The Hon’ble High Court of Bombay vide an ex – parte order dated 06.07.2020 granted interim relief to Hindustan Unilever Limited and restrained Emami Limited from initiating any legal proceedings against the former, in respect of using the trademark “GLOW & HANDSOME”.
The said order was passed in response to a suit filed under Section 142 of the Trade Marks Act, 1999 by Hindustan Unilever Limited seeking injunction against the Defendant/Emami Limited from issuing threats to initiate legal proceedings against the Plaintiff in respect of the use of its trade mark “GLOW & HANDSOME”.
Mr. Hiren Kamod, Counsel for the Plaintiff sought an ad-interim relief from the Hon’ble High Court demanding a minimum of seven day prior written notice to the Plaintiff before initiating any legal proceedings in any court or seeking any interim or ad interim reliefs against the Plaintiff.
Mr. Kamod submitted that the Plaintiff had after conducting a search in the Register of Trade Marks, independently and honestly coined and adopted the trade marks ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ in respect of its skin care products on 07.09.2018. To secure statutory rights of the same, the Plaintiff had filed multiclass applications after which the Registrar of Trade Marks raised an objection under Section 9(1)(a) of the Trade Marks Act, 1999 as per his Preliminary Examination Report dated 10.10.2018. Even after filing its reply to the Registrar’s objection, the Registrar of Trade Marks refused registration of the Plaintiff’s mark ‘GLOW & HANDSOME’ bearing application No.3938925.
It was further submitted that the Plaintiff has also filed an appeal against the said decision of the Registrar before the Intellectual Property Appellate Board and is awaiting decision of the Appellate Board.
The Plaintiff had on 02.07.2020 officially announced that its trade mark / brand ‘FAIR & LOVELY’ was rebranded as ‘GLOW & LOVELY’ and “GLOW & HANDSOME” for its skin care range of products for women and men respectively, and thereby was granted its FDA License to manufacture its skin care products under the mark “GLOW & HANDSOME” on 03.07.2020.
The Plaintiff submitted that it was after the said announcement of their rebranding, that the Defendant started issuing statements vide various newspapers threatening to adopt legal action against the Plaintiff for violating the Defendant’s alleged rights in its mark ‘EMAMI GLOW AND HANDSOME’.
Mr. Hiren Kamod contended that the statements issued by the Defendant were unjustifiable and groundless within the meaning of Section 142 of the Trade Marks Act, 1999. He submitted that the Defendant’s claim of proprietorship over the marks ‘GLOW AND HANDSOME’ / ‘EMAMI GLOW AND HANDSOME’ was false and misconceived and that the Plaintiff was the prior adopter and user of the said trade mark.
After taking note of the merits of the present matter, Justice B.P. Colabawalla stated as follows:
- Having filed its trade mark application in September 2018 and subsequently on 25.06.2020 for the mark ‘GLOW & HANDSOME’, the Plaintiff cannot be considered as the prior adopter of the said trademark.
- The Defendant has adopted the ‘GLOW AND HANDOME’ mark for the first time on 25.06.2020 and has not commercially used it till date.
- The statements made by the Defendant and published in various newspapers did not amount to a threat, and whether the threats were groundless and unlawful in nature shall be decided after hearing both the parties.
- No harm would be caused to the Defendant if the said limited relief was granted to the Plaintiff.
Therefore, while granting the ad interim relief to the Plaintiff, the Hon’ble High Court held as follows, “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 at least 7 clear working days prior written notice to the Plaintiff at the Plaintiff’s advocates’ address at 91-92, 9th Floor Sakhar Bhavan, Nariman Point, Mumbai – 400021 by registered post acknowledgement due (R.P.A.D) including the email address email@example.com and firstname.lastname@example.org 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.”