13 July 2023 2:00 PM GMT
The Delhi High Court has restrained Wipro Enterprises from using the mark ‘EVECARE’ in relation to its intimate hygiene wash for women or any other product, in a trade mark infringement and passing off suit filed by Himalaya Wellness Company.The bench of Justice Amit Bansal passed the interim order after noting that Himalaya has been selling its uterine tonic under the mark...
The Delhi High Court has restrained Wipro Enterprises from using the mark ‘EVECARE’ in relation to its intimate hygiene wash for women or any other product, in a trade mark infringement and passing off suit filed by Himalaya Wellness Company.
The bench of Justice Amit Bansal passed the interim order after noting that Himalaya has been selling its uterine tonic under the mark ‘EVECARE’ since 1998, whereas the product of Wipro was launched only around August, 2021.
Observing that Himalaya has been using the said trademark for a period of 24 years, the court said that such a long usage had, in its prima facie view, resulted in Himalaya acquiring goodwill and reputation in the mark ‘EVECARE’. The court further concluded that in its prima facie view, Wipro’s adoption of Himalaya’s registered trademark, was not bona fide and amounted to misrepresentation.
“A simple due diligence exercise conducted on behalf of the defendant would have informed the defendant about the existence of the product of the plaintiffs with an identical trademark. A google search or a Trade Marks Registry search across various classes would have brought to light the registered mark of the plaintiffs,” the court said.
The bench further ruled that Himalaya’s uterine tonic and Wipro’s vaginal wash were similar or allied/cognate goods, targeting the same set of consumers, i.e., women, and had similar functions. Thus, the court said that in its prima facie view, Wipro’s use of the identical mark would not only cause injury to the goodwill and reputation of Himalaya but it was also likely to cause confusion and deception in the market.
The court also laid emphasis on the fact that both the products fell in the category of ‘hush products’, since the products pertained to the menstrual and reproductive health of women. This inherent nature of the goods was an added factor for likelihood of confusion, the court remarked.
The court thus concluded that a prima facie case of passing off was made out against Wipro.
It was the case of Himalaya that it manufactures and sells an ayurvedic proprietary medicine used as a uterine tonic for women under the marks ‘EVECARE’ and ‘EVECARE FORTE’. It stated that the mark ‘EVECARE’ is a coined mark which was adopted by it in the year 1997, and has been in continuous and extensive use since 1998. Himalaya claimed that the product is meant for relieving symptoms of dysfunctional uterine bleeding (irregular menstrual cycle, dysmenorrhea) and to provide uterine health with long term safety.
It alleged that the adoption of the identical mark by Wipro was dishonest and mala fide and that there was a likelihood of confusion between the two goods as the two marks i.e., ‘EVECARE’ were identical.
Per contra, Wipro claimed that in November, 2020, it ventured into the female hygiene segment and conceived the idea of launching an intimate hygiene wash for women. It stated that the adoption of the mark ‘EVECARE’ was completely bona fide. It further alleged that the two trademarks were registered under different classes. While Himalaya’s product fell under class 5, which deals with medicinal and pharmaceutical preparations, Wipro’s product fell in class 3, which deals with cosmetic products, Wipro said.
Thus, Wipro contended that since it is a registered proprietor of the impugned mark under class 3 for its intimate wash, no case of infringement was made out against it.
The court remarked that in view of Section 27(2) of the Trade Marks Act, 1999, even if the marks of the parties are both registered, an action for passing off would still be maintainable.
The court expressed surprise as to why a reputed company such as Wipro would launch its product, also pertaining to female reproductive hygiene, almost 22 years later, using the identical trademark as that of Himalaya’s. The bench remarked that it was difficult to fathom that Wipro was not aware of the use of the trademark ‘EVECARE’ by Himalaya when it decided to launch its product under the same trademark in 2020.
While holding that Wipro had failed to provide a plausible explanation for adopting the identical trademark, the court said, “Accordingly, this Court is of the prima facie view that the adoption of the registered trademark of the plaintiffs by the defendant was not bona fide and amounts to misrepresentation.”
It further took note that when a prospective consumer would search for ‘EVECARE’ on various third-party e-commerce platforms, such as ‘Amazon’, ‘Netmeds’ and ‘TATA 1mg’, both the products of Himalaya and Wipro would show up, which is likely to cause confusion.
The court also dismissed the contention of Wipro that because Himalaya uses its house-mark, ‘Himalaya’ along with trademark ‘EVECARE’, it would eliminate confusion. “In today’s times, when most products are purchased online, the search on e-commerce platforms is usually done through the trademark and therefore, in such cases, the house mark would not be of much relevance,” the court said.
Thus, holding that a prima facie case of passing off was made out, the court passed an interim order restraining the use of the mark ‘EVECARE’.
Case Title: Himalaya Wellness Company & Ors vs Wipro Enterprises Private Limited
Citation: 2023 LiveLaw (Del) 590
Counsel for the Plaintiff: Mr. Pravin Anand, Ms. Prachi Agarwal, Ms. Mishthi Dubey and Ms.Aditi Srivastava, Advocates.
Counsel for the Defendant: Mr. Akhil Sibal, Senior Advocate, Mr.Ankur Sangal, Mr.Ankit Arvind, Ms.Asavari Jain, Mr.Kiratraj Sadana, Ms.Bahuli Sharma, Advocates
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