Bombay High Court: B.P. Colabawalla, J., granted interim relief in a matter between HUL and Emami over the use of “Glow & Handsome” and held that Emami before initiating any legal proceedings shall give 7 days prior notice to Hindustan Unilever Limited.
Present suit was filed under Section 142 of the Trade Marks Act, 1999 seeking injunction against the defendant from issuing groundless threats to the plaintiff in respect of the use of its trademark “GLOW & HANDSOME”
Plaintiff’s advocate, Hiren Kamod submitted that plaintiff sought limited ad-interim relief, that defendant should give atleast 7 clear days prior written notice before initiating any legal proceedings.
Further it was stated that, after conducting a search in the Register of Trade Marks, the Plaintiff independently and honestly coined and adopted the trade marks ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ in respect of its skin care products.
To secure statutory rights in the ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ marks the Plaintiff filed multiclass applications.
On 2nd July, 2020,
Plaintiff made an official announcement that its trade mark / brand ‘FAIR & LOVELY’ is rebranded as ‘GLOW & LOVELY’ for its skin care range of products and the Plaintiff’s skin care range of FAIR & LOVELY products for men will be called as ‘GLOW & HANDSOME’.
It is stated that the plaintiff was granted its FDA License to manufacture its skin care products under the mark “GLOW & HANDSOME” on 3rd July 2020. Thereafter, the plaintiff immediately issued commercial advertisements in respect of its products bearing the trade mark ‘GLOW & HANDSOME’ not only on social media but also in the newspapers.
Immediately after the plaintiff made announcement on 2nd July 2020, the defendant gave statements in various newspapers inter alia threatening to adopt legal action against the Plaintiff for violating the Defendant’s alleged rights in its mark ‘EMAMI GLOW AND HANDSOME’.
Adding to the above contentions, plaintiff’s advocate submitted that defendant’s claim of proprietorship over the marks ‘GLOW AND HANDSOME’ / ‘EMAMI GLOW AND HANDSOME’ is false and misconceived.
Plaintiff is the prior adopter and user of the trade mark ‘GLOW & HANDSOME’.
Decision
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 is the prior adopter of the said mark, whereas, defendant adopted the ‘GLOW AND HANDSOME’ mark for the first time on 25th June 2020 and has not commercially used it till date.
On considering the facts and circumstances of the case, Court stated that no harm or prejudice would be caused to the defendant if the limited relief as prayed by the plaintiff is granted.
Plaintiff was granted liberty to renew its application for further reliefs on the adjourned date, after giving notice to the defendant. [Hindustan Unilever Limited v. Emami Limited, 2020 SCC OnLine Bom 764 , decided on 06-07-2020]
