The Calcutta High Court has passed an order restraining FMCG major Hindustan Unilever from passing off its men’s range of skin care products by selling and marketing under “Glow & Handsome”, observing that Emami has been able to make out a “strong prima facie case” on merits as the case of passing off is concerned.

“...there shall be an order in terms of prayer (c) of the Notice of Motion. In view of the fact that the respondent (HUL) has already launched its product, the respondent is granted a month to take necessary steps to comply with this order,” said justice Ravi Krishan Kapur of the Calcutta High Court, while passing the order on April 9.


Notably, Kolkata-based Emami Ltd, the maker of mens’ skincare products under “Fair And Handsome”, had filed a suit around four year ago for infringement and passing off against Hindustan Unilever (HUL), alleging that HUL’s use of the mark “Glow and Handsome” constitutes infringement of its mark “Fair and Handsome”.

Emami’s prayer was a decree of perpetual injunction restraining the HUL from passing off its mens’ grooming, skincare and cosmetic products by selling, marketing and advertising under the mark Glow & Handsome and/or “Handsome”.

Generic term

On behalf of HUL, it was 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 (Emami) 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”. It was also contended that the petitioner had suppressed all filings before the Registry and on that ground alone this application is liable to be dismissed.

“Admittedly, the mark “Fair and Handsome” is being used by the petitioner since 2005, long prior to respondent’s mark “Glow and Handsome” launched in 2020. The petitioner has given prominence to the mark ‘Handsome’ with extensive publicity campaigns and wide advertising...The sale figures of the product of the petitioner are in excess of ₹2,400 crore. A substantial amount has also been spent on advertising. In brief, the mark “Fair and Handsome” is the creation of the petitioner...The respondent has been unable to give any proof of actual use of the mark “Handsome” by any other entity in relation to men’s fairness creams,” the order said.

A conscious and deliberate decision by a competitor in adopting a leading, prominent and essential component of a trade rival while seeking to change the name of its existing brand is not something which can be disregarded, the order observed. “In choosing the word “Glow and Handsome”, there is also an element of taking unfair advantage of a leading, prominent and essential feature of the petitioner’s mark which deceives or is likely to deceive. Nobody has any right to represent the goods of somebody else. In doing so, the rival takes a “free ride”,” it added.

When contacted, an HUL spokesperson said, “The Calcutta High Court has issued an order of injunction for passing-off after almost four years in a suit filed by Emami. We are reviewing the order and will take appropriate action.”