Introduction
Hindustan Unilever Limited (HUL), a subsidiary of British-Dutch multinational company Unilever PLC and the home-grown Kolkata-based FMCG firm Emami have a history of trademark conflicts and defaming each other in in ads and marketing strategies. In some some of the cases, Emami has had the upper hand as it has also always enjoyed a greater market share which is currently over 65% with respect to the men’s fairness cream category. However, on this occasion HUL has taken the leap and moved ahead. According to a research carried out by “Research and Markets (PR Newswire Association LLC)”, the women’s fairness cream category is anticipated to achieve market revenues of more than Rs. 5,000 crore by year 2023. Rising supremacy of media and entertainment, constant pestering by the society to look well groomed all the time, inferiority complex from colleagues at workplace, the yearning to try out new products launched in the country, rise in number of young population, etc are some of the factors which has driven the market of women’s fairness cream market in the last decade or so.
Background
Recently, the move by HUL to rebrand its bestselling skin lightening cream — “Fair & Lovely”, and by removing the terms fair, white and light from its brand packaging has come too late (based on the idea of better-late-than-never and not inculcating proactive attitudinal change) and after successfully feeding the minds of millions of Indians in equating fair skin with beauty. US healthcare and FMCG giant Johnson & Johnson (J&J) followed suit and decided to stop the sale of its skin-whitening creams globally, including India. Also, french personal care maker the L’Oreal Group has decided to make a change and and remove the tags like ‘white’, ‘fair’, ‘light’ from its skincare range.
It is to be noted here that atleast they’ve realized and have made a conscious decision to change and rebrand their products. A big chunk of the change of perception stems from the #BlackLivesMatter movement and we are thankful for the traction it got around the world in turn encouraging many corporations to re-assess their business model and marketing policies for the better in identifying discrimination, racial slur and inequality after the death of George Floyd in the United States.
A fair-skin obsession in a country of more than a billion people where the majority of people are brown (so as to say) has been a lifelong grooming in selfloathing and discrimination. However, these brands are not the only guilty ones, Indian film industry, our ancestors – all have at some point in time have continuously reminded us to focus our energies on being fair and in turn inculcating the significance of beauty and attractiveness.
The Recent Trademark Tussle
Coming back to case at hand, HUL has been on the hunt to find an appropriate name in order to rebrand its products “Fair and Lovely” since September, 2018. To cut the long story short – there have been two point of contentions that need to be discussed – Firstly, the question of ownership (prior user, prior adopter and so on and so forth) of the trademark in question “Glow and Handsome” and secondly – whether the use of “Glow and Handsome” constitutes unfair business practices and advertising?
In Hindustan Unilever Limited (Plaintiff) v. Emami Limited (Defendant), Hon’ble Justice B.P. Colabawalla of the Bombay High Court on 6th July, 2020 via video-conferencing granted an ad-interim injunction (to maintain status quo) in favor of Hindustan Unilever Limited (HUL) with respect to use of the ‘Glow & Handsome’ trade mark. HUL approached the Bombay High Court under Section 142 of the Trade Marks Act, 1999 (which prohibits groundless threats of legal proceedings against holders of registered trademarks) seeking an injunction against Emami.
The plaintiff argued that Emami’s claim of proprietorship over the ‘Glow & Handsome’ mark was false and misconceived and that HUL was the prior adopter and user of the marks. The Plaintiff also contended that on 7th September 2018, after conducting a pre-filing search in the Register of Trade Marks, they independently and honestly coined and adopted the trade marks ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ in respect of its skin care products. Furthermore, to secure its statutory rights in the ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ marks, the Plaintiff filed multi-class applications bearing Nos. 3938924 and 3938925 in classes 3 and 5, respectively, on 7th September 2018 on proposed-to-be-used basis. However, after the examination of the multi-class application as filed, a Preliminary Examination Report dated 10th October 2018 in respect of the Plaintiff’s mark ‘GLOW & HANDSOME’ bearing application No. 3938925 was issued and the Registrar of Trade Marks raised an objection under Section 9(1)(a) of the Trade Marks Act, 1999 (Absolute Grounds for refusal – lack of distinctiveness). Subsequently, the Plaintiff filed its Reply to the Examination Report on 29th October 2018 and upon further examination, the Registrar of Trade Marks vide its order dated 26th Holy, 2019 refused registration of the Plaintiffs mark ‘GLOW & HANDSOME’ bearing application No. 3938925. It should be noted here that the Plaintiff has preferred an appeal against the said decision of the Registrar of Trade Marks before the Intellectual Property Appellate Board, wherein the appeal is pending.
It is pertinent to mention here that the Plaintiff had recently filed another set of trade mark applications bearing nos. 4534961 dated 17th June, 2020 and 4544086 dated 25th June, 2020, both in classes 3 and 5 seeking registrations of the trade mark labels ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ on proposed-to-used-basis.
Further, on 2nd July 2020, the Plaintiff made an official announcement that its trade mark/brand ‘FAIR & LOVELY’ is to be rebranded as ‘GLOW & LOVELY’ for its skin care range of products and the skin care range of FAIR & LOVELY products for men will be called as ‘GLOW & HANDSOME’ via social media and newspapers. Thereafter, Emami gave statements in various newspapers inter alia threatening to adopt legal action against HUL for violating the Defendant’s alleged rights in its mark ‘EMAMI GLOW AND HANDSOME’.
After perusing the evidence presented, the Judge noted that prima facie HUL appeared to be the prior user of the marks and granted the interim relief sought by the plaintiff. The Hon’ble single judge passed an ad-interim order in terms of prayer clause (a) of the Interim Application, which reads as follows:
“(a) that pending the hearing and final disposal of the suit, the Defendant, its directors, proprietors, partners, owners, servants, subordinates, representatives, dealers, agents and all other persons claiming under it be directed by this Hon’ble Court to give atleast 7 clear working days prior written notice to the Plaintiff at the Plaintiff ’s advocates’ address before initiating any proceedings including legal proceedings in any court or claiming any interim or ad-interim reliefs against the Plaintiff as threatened in the statements issued / made on behalf of the Defendant against the Plaintiff ’s use of the trade mark ‘GLOW & HANDSOME’.”
The above interim application was thus listed for further reliefs on 27th July 2020.
In India, the ownership of a trademark is determined on a first-to-use basis as per Section 34 of the Trade Marks Act, 1999. The principle of “Priority in adoption and use prevails over priority in registration” and thus is usually applied in these circumstances (legal milieu that a corporation can get when it’s first to launch or commercially launch its products in the market). Further, any entity that can establish ownership over a trademark by using the mark in the course of its trade and by substantiating upon its prior commercial use of the mark (marketed and sold) by adducing evidence such as extensive publicity and promotion via social media presence, print media, invoices, expenditure incurred, etc. and in such a way that the public associates the trademark with that of the prior user of the trademark – shall prevail as per trademark law.
Further, on 16th July, 2020, Emami (Appellant) preferred an ad-hoc appeal to vacate the order passed by the Hon’ble single judge on 6th July, 2020. To this effect, Hon’ble Justices R.D. Dhaka and V.G. Bisht, reiterated the position taken by the Hon’ble single judge and decided not to interfere with the order as passed.
Ultimately, on the July 27th, 2020, the matter came up for hearing before the single judge via video conferencing, Emami contented that the order dated 6th July, 2020 is contrary to provisions laid out in Section 142 and more particularly sub-section 2 thereof which clearly states that Section 142 (1) shall not apply if the registered proprietor of the trademark or the registered user acting in pursuance to sub-section (1) of Section 52, with due diligence, commences and prosecutes an action against the person threatened for infringement of the trademark. Perusing the said provision, the learned single judge modified its order dated 6th July, 2020 and was of the view and directed that the defendant shall give 5 days notice to the plaintiff if they choose to move for any ad-interim/ interim relief in any other proceedings initiated in a Civil Court (other than the proceeding already filed/ initiated in the High Court of Calcutta), in relation to the trade-mark “GLOW & HANDSOME”.
Key Takeaways
The question which comes to my mind is whether by dropping a word and claiming to be innocent in the eyes of public while selling the same product for years altogether undo the harm it has done or will it be preventing further damage by substituting mere terms in their products? Will it be able to undo the pervasive stigma of having a darker skin and its uncontrollable perception around it taste success in removing these so-called barriers constantly being advertised by these brands over the years?
Some of the steps that can be adopted by Corporations, Business owners, Consumers, Govt. etc. advancing towards inclusivity and evolving into an all-embracing culture are delineated as follows:
Businesses should not wait for launch or release of its products/ services and file for trademarks beforehand;
Implementation of the Drugs and Magic Remedies (Objectionable Advertisements) (Amendment) Bill, 2020 in the near future;
Global cohesion against racism and obsession of fair skin colour;
Stringent penalty against those who discriminate on the basis of skin colour;
Conscious and Responsible Advertising anticipating change in society and bringing about reforms cyclically;
Generic names such as night, fair, white, etc. with respect to skin care products to be struck-off; and
Consumers should read label of products before purchasing any skin care brand.
Adv. Yashvardhan Rana is Intellectual Property Lawyer attached to the office of Inttl Advocare.
