Delhi High Court: A Single Judge Bench of Amit Bansal*, J. after noting that defendant’s product ‘EVECARE’ had been launched only about 1.5 years back and had limited sales, whereas the plaintiffs’ product ‘EVECARE’ and ‘EVECARE FORTE’ had been in the market for 24 years and had significant sales, opined that the defendant’s use of the identical mark would not only cause injury to the goodwill and reputation of the plaintiffs but was also likely to cause confusion and deception in the market. Thus, the Court restrained the defendant from manufacturing and selling any products and services, including but not limited to their female hygiene and menstrual health product under the mark ‘EVECARE’ and/or any other mark which was deceptively similar to the plaintiffs’ registered ‘EVECARE’ mark till the final adjudication of the suit.
Background
The plaintiffs had been involved in the manufacture and distribution of ayurvedic medicaments and preparations since 1930. The products offered by the plaintiffs were under various categories such as personal care, pharmaceuticals, nutrition, wellness, animal health and baby care and were sold under the single umbrella brand, ‘Himalaya’, which was the house mark of the plaintiffs. Under the house mark, ‘Himalaya’, the plaintiffs manufactured and sold an ayurvedic proprietary medicine used as a uterine tonic for women under the marks ‘EVECARE’ and ‘EVECARE FORTE’. The registration of the mark ‘EVECARE’ was obtained by the plaintiffs in 1997 on a ‘proposed to be used’ basis in respect of medical and pharmaceutical preparations in Class 5.
The defendant company was a part of the Wipro conglomerate that was founded in 1945. The defendant was engaged in the manufacture and sale of various consumer goods such as personal wash products, skin care products toiletries, wellness products. In 2022, the plaintiffs became aware that the defendant had obtained registration of the mark ‘EVECARE’ in Class 3 in 2022 on a ‘proposed to be used’ basis in respect of cosmetic products. The plaintiffs issued a cease-and-desist notice to the defendant calling upon the defendant to desist from using the mark ‘EVECARE’, but the defendant refused to comply with the demands of the plaintiffs. The plaintiffs submitted that the defendant was using the identical mark ‘EVECARE’ as the plaintiffs in relation to the products meant to promote female menstrual health, thereby causing confusion in the trade and the public. Accordingly, the present suit had been filed along with the present application seeking interim injunction.
Analysis, Law, and Decision
The Court opined relied on Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 and opined that “even if the marks of the plaintiffs and the defendant were both registered, an action for passing off would still be maintainable”. The Court further relied on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (‘Cadila Healthcare’), (2001) 5 SCC 73; Satyam Infoway v. Siffynet Solution (P) Ltd. (‘Satyam Infoway’), (2004) 6 SCC 145; and V Guard Industries v. Crompton Greaves Consumer Electricals, 2022 SCC OnLine Del 1593; and opined that prima facie, the plaintiffs had established a case of passing off. The Court noted that the plaintiffs adopted the mark ‘EVECARE’ in relation to its ayurvedic medicines in 1997, whereas the defendant adopted the mark ‘EVECARE’ in November 2020 in relation to its ‘vaginal wash’ and the products of the plaintiffs had been in market since 1998, whereas the product of the defendant was launched around August 2021.
The Court opined that “it was intriguing as to why a reputed company such as the defendant company would launch its product, also pertaining to female reproductive hygiene, almost 22 years later, using the identical trade mark as that of the plaintiffs. 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 trade mark. 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 relied on Cadila Healthcare (supra) and Satyam Infoway (supra) and observed that misrepresentation could even be made out in the absence of any mala fide intention on the part of the defendant. Further, there was no need to establish fraud or actual deception or actual damage to the business or goodwill of the plaintiff, and a mere likelihood was sufficient. Thus, the Court opined that the defendant had failed to provide a plausible explanation for adopting the identical trade mark and that the adoption of the registered trade mark of the plaintiffs by the defendant was not bona fide and amounted to misrepresentation.
The Court opined that the products bear identical trade marks in relation to similar goods, therefore, a consumer who comes across both the product of the plaintiffs and the product of the defendant at the same time was likely to get confused and would associate the product of the defendant with that of the plaintiffs or vice versa. The Court further opined that the products of the plaintiffs and the defendant pertained 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 was unlikely to ask too many questions about the product before purchasing the same and the topic of menstrual hygiene/health was, unfortunately, still not a subject matter of open and free discussion. Thus, the defendant’s use of the identical mark would not only cause injury to the goodwill and reputation of the plaintiffs but was also likely to cause confusion and deception in the market.
The Court opined that a prima facie case of passing off was made out on behalf of the plaintiffs. The balance of convenience was also in favour of plaintiffs and against the defendant inasmuch as the product of the defendant had been launched only about 1.5 years back and had limited sales. On the other hand, the product of the plaintiffs had been in the market for 24 years and had significant sales. The Court further opined that irreparable harm would be caused not only to the plaintiffs but also to the public if an injunction as sought was not granted in favour of the plaintiffs.
Thus, the Court restrained the defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with regard to any products and services, including but not limited to their female hygiene and menstrual health product under the mark ‘EVECARE’ and/or any other mark which was deceptively similar to the plaintiffs’ registered ‘EVECARE’ mark till the final adjudication of the suit.
[Himalaya Wellness Co. v. Wipro Enterprises (P) Ltd., 2023 SCC OnLine Del 4035, decided on 12-7-2023]
*Judgment authored by: Justice Amit Mahajan
Advocates who appeared in this case :
For the Plaintiffs: Pravin Anand, Prachi Agarwal, Mishthi Dubey, Aditi Srivastava, Advocates;
For the Defendant: Akhil Sibal, Senior Advocate; Ankur Sangal, Ankit Arvind, Asavari Jain, Kiratraj Sadana, Bahuli Sharma, Advocates.
