TRADEMARK DISPUTE BETWEEN HUL AND EMAMI

Prepared by: Group 20

Abhijeet Srivastava -2022MBA061

Rushita Jain -2022MBA106

Saurabh Aditya -2022MBA110

Prachi Phatangare -2022MBA095

Himanshi Soni -2022MBA079

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Introduction
About Emami

Emami Limited is one of the leading and fastest-growing personal and healthcare businesses in
India, with an enviable portfolio of household brand names such as BoroPlus, Navratna, Fair
and Handsome, Zandu Balm, Mentho Plus Balm, Fast Relief, and Kesh King.
The Company, which was founded in 1974, has a line of more than 300 goods with ayurvedic
ingredients. More than 60 nations are currently covered by Emami's operations, including those
in SAARC, MENAP, SEA, Africa, Eastern Europe, and the CIS nations. Every second, somewhere
in the world, about 150 Emami items are sold. The Group's flagship company, Emami Limited,
reported revenue of Rs. 3192 billion in 2021–2022.

About HUL
Unilever, one of the top manufacturers of food, home care, personal care, and refreshment
goods with sales in more than 190 nations, owns HUL as a subsidiary. HUL was ranked eighth
globally by Forbes and the most innovative firm in India.
The Company is a part of the daily lives of millions of consumers in India thanks to its 50+
brands, which cover categories like fabric solutions, home and hygiene, life necessities, skin
cleansing, skincare, hair care, color cosmetics, oral care, deodorants, tea, coffee, ice cream &
frozen desserts, foods, and health food drinks. Leading household brands like Pond's, Vaseline,
Lakmé, Dove, Clinic Plus, Sunsilk, Pepsodent, Closeup, Axe, Simple, Love Beauty Planet,
TRESemmé, Brooke Bond, Bru, Knorr, Kissan, Kwality Wall’s, Horlicks and Pureit and others are
among its portfolio.

Why did HUL decide to change the name of the product?

Unilever's Indian division announced that it will remove the word "fair" from its "Fair & Lovely"
line of products, which have long come under fire for feeding preconceptions that are
derogatory to those with darker skin.
The decision was made at a time when social media criticism against cosmetics businesses has
been on the rise as a result of the Black Lives Matter movement.
South Asia has a large market for skin-lightening products because of a cultural fascination with
lighter skin tones, however, this belief is increasingly being challenged.
In South Asia, the "Fair & Lovely" brand of Unilever is the market leader .

The Incident's Facts

The dispute started when HUL officially announced that the name of its men's skincare line's
trademark brand, "Fair and Handsome," would be changed to "Glow and Handsome." On July
4th, HUL started using the same moniker in commercial advertisements for the product in
numerous print publications and online. Emami Ltd. allegedly threatened to sue HUL for
violating its trademark rights in media statements in response to the aforementioned
commercials. HUL then brought a lawsuit against Emami under Section 142 of the Trademarks
Act of 1999 in response to Emami's claims. The trademark applications for "Glow and
Handsome" and "Glow and Lovely" were submitted by HUL on September 7, 2018, claims its
attorney.
The trademark application was submitted, in accordance with the council, following a
comprehensive search of the Trademark Register, and this year, in June, HUL applied for the
same trademark on a basis of planned to-be-used. The council additionally testified in court
that it published commercials and made an official announcement after receiving an FDA
license on July 3 to manufacture the product under the brand name "Glow and Handsome." In
the challenged order, the Court noted that since the plaintiff (HUL) had legitimately applied for
the trademark in September and then July, the mark had already been adopted by the plaintiff.
After hearing from all sides, it will be determined whether Emami's words were appropriate.
The case was considered by a division bench of the Bombay High Court made up of Justices VG
Bisht and RD Dhanuka. The bench dismissed the appeal after considering the contested order
and stated that it is not inclined to interfere with the decision made because the Single Bench
directed to list the interim motion for additional relief on July 27th.

Involved Legal Provisions

A person is forbidden from issuing a registered trademark user with irrational threats under
Section 142 of the Trademarks Act, 1999, and in the event that this occurs, the registered
trademark user may obtain an order for an injunction to stop the continuation of such threats
as well as compensation for any damages he may have suffered as a result of such threats.
Therefore, if this complaint can show that Emami's stated threats were false and without
foundation, it may be given relief. The interim injunction from the court also stipulated that
before bringing legal action against HUL, Emami must give HUL a 7-day notice. The defendant
must give the plaintiff a 7-day written notice before starting any legal action involving the
trademark, according to the Bombay High Court's decision in this case.

Based on the aforementioned, it is obvious that in order for HUL to successfully assert a claim, it
must first show that it registered the trademark "Glow and Handsome" before Emami and,
second, that Emami's claims in newspapers were untrue. Emami, however, must prove that
HUL's use of the trademark constitutes trademark infringement and that it was an honest and
prior adaptor of the property.

Conclusion
The Court determined that HUL appeared, at first glance, to have adopted and used the
trademark "Glow & Handsome" first. The Court further declared that the main matter of the
current application was not the determination of whether HUL's use of the mark amounts to an
infringement of Emami's registered trademark "Fair & Handsome."

The court remarked that Emami's application for the trademark "Glow & Handsome"
registration came after HUL's. HUL provided information on its sales figures as well as the
advertising and promotion costs it had incurred for the brand. These facts led the court to favor
giving HUL an ad-interim injunction.

The court concluded its ruling by adding that this ruling would not prevent Emami from filing a
lawsuit in the Calcutta High Court seeking a restraining order against HUL's use of the
trademark "Glow & Handsome." It was also made clear that HUL could not assert any rights
about future uses of the mark "Glow & Handsome."

Reference:
https://www.obhanandassociates.com/blog/all-is-fair-in-trademark-wars/

https://www.mondaq.com/india/trademark/981216/all-is-fair-in-trademark-wars-the-glow-
handsome-saga-continues
https://lexlife68840978.wordpress.com/2020/08/26/analysis-glow-and-handsome-trademark-
dispute/

https://newsmobile.in/articles/2020/07/04/emami-threatens-legal-action-against-hul-for-
using-glow-and-handsome-brand/

Personal Care Products - Emami Company Profile - Emami Ltd

Hindustan Unilever to drop ‘fair’ from ‘Fair and Lovely’ product line - The Hindu

Introduction to HUL | Unilever