Your brand name portrays what you stand for; when what you stand for doesn’t suddenly sit well with society, that’s trouble. You’d be in the position of needing to change your brand name in a competitive market without losing the hold that you have already established.
After the global outrage against fairness creams that propagate racial biases, companies in India have been on a name changing spree. One of the biggest brands in India, Fair and Lovely, decided to change its name to reflect its commitment to equality. This name change did not sit well with one of Fair & Lovely’s biggest competitors – Emami. In this article, we trace the origins of this landmark trademark dispute that has emerged after Emami threatened to file a trademark infringement against Unilever.
From ‘Fair & Lovely’ to ‘Glow & Lovely’ – a Name Change That May Not Be So Fair
Hindustan Unilever recently announced that it is going to drop all words deepening prejudices. They are such as “fair”, “light”, and “white” from its advertising as well as its branding campaign. Unilever reportedly earns $500 million annually from sales of Fair & Lovely solely in India. Countries in Africa, West Asia also constitute some of its biggest markets.
Unilever is one of the biggest players in the men’s grooming market, tapping huge numbers from its sale of fairness creams for men. Hindustan Unilever reportedly has more than 80% share of the overall ₹3,000 crore fairness cream market in India.
The death of George Floyd in the US has had wide ramifications, including the questioning of societal constructs that deem ‘fair” skin colour as a superior attribute. As brands increasingly realise their social importance, Unilever launched a massive campaign against discrimination emanating from skin colours and decided to rename its product line “Fair & Lovely” to “Glow & Handsome”.
Why Is Emami Protesting Against the Name Change?
Emami is a personal health and beauty brand that is engaged in Indian, African, and SAARC markets. It has a wide range of over 300 products and reportedly recorded a turnover of ₹2,655 crores in 2019-20. Emami roped in Shahrukh Khan in 2007 as the ambassador of its men’s fairness cream “Fair & Handsome” and advertised it as the first exclusively men’s fairness cream in India.
Emami is alleging that Hindustan Unilever deliberately adopted a brand name that is likely to confuse consumers. It has been selling its fairness cream for men under the name “Fair and Handsome”. After the Black Lives Matter movement, Emami also announced changing its name to “Glow and Handsome”. Thereby, leading to a clash over trademark ownership.
All trademarks, logos, tag lines, names, slogans go on to establish the intellectual worth of a company. This wholesome combination adds to brand value and customer retention. This is indicative of a certain degree of quality and origin.
So Who Is Likely to Succeed in the Case?
While it is too early to say which side is likely to win, the general rule in trademark law is that priority in using the mark prevails over priority in registration. Regardless, the court noted that it does appear prima facie that HUL filed a trademark application with the name “Glow & Handsome” in September 2018 and later in June 2020. Hindustan Unilever also started using the new mark in its commercial advertisements and various press communique, while Emami had not.
It is important to note that trademark disputes are often decided in favour of a party that starts using the mark first. While Emami has threatened Hindustan Unilever with legal proceedings, in the event of a lawsuit it will have to establish that it started using the mark first or had filed for registration before Hindustan Unilever’s filing for “Glow and Handsome”.
The legal outcome of this crucial case will set precedent on how a proprietor can secure first rights over a trademark. The decision would hold practical solutions to the classic tussle between first use versus first to register the trademark.
No Actual Suit Instituted – How to Deal With Trademark Infringement Threats
In this case, Emami has only sent a legal notice with the allegation of trademark infringement. It hasn’t instituted a legal suit yet. However, Hindustan Unilever has applied for an injunction from the Bombay High Court. This is under Section 142 of the Trademarks Act, 1999. This section provides relief to a person who receives groundless and unjustifiable threats of legal proceedings. These threats may be in the form of a circular, advertisement, or any other form of communication.
If you’re the proprietor of a trademark and another person has been threatening you with legal consequences of trademark infringement needlessly, here’s what you should do:
- File for an injunction in a local court that services your area of operation. A legal expert may help you arrange documents, key evidence, and fill the required applications in this regard.
- The court will consider the grounds of threat and pass an order. Further, it is possible that apart from passing an injunction order against the threat, the court might award damages too.
- This relief is available regardless of whether the trademark is registered is done or not. Thus, even an unregistered trademark owner having proprietary rights of use over the mark can approach the court. This section also applies to assignees and licensees of the mark.