"A Google Search Would Have Revealed Registered TM"- Delhi HC Provides Relief To Himalaya, Restrains Wipro From Using "Evecare" For Its Products
A Delhi High Court Bench of Justice Amit Bansal has passed an interim order providing relief to Himalaya by restricting Wipro Enterprises from using the mark ‘EVECARE’ in relation to its intimate hygiene wash for women or any other product.
In that context, the Court said that "the plaintiffs have been using the said trademark for a period of 24 years and such long usage has, in my prima facie view, resulted in the plaintiffs acquiring goodwill and reputation in the mark ‘EVECARE’. The plaintiffs have provided their sales figures as well as the promotional expenses over the past ten years. Between 2012 and 2020, the plaintiffs had sales of around Rs.150 Crores in respect of the products selling under the trademark ‘EVECARE’ and incurred promotional expenses of Rs.1.25 Crores in the said period. The popularity of the products of the plaintiffs is evident from a simple Google search for the term ‘EVECARE’, which shows only the products of the plaintiffs in the first two pages of the search results. Therefore, in my prima facie view, the use by the defendant of the identical mark would not only cause injury to the goodwill and reputation of the plaintiffs but is also likely to cause confusion and deception in the market."
Counsel Pravin Anand, among others, appeared for the plaintiff. Senior Advocate Akhil Sibal, among others, appeared for the defendant.
In this case, Himalaya claimed that it manufactures and sells an ayurvedic medicine called 'EVECARE' and 'EVECARE FORTE' as a uterine tonic for women. They argued that they have been using the 'EVECARE' mark since 1997 and it is a unique and coined mark. The product is intended to relieve symptoms of dysfunctional uterine bleeding and promote uterine health.
On the other hand, Wipro stated that in November 2020, they entered the female hygiene segment and planned to launch an intimate hygiene wash for women. They argued that adopting the 'EVECARE' mark was done in good faith. Wipro emphasized that the two trademarks were registered under different classes, with Himalaya's product falling under medicinal and pharmaceutical preparations (class 5), while Wipro's product fell under cosmetic products (class 3). Therefore, Wipro argued that there was no infringement since they were the registered owner of the mark in class 3 for their intimate wash.
Subsequently, Himalaya accused Wipro of dishonest and malicious adoption of their 'EVECARE' mark, claiming confusion between the products. On the other hand, Wipro argued that they adopted the mark in good faith and that there was no infringement as the products fell under different classes.
On hearing the parties, the Court relied on a catena of judgments, including the one passed in Corn Products Refining Co. v. Shangrila Food Products Ltd., to observe that the differences between the two products were not material and were unlikely to weigh in the mind of a customer with average intelligence and imperfect recollection while making the purchase. By extension of the same, the Court further said that "Since the products bear identical trademarks in relation to similar goods, a consumer who comes across both the product of the plaintiffs and the product of the defendant at the same time is likely to get confused and also associate the product of the defendant with that of the plaintiffs or vice versa. Therefore, in my prima facie view, this would cause likelihood of confusion in the minds of prospective consumers of the products."
With regard to the contention that the two products fell in different classes, the Court rejected it, while stating that "vaginal washes" are specifically included under both class 3 and class 5, even though they are qualified with the words ‘for medicinal purpose’ in class 5 and the words ‘for personal sanitary and deodorant purpose’ in class 3.
The Court also noted that an added factor for likelihood of confusion was the inherent nature of the goods. In that context, it was said that "the products of the plaintiffs and the defendant pertain to menstrual and reproductive health of women and would therefore, fall in the category of ‘hush products’. A prospective buyer of these kind of products is unlikely to ask too many questions about the product before purchasing the same. The topic of menstrual hygiene/health is, unfortunately, still not a subject matter of open and free discussion."
The Court also rejected the contention that the use of the house mark ‘Himalaya’ would distinguish the goods of the plaintiffs.
Subsequently, the Court observed, "a prima facie case of passing off is made out on behalf of the plaintiffs. The balance of convenience is also in favour of plaintiffs and against the defendant inasmuch as the product of the defendant has been launched only about 1.5 years back and has limited sales. On the other hand, the product of the plaintiffs has been in the market for 24 years and has significant sales. Irreparable harm would be caused not only to the plaintiffs but also to the public if an injunction as sought is not granted in favour of the plaintiffs."
Cause Title: Himalaya Wellness Company & Ors v. Wipro Enterprises Private Limited
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