On 9th April, 2024, the Hon’ble Calcutta High Court decided a suit for infringement and passing off filed by Emami Ltd. (hereinafter referred to as “Emami”/ the “Petitioner”) against Hindustan Unilever Ltd. (hereinafter referred to as “HUL”/ the “Respondent”).
The suit revolved around the violation of the Petitioner’s trademark ‘Fair and Handsome’, for its face cream for men. The Respondent used an allegedly deceptively similar mark ‘Glow and Handsome’ in respect of the same products. Emami had been using the mark in relation to men’s skin care products since the year 2005. Emami submitted that the term ‘Handsome’ had acquired significant secondary meaning and was associated with the Petitioner’s products.
The Respondent in response alleged that the word ‘handsome’ was a purely descriptive word and not capable of distinctiveness. It was submitted that “handsome” is a generic word which is used by multiple entities in the market. That being said, the Petitioner was not the only entity with whom the word ‘Handsome’ was associated. Even though the Petitioner had obtained registrations for the mark ‘Fair & Handsome’, the word ‘handsome’ was disclaimed in its registration and the Petitioner had accepted the disclaimer. It was also submitted that Emami was not entitled to claim exclusive right over the individual use of the words ‘Fair’ or ‘Handsome’ and has never used either of these words individually. Their rights were restricted to the exclusive use of the mark ‘Fair and Handsome’ as a whole. In such circumstances, the Petitioner would be estopped from claiming any right to the word ‘handsome’.It was further contended by the Respondent that adoption of the name ‘Glow and Handsome’ was a business decision that was arrived at as a result of an internal decision making process which began in 2018.
The Hon’ble Calcutta High Court while adjudicating the matter observed that, the decision of changing the name and adopting a prominent and significant part of the trademark of a trade rival ought to have been a conscious and deliberate decision. There is an element of taking unfair advantage in the adoption of a mark that deceives or is deceptively similar to the Petitioner’s trademark. The Hon’ble Court also went on to observe that, “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 and impermissible free riding. All ‘free riding’ is unfair.”
The High Court reasoned that a passing-off action can succeed independently of an infringement claim and, estoppel and registrability will not be available as defences. Deception and its likelihood is essential for passing off to be established. Mere substantiating confusion is not sufficient for a passing off claim to sustain. Though both the products have different packaging, the Court emphasised that “an unwary purchaser of average intelligence and imperfect recollection who only remembers the one word “Handsome” is likely to be deceived by the misleading indicia “Handsome” and this has now been intentionally made a cause for confusion and deception.”
It was also observed that, Emami had made substantial investment and dedication in building its brand ‘Fair and Handsome’ therefore,there remains a high possibility of damage to the Petitioner’s business and goodwill resulting from such misrepresentation.
It was further noted that, the Respondent’s only explanation to adoption of ‘Glow and Handsome’ was that it was an internal decision following a global announcement made by their parent company Unilever PLC., that “it was taking a step in the evolution of its skin care portfolio to a more inclusive vision of beauty which includes the removal of words “fair/ fairness”, “white/ whitening” and, “light/ lightening” from its products’ packaging and advertisement and that as a part of that decision, the name “Fair & Lovely” was changed to “Glow and Lovely”. The Respondent was unable to furnish any proof of actual use of the mark “Handsome” by any other entity in relation to men’s fairness creams.
The Hon’ble Court relied upon the long usage, registrations, sales, and promotions for the mark ‘Fair and Handsome’ and arrived at the conclusion that the mark ‘Fair and Handsome’ was a creation of the Petitioner and that it was a result of considerable investment made by them. The two main components of Emami’s registered mark are the words ‘Fair’ and ‘Handsome’.Therefore, undoubtedly, the word ‘handsome’ was an important element and a leading feature of Emami’s trademark. The High Court went on ahead to state that HUL, being fully aware of all the consequences had launched its product at its own risk.
Finally, an interim-relief was granted to the Petitioner and the Hon’ble Calcutta High Court passed an order restraining HUL from using the ‘Glow and Handsome’ mark being deceptively similar and potentially passing off their products as those of Emami.
ANALYSIS
Though the Courts base their decisions on law and legal principles, each case comes bearing its own facts. The Courts analyse each case based on its own merits. The Hon’ble Calcutta High Court has adjudicated the present case by perfectly balancing the application of legal principles and consideration of the special circumstances of this case. The Hon’ble Court rightly held that no infringement can be claimed in respect of a disclaimed part of the mark. It is a fact that the Petitioner’s registration over ‘Fair and Handsome’ was based on the disclaimer that no exclusive right would be claimed over the words ‘Fair’ or ‘Handsome’ since both of them fit into the definition of descriptive terms in respect of fairness creams for men. Disclaiming a part of the mark, the Petitioner can use the disclaimed part in respect of its own trademark, however cannot stop any third party from using the same. The Court applied the principle of ‘History of Prosecution Estoppel’ and reasoned that once the Petitioner had forgone the rights of claiming exclusivity over individual words used in their mark, it was not entitled to claim infringement under the light of the same right over the word ‘Handsome’ used individually.
However, though estoppel can restrict the claim of infringement, passing off does not fit in the same parameters. Considering the long-standing presence of the Petitioner in the market, it was entitled to claim passing off against the Respondent. Also, the manner in which the Respondent used the word ‘Handsome’ closely resembled the manner in which it was used by the Petitioner. Another factor that added to the Respondent’s woes was the lack of explanation on the part of the Respondent regarding the “hasty” adoption of the impugned mark. The Court rightly identified these lacunae in the pleadings of the Respondent while passing an order in favour of the Petitioner.