EMAMI LIMITED Vs. HINDUSTAN UNILEVER LIMITED

JUDGEMENT

(1.) This is a suit for infringement and passing off.

(2.) The petitioner is the proprietor and the prior user of the mark 'Fair and Handsome' used in relation to men's skin products. The petitioner has secured various registrations for the word mark as well as the label mark 'Fair and Handsome' both in India and abroad. The petitioner's registered marks include 'Fair and Handsome' and variations thereof as well as 'Hi Handsome' and 'Activate Handsomeness'. These also include both word and label mark registrations without disclaimers or conditions. It is alleged that 'Handsome' is a prominent and essential feature of the petitioner's trademark and has been used since 2005. The total sales of the petitioner's product 'Fair and Handsome' upto the financial year 2020 had exceeded Rs.2,430.00 crores. The petitioner has also incurred advertising expenses in excess of Rs.400.00 crores since 2005 in respect of its product 'Fair and Handsome'. 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.

(3.) 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. There is a likelihood of causing deception and misrepresentation in the respondent using the word 'Handsome'. The petitioner also contends that the respondent being the user of its mark 'Fair and Lovely", has obtained injunctions against different third parties from using the mark 'Fair' alone or 'Lovely' alone. In support of such contentions, the petitioner relies on Satyam Infoway Limited vs. Siffynet Solutions Private Limited (2004) 6 SCC 145, South India Beverages Private Limited vs. General Mills Marketing Inc and Anr. 2014 SCC OnLine Del 1953, Telecare Network India Pvt. Ltd. vs. Asus Technology Pvt. Ltd. 2019 SCC OnLine Del 8739, H and M Hennes and Mauritz AB and Anr. vs. HM Megabrands Pvt. Ltd. and Ors. 2018 SCC OnLine Del 9369, Shailputri Media Private Limited vs. ARG Outlier Media Asianet News Private Limited 2020 SCC OnLine Cal 560 and Pidilite Industries Limited vs. Jubiliant Agri and Consumer Products Limited 2014 15 PTC 617 (BOM).