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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Himalaya Wellness Company & Ors. – Appellants
Versus
Wipro Enterprises Private Limited – Respondent
CS(COMM) 118 of 2023 & I.A. 4329 of 2023 (O-XXVI R-4, 9 & 10 of
Decided On : 12-07-2023
EVECARE - TRADEMARK - INFRINGEMENT - PASSING OFF - SIMILARITY OF GOODS - LIKELIHOOD OF CONFUSION - INJUNCTION - [SECTION 28(3), 27(2), 29(2) OF THE TRADE MARKS ACT, 1999] - The Delhi High Court granted an injunction in favor of the plaintiffs, restraining the defendant from using the identical trademark 'EVECARE' for its vaginal wash product, holding that the defendant's use of the mark amounted to infringement and passing off.
Fact of the Case:
The plaintiffs, a pharmaceutical company, had been using the trademark 'EVECARE' for their uterine tonic since 1997. The defendant, a consumer goods company, launched its vaginal wash product under the same trademark 'EVECARE' in 2020. The plaintiffs filed a suit for infringement and passing off, seeking an injunction to restrain the defendant from using the mark.
Finding of the Court:
The court held that the defendant's use of the identical trademark 'EVECARE' for its vaginal wash product was dishonest and mala fide, as the defendant had not conducted any due diligence to ascertain the existence of the plaintiffs' trademark before adopting the mark. The court also found that the goods of the plaintiffs and the defendant were similar and allied/cognate, as both products were targeted at women's reproductive health and hygiene. The court further held that there was a likelihood of confusion in the minds of consumers due to the identical trademarks and the similarity of the goods. The court rejected the defendant's contention that the registration of the trademark in its favor under Class 3 for cosmetic products barred the plaintiffs' infringement action, as the plaintiffs had prior user rights in the mark under Class 5 for pharmaceutical products.
Issues: 1. Whether the defendant's use of the identical trademark 'EVECARE' for its vaginal wash product constituted infringement and passing off. 2. Whether the goods of the plaintiffs and the defendant were similar and allied/cognate. 3. Whether there was a likelihood of confusion in the minds of consumers due to the identical trademarks and the similarity of the goods.
Ratio Decidendi: 1. The court held that the defendant's use of the identical trademark 'EVECARE' for its vaginal wash product was dishonest and mala fide, as the defendant had not conducted any due diligence to ascertain the existence of the plaintiffs' trademark before adopting the mark. 2. The court found that the goods of the plaintiffs and the defendant were similar and allied/cognate, as both products were targeted at women's reproductive health and hygiene. 3. The court held that there was a likelihood of confusion in the minds of consumers due to the identical trademarks and the similarity of the goods.
Final Decision: The court granted an injunction in favor of the plaintiffs, restraining the defendant from using the identical trademark 'EVECARE' for its vaginal wash product, holding that the defendant's use of the mark amounted to infringement and passing off.
JUDGMENT
Amit Bansal, J.
I.A. 4328/2023 (O-XXXIX R-1 & 2 of the CPC)
1. By way of the present judgment, I shall decide the captioned application filed on behalf of the plaintiffs under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).
2. The present suit has been filed seeking relief of permanent injunction restraining the defendant from infringing the registered marks of the plaintiffs as well as passing off their goods as those of the plaintiffs along with other ancillary reliefs.
3. Summons in the suit and the notice in the interim application were issued on 3rd March, 2023. Parties were also referred for mediation to the Delhi High Court Mediation and Conciliation Centre, however, the mediation proceedings were not successful.
4. Reply to the interim application was filed on behalf of the defendant on 5th April, 2023 and the rejoinder thereto has also been filed by the plaintiffs.
5. Subsequently, the plaintiffs have also filed an application under Section 124 of the Trademarks Act, 1999 for framing an issue regarding the invalidity of the registration granted in favour of the defendant for the mark `EVECARE' and seeking permission to file a rectification petition for removal of the registration of the said mark from the Trade Marks Register.
CASE SET UP BY THE PLAINTIFFS
6. The case set up by the plaintiffs in the plaint is as follows:
6.1. The plaintiffs have been involved in the manufacture and distribution of ayurvedic medicaments and preparations since 1930. Over the years, the plaintiffs have developed several pharmaceutical grade herbal healthcare products.
6.2. The products offered by the plaintiffs are under various categories such as personal care, pharmaceuticals, nutrition, wellness, animal health and baby care. All the products of the plaintiffs sell under the single umbrella brand, Himalaya, which is the house mark of the plaintiffs.
6.3. Under the house mark, Himalaya, the plaintiffs manufacture and sell an ayurvedic proprietary medicine used as a uterine tonic for women under the marks `EVECARE' and `EVECARE FORTE'. This product is meant for relieving symptoms of dysfunctional uterine bleeding (irregular menstrual cycle, dysmenorrhea) and to provide uterine health with long term safety.
6.4. The mark `EVECARE' was adopted by the plaintiffs in the year 1997 and has been in continuous and extensive use by the plaintiffs since 1998. The registration of the mark `EVECARE' was obtained by the plaintiffs on 2nd December, 1997 on a `proposed to be used' basis in respect of medical and pharmaceutical preparations in class 5. The plaintiffs are also the registered proprietors of several other `EVECARE' marks, details of which are given in paragraph 26 of the plaint.
6.5. By virtue of long, continuous and extensive use, the plaintiffs have garnered immense goodwill and reputation in respect of their `EVECARE' marks.
6.6. The plaintiffs have provided their sales turnover from the year 2012-2013 to 2022-2023 in respect of the products being sold under the `EVECARE' marks/logos in the paragraph 20 of the plaint.
6.7. The plaintiffs have also provided their advertisement and promotional expenses in respect of the products under the `EVECARE' marks/logos in paragraph 21 of the plaint.
6.8. The aforesaid products of the plaintiffs are available as over the counter products at various neighborhood drug stores/chemists, general stores, as well as the exclusive retail stores of the plaintiffs. The said products of the plaintiffs are also listed on various online platforms like Amazon, Netmeds and the like.
6.9. In November, 2022, the plaintiffs became aware that the defendant has obtained registration of the mark `EVECARE' in class 3 on 22nd November, 2020 on a `proposed to be used' basis in respect of cosmetic products.
6.10. The plaintiffs issued a cease-and-desist notice dated 23rd November, 2022 to the defendant calling upon the defendant to desist from using the mark `EVECARE'. The defendant vide r
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