Emami Limited v. Hindustan Unilever Limited

Author: Tejaswita Sahoo, Campus Law Centre, Faculty of Law, University of Delhi

The intellectual property field is an evolving field. Out of the different aspects Intellectual Property covers, trademark protection is an important aspect. The case Emami Limited v. Hindustan Unilever Limited is concerned with principles of trademark infringement and passing off. This case involves two major FMCG companies - Emami Ltd. and Hindustan Unilever Limited (HUL), having a dispute over the trademarks “Fair and Handsome” and “Glow and Handsome”. The case also focuses on whether the mark “Handsome”, despite being a generic name, has acquired distinctiveness or secondary meaning in the fairness cream market. 

Parties involved: 

Plaintiff: Emami Limited, one of India’s leading FMCG (fast-moving consumer goods) companies, owns the brand “Fair and Handsome”. 

Defendant: Hindustan Unilever Limited, another leading FMCG company, rebranded its men’s fairness cream from “Men’s Fair and Lovely” to “Glow and Handsome” in 2020.

Relevant facts:

1. Emami has registered the trademark “Fair and Handsome” for their Men’s skin products in 2005. Emami has been using the mark since that time.

2. Due to rising voices against the stereotypical behaviour promoted by fairness cream products, Hindustan Unilever Limited rebranded its “Fair and Lovely” to “Glow and Lovely” in 2020.

3. This led Emami to file a suit against HUL, alleging trademark infringement and passing off.

4. Emami contended – HUL’s new brand “Glow and Handsome” is deceptively similar to Emami’s “Fair and Handsome”, likely to create confusion among consumers.

Procedural History:

July 2020 – Emami filed a suit against HUL in Calcutta HC, restraining HUL from using the mark “Glow and Handsome”.

July 6, 2020 – HUL filed a suit under Section 142 of the Trademark Act, 1999. The decision of the case HUL v. Emami, was given by Justice BP Colabawalla, Bombay High Court. In this case, HUL obtained an ex-parte interim injunction from Bombay HC, which directed Emami to provide 7 clear working days’ prior written notice before initiating any legal proceedings against HUL concerning the “Glow and Handsome” trademark.

1. Distinctiveness: Whether the mark “Handsome”, despite being a generic name, has acquired distinctiveness or secondary meaning in the fairness cream market. 

2. Trademark Infringement: Whether HUL’s “Glow and Handsome” infringed upon Emami’s registered trademark “Fair and Handsome”.

3. Passing Off: Whether HUL’s use of a similar mark creates deception and confusion in the minds of customers, thereby causing damage to Emami’s goodwill.

Ravi Krishan Kapur J., presiding over the single judge bench in the Calcutta High Court held that –

1. Emami Limited has not acquired distinctiveness over the mark “Handsome” as Emami never registered or marketed it as a standalone mark.  

2. HUL’s use of “Glow and Handsome” did not amount to trademark infringement,

3. It did constitute passing off, because HUL’s deliberate adoption of the prominent and essential “Handsome” feature of the plaintiff’s trademark can cause deception and confusion to customers, potentially harming the plaintiff’s goodwill.

Accordingly, the HC granted an interim injunction restraining HUL from using the mark, “Glow and Handsome”, granting a one-month period for compliance with the order.

1. Whether the mark “Handsome”, has acquired distinctiveness in the fairness cream market.

Emami Limited has been using “Fair and Handsome” for nearly two decades. Emami has extensively promoted the mark in its marketing and promotional efforts.

While “Handsome” is a prominent feature of Emami’s Trademark, it is a descriptive term.

Despite the extensive efforts made by Emami in marketing “Fair and Handsome”, Emami never registered or marketed “Handsome” as a standalone mark.

Also Emami did not provide sufficient evidence to prove that “Handsome” has acquired distinctiveness or obtained a secondary meaning to it. 

2. Whether HUL’s “Glow and Handsome” infringed upon Emami’s registered trademark “Fair and Handsome”.

The respondent Hindustan Unilever Limited’s use of the mark “Glow and Handsome” doesn’t amount to trademark infringement. This is because Emami didn’t have exclusive rights over the word – “Handsome”. 

3. Whether HUL’s use of a similar mark constitutes passing off.

While HUL’s use of “Glow and Handsome” did not amount to trademark infringement, it did constitute passing off, because HUL’s deliberate adoption of the prominent and essential “Handsome” feature of the plaintiff’s trademark can cause deception and confusion to customers, potentially harming the plaintiff’s goodwill.

According to the court, HUL had knowingly used the mark “Handsome” even when it knew that such mark had been extensively used by its competitor.

4. Questioning the conduct of the defendant.

The court questioned the conduct of respondent in cases where HUL had itself obtained injunctions against third parties for using words such as “Fair” and “Lovely”.

HUL’s obtaining injunctions for the words “Fair” and “Lovely” questions whether HUL has monopoly over words like “Fair” and “Lovely” while using the mark “Fair and Handsome”.

If HUL has no such monopoly and marks such as “Fair” and “Lovely” have not obtained any secondary meaning to it, it is questionable as to why HUL can be defended on the grounds of using competitor’s mark “Handsome” in its mark “Glow and Handsome”.

STATUTES AND PRECEDENTS:

Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Del 250.

The Delhi HC held that prior use of a trademark is more important than registration. This means that even if a mark is not registered, the prior user can still prevent others from using it under passing laws. 

Ultratech Cement Limited and Another v. Dalmia Cement Bharat Limited, (2016) SCC OnLine Bom 3574

A mark within the registered trademark cannot be protected if the mark has generic and descriptive usage. In short, trademark registration applies to the entire mark and not upon the mark within the mark.

L’Oréal v. Bellure, (No.2) [2010] EWCA Civ 535.

No one is allowed to represent the goods of somebody else. In doing so, the rival does “free riding”, which is an unfair practice. 

Legal precedent:

It sets the precedent that while descriptive marks are not given protection under Trademark laws, they may be protected through passing-off laws if the mark has acquired a strong market reputation and consumer association. 

Social and Corporate Impact:

This case highlights the commercial value of well-established trademarks like “Fair and Handsome,” demonstrating how descriptive marks can be protected if such marks have a strong connection to consumers’ awareness. While “Glow and Handsome” aimed for inclusivity, the case focused more on brand identity and trademark rights rather than broader social implications.

The court analyses each case based on its facts and circumstances. In this case, the Calcutta High Court perfectly applied the legal principles of distinctiveness, trademark infringement and passing off to their case. 

The court has rightly said that - If a mark within the trademark is generic or descriptive, then that mark cannot be given trademark protection. But using such a descriptive mark by a competitor might not be permitted as it constitutes a passing-off.

While ‘Glow and Handsome’ aimed for a modern and inclusive branding, the court focuses on the legal principles applicable for trademark protection.  

The case Emami Limited v. Hindustan Unilever Limited highlights the principles of distinctiveness and secondary meaning in trademark law, emphasizing that generic terms like “Handsome” cannot acquire distinctiveness. It focuses on how generic terms cannot be monopolized. It reinforces the doctrine of passing off and tells when the principle of trademark infringement may not be applicable. The case also leads us to question how an extensively used mark can have much importance even when the mark ‘Fair’ may be promoting stereotypical behaviour towards using ‘fairness products’ to become fair.

Emami Limited v. Hindustan Unilever Limited, 2024 SCC OnLine Cal 3579