Kolkata: The Calcutta High Court has asked FMCG giant HUL to remove Glow & Handsome products from the shelves within a month following a petition from Emami Ltd about infringement of trademark four years back.
A single bench of Justice Ravi Kapur said while passing the order: “…In view of the fact that the respondent has already launched its product, the respondent is granted a month to take necessary steps to comply with this order.” The Emami prayer sought a decree of perpetual injunction restraining HUL to advertise or sell Glow & Handsome products.When contacted, HUL responded by saying, “The Calcutta High Court has issued an order of injunction for passing-off after almost four years in a suit filed by Emami. We are reviewing the order and will take appropriate action.”
The HC observed that a conscious and deliberate decision by a competitor in adopting a leading, prominent and essential component of a trade rival while seeking to change the name of its existing brand was not something which could be disregarded. “In choosing the word ‘Glow & Handsome’, there is also an element of taking unfair advantage of a leading, prominent and essential feature of the petitioner’s mark which deceives or is likely to deceive. 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,” the order says.
According to the order, up to financial year 2020, total sales of petitioner’s product ‘Fair & Handsome’ had exceeded Rs 2,430 crore. The petitioner has also incurred advertising expenses in excess of Rs 400 crore since 2005. “The registrations in favour of the mark ‘Fair & Handsome’ are long prior to the respondent’s adoption and use of the infringing mark ‘Glow & Handsome’. Admittedly, both the rival products are in the same class of goods. The petitioner also alleges to be the market leader having more than 65% of the share in the men’s fairness cream segment,” it added.
A single bench of Justice Ravi Kapur said while passing the order: “…In view of the fact that the respondent has already launched its product, the respondent is granted a month to take necessary steps to comply with this order.” The Emami prayer sought a decree of perpetual injunction restraining HUL to advertise or sell Glow & Handsome products.When contacted, HUL responded by saying, “The Calcutta High Court has issued an order of injunction for passing-off after almost four years in a suit filed by Emami. We are reviewing the order and will take appropriate action.”
The HC observed that a conscious and deliberate decision by a competitor in adopting a leading, prominent and essential component of a trade rival while seeking to change the name of its existing brand was not something which could be disregarded. “In choosing the word ‘Glow & Handsome’, there is also an element of taking unfair advantage of a leading, prominent and essential feature of the petitioner’s mark which deceives or is likely to deceive. 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,” the order says.
According to the order, up to financial year 2020, total sales of petitioner’s product ‘Fair & Handsome’ had exceeded Rs 2,430 crore. The petitioner has also incurred advertising expenses in excess of Rs 400 crore since 2005. “The registrations in favour of the mark ‘Fair & Handsome’ are long prior to the respondent’s adoption and use of the infringing mark ‘Glow & Handsome’. Admittedly, both the rival products are in the same class of goods. The petitioner also alleges to be the market leader having more than 65% of the share in the men’s fairness cream segment,” it added.
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