{"id":110884,"date":"2024-06-13T19:54:45","date_gmt":"2024-06-13T14:24:45","guid":{"rendered":"https:\/?p=110884"},"modified":"2025-07-08T17:28:28","modified_gmt":"2025-07-08T11:58:28","slug":"emami-vs-unilever-trademark-passing-off-handsome-case","status":"publish","type":"post","link":"https:\/\/www.bananaip.com\/intellepedia\/emami-vs-unilever-trademark-passing-off-handsome-case\/","title":{"rendered":"Emami vs Unilever : Court says No \u201cGlow&#8221; to Unilever&#8217;s &#8220;Handsome&#8221;"},"content":{"rendered":"<h4>FACTS<\/h4>\n<p>The Petitioner, Emami Ltd., registered and has been using its mark \u2018Fair and Handsome\u2019 since 2005 for men\u2019s skincare products. Emami also had word and label registrations over the variants of the \u2018Fair and Handsome\u2019 mark like \u2018Hi Handsome\u2019 and \u2018Active Handsomeness\u2019 and a few others. Emami gave prominence to the mark \u2018Handsome\u2019 in its publicity campaigns and advertisements by spending over Rs. 400 crores since 2005. The Respondent, Hindustan Unilever Ltd., adopted the mark \u2018Glow and Handsome\u2019 in 2020 for its men\u2019s skincare cream that competed in the same category as Emami.<\/p>\n<p>&nbsp;<\/p>\n<h4>EMAMI\u2019s GROUNDS<\/h4>\n<p>Emami filed a suit for infringement and passing off against Unilever for its use of the mark \u2018Glow and Handsome\u2019. Emami filed the suit on four grounds:<\/p>\n<ol>\n<li>Unilever\u2019s \u2018Glow and Handsome\u2019 was deceptively similar to Emami\u2019s registered trademark \u2018Fair and Handsome\u2019.<\/li>\n<li>Unilever aimed to mislead the average consumer and harm Emami\u2019s brand and market position.<\/li>\n<li>Emami claimed that Unilever\u2019s mark had infringed upon its mark as the word \u2018Handsome\u2019 had acquired a distinctive and secondary meaning due to its market share of over 65 per cent, goodwill and reputation established, since 2005.<\/li>\n<li>Unilever had obtained similar injunctions against other parties for using the Marks \u2018Fair\u2019 or \u2018Lovely\u2019 alone.<\/li>\n<\/ol>\n<p>&nbsp;<\/p>\n<h4>UNILEVER\u2019s CONTENTIONS<\/h4>\n<p>Unilever defended its stance in response by stating that:<\/p>\n<ol>\n<li>The word \u2018Handsome\u2019 in Emami\u2019s mark \u2018Fair and Handsome\u2019 was purely generic and descriptive and incapable of any distinctiveness.<\/li>\n<li>Emami had never used \u2018Handsome\u2019 as a standalone mark.<\/li>\n<li>Emami is barred by the principle of prosecution history estoppel from claiming rights over the word \u2018Handsome\u2019 which it had disclaimed at the time of registration.<\/li>\n<li>\u2018Glow and Handsome\u2019 was the result of an overall companywide shift away from \u2018Fair &amp; Lovely\u2019 towards a more inclusive version of beauty and that such a decision-making process had begun in 2018.<\/li>\n<\/ol>\n<p>&nbsp;<\/p>\n<h4>COURT\u2019S ANALYSIS<\/h4>\n<h5>A.\u00a0\u00a0 Infringement<\/h5>\n<p>The Court noted that words and terms that are prima facie descriptive could, in certain cases, acquire a secondary meaning. However, if the mark in question itself is used in a generic or descriptive manner, it would be strong evidence of generic-ness. The Court referred to the case of People Interactive (India) Pvt. Ltd. Vs Vivek Pahwa, which held that generic terms could never acquire distinctiveness or secondary meaning. The Court made two observations in this regard:<\/p>\n<ul>\n<li>Emami neither registered \u2018Handsome\u2019 as a standalone mark nor did it use it in such a manner.<\/li>\n<li>Emami had, at the time of registration, adopted the disclaimer that it would never assert rights over \u2018Fair\u2019 or \u2018Handsome\u2019 themselves.<\/li>\n<\/ul>\n<p>Based on these two observations, the Court held that there was no merit in the case of infringement.<\/p>\n<h5>B.\u00a0\u00a0\u00a0 Passing Off<\/h5>\n<p>The Court applied the classic trinity test where reputation, misrepresentation and damage to goodwill are the essential ingredients in order to succeed in an action for passing off. The Court noted that a conscious and deliberate decision made by a competitor to adopt a leading, prominent and essential component of a trade rival while seeking to change the name of its existing brand could not be disregarded. The Court also mentioned that a consumer of average intelligence and imperfect recollection who only remembers the one word \u201cHandsome\u201d is likely to be deceived by the misleading indicia \u201cHandsome\u201d. The deception and misrepresentation created by Unilever could be reasonably foreseeable damage to Emami&#8217;s business and goodwill.<\/p>\n<p>With respect to passing off, the Court made the following observations.:<\/p>\n<ul>\n<li>Unilever\u2019s use of the mark \u2018Glow and Handsome\u2019 was a conscious and deliberate decision for passing off its product as Emami\u2019s.<\/li>\n<li>Unilever could not give a satisfactory response to why it adopted the word \u2018Handsome\u2019 when the same had been rejected in its attempt to register the mark in 2018.<\/li>\n<li>Unilever, as a rival competitor in the same segment, also had an obligation to ensure its product would not deceive or infringe on the rights of Emami\u2019s marks.<\/li>\n<li>Unilever had also agreed not to use \u2018Fair\u2019 or \u2018Lovely\u2019 separately, however, multiple injunctions were still obtained for the same.<\/li>\n<li>Emami had also approached the Court immediately upon Unilever launching its product, and therefore, there was no delay in approaching the Court.<\/li>\n<\/ul>\n<p>&nbsp;<\/p>\n<h4>COURT ORDER<\/h4>\n<p>The Court concluded that although Emami had not been able to establish a case for infringement it had established a prima facie case for passing off. The Court stated that it is well settled, that an action in passing off could succeed even when a claim for infringement had failed. Hence, the Court passed an order against passing off as prayed for by Emami, and Unilever was given one month to comply with the order.<\/p>\n<p>&nbsp;<\/p>\n<p style=\"font-weight: 400;\"><em>Citation: <a href=\"https:\/\/indiankanoon.org\/doc\/73876806\/\" target=\"_blank\" rel=\"noopener\">Emami Limited v Hindustan Unilever Limited<\/a> decided by Calcutta High Court on 9<sup>th<\/sup> April 2024, CS-COM\/189\/2024 (Old case no. CS\/62\/2020)<\/em><\/p>\n<p>&nbsp;<\/p>\n<p><span style=\"text-decoration: underline;\">Authored by Ms. Kavya Sadashivan, Consulting &amp; Strategy Team, BananaIP Counsels.<\/span><\/p>\n<p><span style=\"text-decoration: underline;\">Reviewed and confirmed by Ms. Naika Salaria, Trademark Team, BananaIP Counsels.<\/span><\/p>\n<p>&nbsp;<\/p>\n<h4>Disclaimer<\/h4>\n<p>The case note\/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.<\/p>\n<p>If you have any questions, or if you wish to speak with a <a href=\"https:\/trademarks\/\">Trademark Attorney<\/a>, please reach us at: <a href=\"mailto:contact@bananaip.com\">contact@bananaip.com<\/a> or 91-80-26860414\/24\/34.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>The Calcutta High Court examined Emami\u2019s claims against Unilever over the use of &#8220;Handsome&#8221; in skincare branding. While trademark infringement was not established, the Court found grounds for passing off and ordered Unilever to cease using the contested mark.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":47,"footnotes":""},"categories":[5495,6,11],"tags":[5531,5997,12068,12069,7360,1160,41,6001],"class_list":["post-110884","post","type-post","status-publish","format-standard","hentry","category-case-reviews","category-intellectual-property","category-trademarks","tag-calcutta-high-court","tag-emami","tag-fair-and-handsome","tag-glow-and-handsome","tag-indian-ip-law","tag-passing-off","tag-trademark-infringement-2","tag-unilever"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/110884","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=110884"}],"version-history":[{"count":3,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/110884\/revisions"}],"predecessor-version":[{"id":144388,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/110884\/revisions\/144388"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=110884"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=110884"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=110884"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}