Fair and Lovely or Handsome Men!
Hindustan Unilever Limited (HUL) and Emami Limited (Emami) are locked in a battle to control market share over fairness cream for men. HUL’s product is marketed under the brand name “Men’s Fair & Lovely” and Emami’s under the name “FAIR AND HANDSOME”. The bone of contention is the advertisement in Hindi published by HUL pertaining to “Men’s Fair & Lovely” cream that allegedly state that their product is the original, whereas, “FAIR AND HANDSOME” is a ‘Doosra’ (second or inferior).
Emami Limited (Emami) filed a suit before the Second Court of Civil Judge (Junior Division) at Serampore alleging that HUL’s advertisement is an attempt to disparage Emami’s product, leading to dissemination of negative publicity with the intention to convey that the latter’s product is inferior. The court granted an injunction restraining HUL from circulating and/or displaying the advertisement. HUL’s prayer for stay of the injunction order was refused by the Additional District Judge, First Court at Serampore. HUL has now filed the revision petition before the Kolkata High Court.
HUL in its petition stated:
- The audio-visual advertisement under challenge sought to promote HUL’s product only and not denigrate or disparage Emami’s product. The meaning of “Doosra” in Hindi is “another” or “different” and cannot be construed as derogatory.
- Emami case was based on its registered trade mark and the Civil Judge (Junior Division) had no jurisdiction to entertain the suit in view of the specific stipulation in Section 134(1) of the Trade Marks Act, 1999, the case should have been filed before the District Judge at Alipore.
- HUL had lodged caveat in the District Court at Alipore and the suit was filed at a subordinate forum at Serampore to bypass such caveat and obtain an ad interim injunction order.
- Entire premise of the present suit is denigration and disparagement as the advertisement seeks to deliberately and unfairly discredit, disparage, ridicule and derogate their product, “FAIR AND HANDSOME”. Thus, it is an action in Tort and falls within the domain of common law and is not governed by the provisions of the Trade Marks Act, 1999. The suit being tortious liability based on the principles of trade libel and slander, the same is governed by Section 20 of the Code of Civil Procedure and had to be filed before the lowest forum, that is the Civil Judge (Junior Division) and not before the District Judge as stipulated in Section 134 of the 1999 Act.
- Although there could be incidental infringement of trade mark, the frame of the present suit makes it clear that the same was not filed under the provisions of the Trademarks Act but entirely emanates from tortious violations.
The High Court after considering the submissions and materials on record held:
- A plain reading of the plaint (statement of claim) indicates that the suit as framed is essentially one for disparagement. The cause of action and the facts throughout the plaint, overwhelmingly revolve around allegations of denigration and disparagement of Emami’s “FAIR AND HANDSOME” product.
- The prayer portion shows that the injunction and other reliefs claimed are to prevent disparagement and defamation of the “FAIR AND HANDSOME” product and not to protect rights arising from the trademark or to prevent infringement of the trademark. The instant suit has disparagement and denigration of Emami’s product rather than the infringement of the associated trademark as its focal point. The alleged infringement of trademark and rights arising from such trademark is only a corollary and a collateral damage at best for which leave has been sought to take out a separate action.
- “Men’s Fair and Lovely” is a much younger product when compared to Emami’s “FAIR AND HANDSOME”. Thus, the term “original” here could not mean earlier on point of genesis, but only HUL’s product was the real one and that of Emami being other than such “original”, was a duplicate/fake. The term “Doosra”, in the instant matter could be interpreted as something other than the original, that is, fake and the advertisement contains an innuendo that, in comparison, HUL’s product is the original and Emami’s is an emulation.
In view of the above the High Court dismissed the revision petition filed by HUL and confirmed the injunction in favour of Emami.