launched a competing product named “Glow and Handsome.” Emami, perceived this introduction as potentially infringing upon their trademark, given the striking similarity between the two product names. Despite initial attempts at resolution, with Emami expressing concerns about possible trademark infringement and passing off, Hindustan Unilever continued to use the “Glow and Handsome” mark. This ongoing usage led Emami to file a suit against Hindustan Unilever Limited, for trademark infringement and passing off.
Analysis, Law and, Decision
Upon consideration of the contentions put forth by the parties, the Court delved into the essence of passing off, recognizing that while certain terms may initially be descriptive, they can attain a secondary distinctiveness through extensive use and reputation. In this regard, the Court noted Emami’s substantial efforts in building their brand and the significant market presence of “Fair and Handsome.”
The Court observed that the defendant’s adoption of the mark “Glow and Handsome,” despite being aware of Emami’s brand, suggested an intentional attempt to capitalize on Emami’s goodwill. The Court remarked, “Nobody has any right to represent the goods of somebody else. In doing so, the rival takes a ‘free ride’. There is no line between permissible free riding and impermissible free riding. All ‘free riding’ is unfair.”
The Court emphasized, “Words and terms which are prima facie descriptive may in certain circumstances by use and reputation acquire a secondary distinctive meaning before they are monopolized.”
The judge opined, “At the heart of passing off lies deception or its likelihood. The respondent has an existing brand and in changing its name has intentionally opted to choose a leading, prominent and essential feature of its competitor’s product.”
Therefore, despite the absence of infringement, the Court ruled in favour of Emami on the grounds of passing off, granting them relief in the form of an injunction against Hindustan Unilever.
[Emami Limited v. Hindustan Unilever Limited, 2024 SCC OnLine Cal 3579, Judgment dated 9-04-2024]
Advocates who appeared in this case :
Advocates for the Plaintiff: Ranjan Bachawat, Sr. Adv., Debnath Ghosh, Sanjay Ginodia, Adreeka Pandey, Satyaki Mukherjee, Mini Agarwal
Advocates for the Defendant: S.N. Mookherjee, Sr. Adv., Ratnanko Banerji, Sr. Adv., V.P. Singh, Sayobani Basu, Asif Ahmed, Mini Agarwal, Ms. Shubhangi Jain, Pubali Sinha Chowdhury, Naman Chowdhury, Dhruv Chawla, Sayyan Poovayya, Chetan Chawla.
Buy Trade Marks Act, 1999 HERE
