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2024 Supreme(Cal) 203
IN THE HIGH COURT AT CALCUTTA
RAVI KRISHAN KAPUR, J.
Emami Limited – Plaintiff
Versus
Hindustan Unilever Limited – Defendant
IA No. GA/2 of 2020 (Old No. GA/910 of 2020), CS-COM No. 189/2024 (Old No. CS/62 of 2020)
Decided On : 09-04-2024
Advocate Appeared:
For the Plaintiffs : Ranjan Bachawat, Debnath Ghosh, Sanjay Ginodia, Adreeka Pandey, Satyaki Mukherjee, Mini Agarwal.
For the Defendants : S.N. Mookherjee, Ratnanko Banerji, Arunabho Deb, Soumabho Ghose, Deepan Kumar Sarkar, Ashika Daga, Arti Bhattacharyya, Jishnujit Roy, Aayush Lakhotia.
IMPORTANT POINT
The central legal point established in the judgment is the significance of distinctiveness and secondary meaning in determining infringement and passing off under the Trade Marks Act, 1999, and the court's emphasis on the intentional adoption of a leading feature of a competitor's mark as unfair and likely to deceive.
Headnote:
Infringement - Men's Skin Products - Trade Marks Act, 1999, Sec. 2(1)(zb), Sec. 29(1) - The court discussed the distinctiveness and secondary meaning of the word 'Handsome' in the petitioner's mark 'Fair and Handsome' and its use in the respondent's mark 'Glow and Handsome'. The court also considered the principles of distinctiveness and secondary meaning as per legal precedents and the respondent's conduct in adopting the impugned mark.
Fact of the Case:
The petitioner claimed infringement and passing off due to the respondent's use of the mark 'Glow and Handsome', alleging deceptive similarity to the petitioner's mark 'Fair and Handsome'. The petitioner highlighted its prior use, extensive advertising, and market leadership. The respondent contended that 'Handsome' is descriptive and the petitioner's disclaimer of the word 'Handsome' in its registration estopped it from claiming rights over the word.
Finding of the Court:
The court found that the petitioner had extensively promoted and used the mark 'Fair and Handsome' since 2005, establishing its distinctiveness and secondary meaning. It held that the respondent's adoption of 'Glow and Handsome' with knowledge of its competitor's mark was likely to deceive and cause damage to the petitioner's goodwill.
Issues: The issues revolved around the distinctiveness and secondary meaning of the word 'Handsome', the respondent's conduct in adopting the impugned mark, and the likelihood of deception and damage to the petitioner's goodwill.
Ratio Decidendi: The court emphasized the importance of distinctiveness and secondary meaning in determining infringement and passing off. It considered the respondent's intentional adoption of a leading feature of the petitioner's mark as unfair and likely to deceive. The court also highlighted the principles of distinctiveness and secondary meaning as per legal precedents.
Final Decision: The court allowed the petitioner's claim for infringement and passing off, granting relief in terms of the Notice of Motion and directing the respondent to comply with the order within a specified timeframe.
JUDGMENT :
RAVI KRISHAN KAPUR, J.
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 crores. The petitioner has also incurred advertising expenses in excess of Rs. 400 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 Another, 2014 SCC Online Del. 1953, Telecare Network India Pvt. Ltd. vs. Asus Technology Pvt. Ltd. 2019 SCC Online Del. 8739, H&M Hennes and Mauritz AB and Another vs. HM Megabrands Pvt. Ltd. and Others, 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).
4. On behalf of the respondent, it is contended that the mark “Handsome” is purely descriptive and incapable of any distinctiveness. “Handsome” is a generic term also used by other competitors in the industry. In any event, “Handsome” is not exclusively identified with the petitioner and the petitioner has never used the mark “Handsome” as a standalone mark. In fact, while obtaining registration of the mark “Fair and Handsome” a disclaimer had been granted to the petitioner insofar as the word “Handsome” is concerned. In such circumstances, the petitioner is estopped from claiming any right in the word “Handsome.” In any event, on the principle of prosecution history estoppel, the petitioner is disentitled to claim any right in respect of the word “Handsome.” It is also contended that the petitioner has suppressed all filings before the Registry and on that ground alone this application is liable to be dismissed. In support of their contentions, the respondent relies on Living Media India Ltd. and Another vs. Alpha Delcom Pvt. Ltd. and Others, (2014) 3 High Court Cases (Del) 248, Mankind Pharma Ltd. vs. Chandra Mani Tiwari and Others, 2018 (75) PTC 8 (Del)
