Calcutta HC bars HUL from using ‘Glow & Handsome’ mark

The court has granted HUL a month to take the “necessary” steps to comply with the order passed on 9 April.

In a statement, a spokesperson for HUL said the Calcutta HC has issued an order of injunction for passing-off after almost four years in the suit filed by Emami. “We are reviewing the order and will take appropriate action.”

The move follows a 2020 dispute between the two companies after HUL renamed its men’s fairness cream brand to ‘Glow & Handsome’ which bears a similarity to Emami’s ‘Fair & Handsome’ brand of men’s personal care products.

Emami had then filed a suit against HUL alleging infringement and challenging the latter’s use of the ‘Glow & Handsome’ mark.

“It is alleged that the respondent’s use of the mark ‘Glow and Handsome’ constitutes infringement of the petitioner’s mark ‘Fair and Handsome’. ‘Glow and Handsome’ is deceptively similar to the petitioner’s registered mark. ‘Handsome’ being a prominent, leading, and essential feature of the petitioner’s mark, has also acquired distinctiveness and a secondary meaning. Being a prior user and the first in the men’s fairness cream segment, the adoption and use of the mark ‘Glow and Handsome’ is therefore misleading and deceptive,” the court said in its order, a copy of which has been seen by Mint.

According to the order, Emami has been able to make out a strong prima facie case on merits insofar as the matter of passing-off is concerned.

In 2020, HUL changed the name of its skin care brand from ‘Fair & Lovely’ to ‘Glow & Lovely’, after deciding to drop the word ‘fair’ from its brand of personal care products to make it more inclusive. Subsequently, its men’s range was renamed ‘Glow & Handsome’.

Emami’s Fair & Handsome was originally launched in 2005, a year before HUL’s entry into the segment. Till financial year 2020, Fair & Handsome reported total sales of over ₹2,430 crore. Emami has spent over ₹400 crore since 2005 to advertise and market the brand.

“The registrations in favour of the mark ‘Fair and Handsome’ are long prior to the respondent’s adoption and use of the infringing mark ‘Glow and 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,” according to the order.

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Published: 11 Apr 2024, 12:21 AM IST