Date of Judgment: 12.07.2023
Case No: CS Comm 118 of 2023
Neutral Citation No: 2023:DHC:4685
Name of Hon'ble Court: Hon'ble High Court of Delhi
Name of Hon'ble Judge: Amit Bansal, H.J.
Case Title: Himalaya Wellness Company Vs. Wipro Enterprises Pvt. Ltd.
INTRODUCTION:
In the realm of trademark law,
disputes often arise when two parties claim ownership or exclusive rights over
similar trademarks for different classes of products. This article analyses a
recent case where the Plaintiff, who held a class 05 trademark for the brand
EVECARE, filed a suit against the Defendant, who possessed a class 03 trademark
for the same name. The pivotal question in this case was whether the Plaintiff
could be granted an injunction against the Defendant's products, even though
they fell under different classes.
THE BACK GROUND:
The Plaintiff had registered the
EVECARE trademark in class 05 in 1997. The mark was used for an Ayurvedic
proprietary medicine, specifically a uterine tonic for women. On the other
hand, the Defendant also held a registration for the EVECARE trademark, but in
class 03, which covered an intimate wash as a cosmetic item.
THE JUDGEMENT:
Relief of Infringement was declined as the Defendant was also having Trademark Registration. However Relief of passing off was granted as the Plaintiff was held to be prior adopter and user of the subject matter Trademark EVECARE.
RELEIF OF INFRINGEMENT NOT MAINTAINABLE AGAINST ANOTHER REGISTERED PROPRIETOR:
Plaintiff adopted the Trademark EVECARE in the year 1997 and also hold registration in class 05. While defendant hold registration of Trademark EVECARE in class 03 which was granted in class 03. The Defendant was also registered Proprietor of Trademark EVECARE in class 03. Hence by virtue of operation of Section 28 (3) of Trademarks Act 1999, the Suit for Infringement was not held to be maintainable.
THOUGH PLAINTIFF FAILED IN ACTION OF INFRINGEMENT, HOWEVER PASSING OFF ACTION SUCCEEDED:
However Plaintiff succeeded in passing off action on the ground of prior use and tremendous goodwill and reputation. Plaintiff was prior user of Trademark EVECARE in relation to Ayurvedic proprietary medicine used as uterine tonic for woman since the year 1997. While defendant launched identical trademark EVECARE in the year 2021 in relation to intimate wash as cosmetic item.
TRADEMARK CLASSIFICATION IS NOT THE RELEVANT CRITERION FOR DECIDING CONFUSION:
The Court did not grant any relief to the Defendant on the ground that competing products of parties were falling in different class. Instead, the Court looked into the nature and use of competing products of the parties. Goods of parties were held to be of similar in nature as both products were held to be targeted towards similar function. The function of both of the products were in relation to menstrual and reproductive health of women. Merely because of goods of parties falls in different class i.e. in class 03 and 05, this does not make the competing goods different in nature. Trademark Classification is not determinative of confusion.
Defendant's Products was held to be similar in nature even though it falls in the category of cosmetics while plaintiff's product falls into the category of ayurvedic medicine. Products of both parties are directed towards improving woman's health. Both of the Products are sold through same trade channel. Hence the same were held to be allied and cognate in nature resulting in possibility of confusion and deception in market.
PRIOR TRADEMARK SEARCH TAKEN IN DIFFERENT CLASS IRRELEVANT:
Prior to adoption of the subject matter trademark, the Defendant took search report only in class 03 only. This will not absolve the defendant. Though the product of the Plaintiff was in relation to Ayurvedic medicinal preparation, still on simple search on Google , the Defendant could have found the presence of plaintiff's Trademark. Even the Defendant's explanation does not appear to be convincing.
User of Defendant was recent in nature. On the contrary , the Plaintiff was having user of subject matter trademark since more than 2 decades. The Plaintiff was also having tremendous goodwill and reputation. In view of the above , injunction was granted to the Plaintiff in relation to passing off action.
THE CONCLUDING NOTE:
This case presents an important
legal precedent highlighting the fact that classification alone cannot shield a
defendant from claims of trademark infringement or passing off. Although
classification plays a significant role in determining the scope and
applicability of a trademark in trade and commerce, it does not limit the
rights of the trademark owner to seek relief against infringing products in
different classes. The court's decision underscores the fundamental principle
of trademark law, which is to protect consumers from confusion or deception in
the market. Consequently, trademarks should be evaluated based on their impact
on consumer perception rather than the classification of goods or services.
Advocate Ajay Amitabh Suman
IP ADJUTOR
Patent and Trademark Attorney
ajayamitabhsuman@gmail.com
9990389539
DISCLAIMER:
Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.
