All’s fair in love and IP war: No disparagement by Emami’s Fair and Handsome cream, Delhi HC

The Delhi High Court has held that there is no generic disparagement by Emami’s fairness cream for men, ‘Fair And Handsome’ in its advertisement.

The order was passed by a Single Judge Bench of Justice Jayant Nath in an application by Hindustan Unilever Ltd. HUL had prayed that Emami be restrained from telecasting one of its commercials for the product ‘Fair And Handsome’, which allegedly disparaged the goodwill and reputation of HUL’s product, ‘Fair & Lovely’.

The application was part of the suit filed by HUL contending trademark infringement, disparagement and unfair trade practices on the part of Emami.

HUL had submitted that it had developed a technology using Niacinamide, which is capable of delivering skin lightening benefits. The same ingredient, HUL claims, works in a similar manner on women’s as well as men’s skin with a variable degree of efficiency.

Hence, it was common for the male consumer to use fairness products available in the market without insisting for products designed specifically for men.

Nonetheless, to specifically target the male population, in around 2006, HUL launched its product ‘Fair & Lovely Men’, which was later renamed as ‘Men’s Fair & Lovely’.

It is HUL’s case that Emami in its advertisement makes a false claim that HUL’s Fair & Lovely was “rubbish and inefficacious” and that its use was restricted only to women.

HUL objected to the advertisement showing a tube with its colour combination of pink and white and referring to it as “ladkiwali fairness cream”. It added that the pink-white cream is then depicted as being ineffective on men’s skin while Emami’s product ‘Fair And Handsome’ is shown as an effective fairness cream for men, even though the main active ingredient in both the fairness cream is Niacinamide.

It thus pleaded that the advertisement was an attempt to demean, diminish and injure the business of HUL.

Emami, on the other hand, defended the advertisement by stating that the whole intention behind the advertisement was to inform male consumers that the fairness cream used by female consumers was not effective on their skin, as the texture of male skin was completely different.

There was not a whisper regarding the product of the plaintiff, let alone, comparison or denigration as alleged, it said.

It was further argued that even HUL had admitted that requirement of the skin of men and women was different.

After hearing the parties, the Court recorded that the fairness cream tube shown in the advertisement was changed to white, without a dual face logo, which was materially different from HUL’s product. The plaintiff thus could not complain about the same now.

As far as the contentions on disparagement were concerned, the Court opined that HUL’s arguments had no merits prima facie.

“The TV commercial no doubt seems to make fun of a male using a ladies cream. Can it be said that this advertisement on account of the said dialogue stated is false or misleading or unfair or deceptive? Does it amount to generic disparagement? The answer is in the negative…

…In view of the literature that has been posted on its own website by the plaintiff, it also cannot be said that prima facie the statements made in the advertisement regarding using of women’s cream by men is false.”

It further stated that the advertisement did not in any manner disparage HUL’s Fair and Lovely.

The advertisement does not, prima facie, slander the goods of the plaintiff, the Court decreed while dismissing the application.

HUL was represented by Senior Advocate Chander M Lall with Advocates Arunabh Deb, Nancy Roy, Arijit Mazumdar, Shambo Nandy, Akshay Chandna and Akanksha Kaushik.

Emami was represented by Advocate Abhimanyu Bhandari, Roohina Dua and Cheitanya Madan.

The next hearing in the suit will be held on July 11.

 Read the order:

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