The Trademark Tussle: Emami vs HUL in the Glow and Handsome dispute

The Trademark Battle

On 16th July, the Bombay High Court dismissed an appeal filed by Emami Limited against an order passed by the said High Court on 6th July. The order of 6th July by Justice BP Colabawalla gave interim relief to Hindustan Unilever Limited (HUL) by stating that Emami should give seven days of prior written notice before it wants to initiate any legal proceedings over the trademark for ‘Glow & Handsome’ concerning skin lightening products (Hindustan Unilever Limited v. Emami Limited).

HUL filed this suit under Section 142 of the Trade Marks Act, 1999 seeking an injunction to restrain Emami from issuing "groundless threats" with regard to HUL’s use of the phrase ‘Glow & Handsome’ as a trademark for its skincare products. It contended that it is the first adopter and user of the trademark ‘Glow & Handsome’ and that since Emami has not used the said trademark until now, Emami cannot disturb HUL's ‘honest and bonafide use’ of Glow & Handsome. The next hearing of the case is scheduled to be on the 27th of July 2020.

The Start of the Battle

The dispute about this trademark first started when HUL applied for the trademark for 'Glow & Lovely' and 'Glow & Handsome' in September 2018, both of which applications were rejected in 2019. However, the company re-applied for the same in June 2020, and the decision for the same is still pending.

On 2nd July 2020, HUL made an official announcement stating that it’s women-oriented product series ‘Fair & Lovely’ was rebranded as ‘Glow and Lovely’. This change came about after the brand was recently severely criticized for promoting negative stereotypes about darker skin shades. In 2006, HUL had also launched ‘Fair & Lovely, Men’ to tap into the men’s segment. This too was announced to be changed to ‘Glow & Handsome’. Advocate Hiren Kamod, appearing for HUL, told the Court that HUL was granted the requisite FDA License to manufacture its skincare products under the mark 'Glow & Handsome' on July 3rd, 2020. Only post that did HUL commercially advertise its products bearing the disputed trademark 'Glow & Handsome' on virtual and print mediums.

Days after this announcement, Emami issued a press statement threatening legal action against HUL for violating its alleged rights in its mark ‘Emami Glow and Handsome’. This name of the product was the new name after a change from its previous name ‘Fair & Handsome’.

This threat by Emami made HUL take urgent and necessary steps to protect its trademark. It moved an urgent application before the Bombay High Court asserting that HUL had made applications to trademark Glow & Lovely and Glow & Handsome as early as September 2018, before Emami is stated to have filed the trademark applications.