Use of the mark ‘Evecare’ in relation to woman care products is the gist of the issue in the instant dispute before the Delhi High Court. The Plaintiff, Himalaya Wellness Company and Ors (Himalaya) filed the suit against the Defendant, Wipro Enterprises Private Limited (Wipro) alleging infringement of trademark, passing off and ancillary reliefs. The injunction application filed by Himalaya to restrain Wipro from using the mark ‘Evecare’ is being considered by the Court.

Himalaya in the suit states:

1. They are engaged in the manufacture and distribution of ayurvedic medicaments and preparations since 1930 and sell products under various categories such as personal care, pharmaceuticals, nutrition, wellness, animal health and baby care.
2. They manufacture and sell an ayurvedic proprietary medicine used as a uterine tonic for women under the marks ‘EVECARE’ and ‘EVECARE FORTE’ which relieves symptoms of dysfunctional uterine bleeding and provide uterine health with long term safety.
3. The mark ‘Evecare’ was adopted in the year 1997 and has been continuously used since the year 1998. The mark is registered in class 5 and on account of long and extensive use garnered considerable goodwill and reputation.
4. ‘EVECARE’ is a coined word and is highly distinctive and is exclusively associated with them.
5. In November 2022, Himalaya came across the registration for the mark ‘Evecare’ in class 3 in the name of Wipro. The cease-and-desist letter addressed by Himalaya was not acted upon by Wipro.
6. Wipro’s use of the mark ‘Evecare’ in relation to products meant to promote female menstrual health will cause confusion among the trade and public.
7. Confusion is imminent as the rival products are allied and cognate as both are ‘hush products’ pertaining to menstrual and reproductive health of women.

Wipro counters the injunction application on the following:

• They are engaged in the manufacture and sale of various consumer goods such as personal wash products, skin care products toiletries, wellness products, etc.
• In November 2020, as part of its expansion they ventured into the female hygiene segment and launched an intimate hygiene wash for women. The mark ‘EVECARE’ is a combination of two words, ‘EVE’, representing a female-centric brand and ‘CARE’, to give a protective and caring tone to the brand and thus adoption is bonafide.
• The trademark searches did not reveal any similar marks and they obtained registration for the mark EVECARE in class 3 in May 2021. They have obtained registration under the Drugs and Cosmetics Act and started manufacturing the ‘EVECARE’ product.
• The rival products and packaging are different, and the product packaging of Himalaya contains the house mark which will avoid any confusion in the market.
• As they are the registered proprietor of the mark EVECARE in class 3 no infringement action will lie against them.

The court after considering the pleadings, documents and arguments held as follows:

1. In the instant case both the parties have trademark registrations. Section 28 of the Trademarks Act, 1999, provides exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered and obtain relief in respect of infringement of trademark.
2. Sub-section (3) of Section 28 contemplates a situation where two or more persons are registered proprietors of the trademarks which are identical with or nearly resemble each other. This makes it clear that the exclusive right to use of any of those trademarks shall not be deemed to have been acquired by one registrant as against the other registered owner of the trademark.
3. However, Section 27(2) of the Trademarks Act recognizes the common law rights of a trademark owner to act against any person for passing off his goods or services as the goods or services of the former. The rights in passing off are emanating from the common law and not from the provisions of the Act and they are independent of the rights conferred by the Act.
4. It is well settled that if an ordinary purchaser exercising ordinary caution is likely to be confused into buying the product of the defendant, believing the same to be originating from the plaintiff, then an injunction must follow. Intention to pass of is neither necessary nor required to be proved. The present suit has been filed by Himalaya for infringement as well as for passing off.
5. Admittedly, both the parties use the trademark, ‘EVECARE’, in relation to their respective goods. Himalaya adopted the mark ‘EVECARE’ in relation to its Ayurvedic medicines in 1997 and the products have been in the market since 1998. On the other hand, Wipro adopted the mark ‘EVECARE’ in November 2020 in relation to its ‘vaginal wash’ and the product was launched around August 2021.
6. The pleadings indicate that Wipro conducted a search only in class 3 and found that there was no other registered mark or pending application in respect of the mark ‘EVECARE’.
7. Wipro’s reply is conspicuously silent about its knowledge of Himalaya’s products being sold under the identical mark. It is beyond comprehension that Wipro was not aware of the use of the trademark ‘EVECARE’ by Himalaya when it decided to launch its product under the identical trademark in 2020. Thus, Wipro has failed to provide a plausible explanation for adopting the identical trademark that too after more than twenty years.
8. In the instant case the rival products are targeted at the same set of consumers, i.e., women and the function of both the products are similar i.e., to maintain a healthy female reproductive system with focus on uterine and vaginal care.
9. The differences pointed out by Wipro are not material and unlikely to weigh in the mind of a customer while making the purchase. As similar products are being sold under identical trademarks there is a likelihood of confusion in the minds of prospective consumers of the products.
10. As per the Nice classification ‘vaginal washes’ are specifically included under both classes 3 and 5, thus, Wipro’s contention that the rival products fall under different classes is not likely to succeed.
11. Himalaya has been using the said trademark for a period of 24 years and such long usage has resulted in acquiring goodwill and reputation in the mark ‘EVECARE’.
12. Wipro’s contention that the use of the house mark Himalaya will avoid confusion does not have merit. In modern times, when most products are purchased online and searches are usually done through the trademark, the house mark would not be of much relevance.
13. Himalaya has made out a prima facie case of passing off and the balance of convenience is also in their favour. Wipro has launched their product about one and a half years back, whereas Himalaya’s product has been in the market for 24 years and has significant sales and irreparable harm would be caused if an injunction is not granted.

The Court thus, restrained Wipro from manufacturing, selling, offering for sale, or dealing in any manner with any products and services under the mark ‘EVECARE’ and/or any other mark which is deceptively similar Himalaya’s registered mark ‘EVECARE’ mark till the final adjudication of the suit.

Our comments

The above case reinforces the significance of conducting clearance searches and thorough due diligence in the market before launch of a brand. Despite registered rights of the Defendant in class 3, the court has considered the likelihood of consumer confusion due to use of an identical mark in respect of different goods albeit allied in nature.