The #BlackLiivesMatter movement has taken popularity among the world and has encouraged many corporate entities, including multinational companies to reassess their businesses and marketing policies for signs of disrimination, following the calls against racial inequality after the death of Geoge Flloyd in the United States. In India also HUL has announced that they will remove the word Fair from “fair and Lovely” skin product line.
The HUL rebranding announcement invited a lot of criticism on grounds that a change of name without actually discontinuing the product was merely a marketing stunt and does not show genuine concern. Critics are of the opinion that the brand could have delivered a stronger message by discontinuing the product line entirely, or by coming up with another product. However in Indian market these companies earn major revenues, therefore they cannot afford to discontinue their product, the best solution is to take a rebranding exercise, without changing the description of the products.
This is not the first time that HUL is trying to rebrand its product. In the past, the company has substituted the word “Fairness” with “Even tone”, “Skin clarity” and “Radiance”. This time the company chooses its word to be “Glow” which is regarded as a synonym for fairness.
The company was choosing its brand name and finally decided the name as “Glow and Lovely” and “Glow and Handsome” for men’s range of the product.
However that does not sit well with HUL competitor “Emami Ltd ”. It was recommended by the Emami to HUL to change the name as they already reportedly launched the brad “emami Glow and Handsome” a week earlier by making necessary filings.
HUL Vs Emami
Legal dispute between the two companies is not new. This time, both the companies end up filing applications for the mark “Glow and Handsome” on June 25, 2020 on a proposed to be used basis.
On 6th July, 2020 HUL filed for an interim injunction in the Bombay High Court against groundless threats by Emami in respect of its trademark “Glow and Handsome”. HUL claimed that they have applied for “Glow and Lovely” and “Glow and Handsome” way back in September, 2018 but the same was refused by the registry, then again the application for the name was applied in the year 2020 respectively.
The court observed that HUL is the prior user of the mark as HUl first applied for the registration of the mark. However, the threats given by Emami are groundless or not will be decided after hearing both the parties.
First to Use Trademark Ownership in India
In India the ownership of a Trademark is decided on a first to use basis. The principle of “Priority in adoption and use prevails over priority in registration” is usually applied in these situations.
An entity can establish ownership over a mark by using the mark in the course of trade and by substantiating prior use of the mark. This prior use right is found in section 34 of the Act. the provision mandates that the proprietor of a mark cannot hinder the use of an identical trademark by a person continuously using the mark from a prior date. Under common law remedy also companies can seek protection under passing off remedy.
The first user rule is a ground breaking part of the Act. the proprietor of a mark, by using the mark in relation to their goods and thus causing it to be associated with those goods, can acquire a quasi- proprietary right to the exclusive use of the mark. The important requirements under these provisions are as follows-
- The trademark must be used by its owner
- The trademark must be in continuous use within the geographical boundaries of India by its owner.
- The use of the trademark must be in relation to the goods or services covered by the registered proprietor.
- The trademark must be in use from an earlier date as compared to the date of use of the mark by the registered proprietor.