Summary: The Delhi High Court restrained Wipro from using the mark ‘EVECARE’ for women’s hygiene products after Himalaya filed a passing off action. The case discusses questions around the elements of passing off involving allied/cognate goods, and the relevance of the NICE system of classification of trademarks in such actions.
Introduction
The Delhi High Court recently concluded a high stakes dispute between two FMCG and wellness giants, ‘Himalaya Wellness’ and ‘Wipro Enterprises’, on the use of the trademark “EVECARE.” In a short but detailed judgement, the court discussed key questions around consumer confusion in passing off involving allied/cognate goods, as well as the NICE classification of trademarks as a determinant of similarity between goods.
Brief facts
Himalaya Wellness, a company in the business of Ayurvedic products, has been using its registered trademark “EVECARE” for over 25 years for its line of uterine tonics for women. The mark is registered under Class 5, pertaining to medical and pharmaceutical preparations. The company claimed that through decades of continuous use, it has built a significant reputation and goodwill around the mark in the pharmaceutical industry. Himalaya’s “EVECARE” product addresses uterine health and is aimed at treating symptoms related to dysfunctional uterine bleeding.
Wipro Enterprises, a key player in the FMCG sector, entered the female hygiene market in 2021 with a cosmetic product—a feminine hygiene wash—under the “EVECARE” trademark. Wipro received a registration for its version of “EVECARE” in 2021 under Class 3, which covers cosmetics.
The dispute emerged when Himalaya accused Wipro of passing off its goods and creating confusion in the market by using an identical trademark for similar products aimed at the same target audience.
Single Judge Ruling
The initial ruling by a Single Judge of the Delhi High Court favored Himalaya Wellness. The court recognized Himalaya’s long-standing use of the mark and found that Wipro’s adoption of the same name could potentially mislead consumers, especially since both products cater to women’s reproductive health. The court accordingly granted an interim injunction restraining Wipro from using the mark.
The Single Judge acknowledged that while Himalaya’s “EVECARE” is a pharmaceutical product and Wipro’s version is a cosmetic product, the likelihood of confusion was significant because both products are marketed to the same consumer group—women concerned with reproductive health. The judge noted that both products are sold on similar platforms, including online stores, and are often grouped under the same category of products, i.e., ‘women’s health’.
Wipro’s Appeal
Wipro appealed the interim injunction order, arguing that there was no risk of consumer confusion since their product was distinct in both purpose and classification under the trademark law. Wipro maintained that their product, a cosmetic vaginal wash, was markedly different from Himalaya’s Ayurvedic uterine health tablets. Additionally, they pointed out that the packaging and presentation of their products were entirely different, further reducing the likelihood of consumer confusion.
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Wipro also emphasized that, following its due diligence, it had registered its mark under Class 3 for cosmetics, a class different from Himalaya’s Class 5 registration. Nevertheless, the Single Judge ruled that the similarity of the trademarks and their association with women’s reproductive health warranted a temporary restraint on Wipro’s use of the mark.
Division Bench Ruling
The appeal by Wipro was heard by a Division Bench of Justice Vibhu Bakhru and Justice Tara Vitasta Ganju of the Delhi High Court. In its ruling (FAO (OS) (Comm) dated 1 October 2024), the Division Bench upheld the Single Judge’s decision for the interim injunction.
Passing off of allied/cognate goods
The court reiterated that the trademarks in question were identical and aimed at a similar consumer base. While the products differed in their use—cosmetics versus pharmaceuticals—the court noted that they were allied and cognate goods. Both products address aspects of female reproductive health, thus increasing the likelihood of confusion among consumers.
The court referred to the well-established legal principle that passing off rights in trademark law prioritize the rights of the ‘prior user’. Even though Wipro registered the mark for a different class of goods, the court found that Himalaya’s long-standing use of the “EVECARE” mark gave it superior rights over the junior user, Wipro.
End user
Wipro’s reliance on the case of Sun Pharmaceutical Laboratories Ltd. v. Hetero Healthcare Ltd. & Anr. (2022 SCC OnLine Del 2580) was rejected, as the mark in that case was for a drug which had to be necessarily prescribed by a registered medical practitioner and was for the treatment of cancer. This was different from a product whose target audience is the common public, and whose end use is broadly related (i.e., women’s health).
Nature of goods
The Division Bench also highlighted the nature of the products, referring to them as “hush products”—goods of a ‘personal or intimate nature’ that consumers might be reluctant to openly inquire about. This increased the risk of confusion as consumers are less likely to seek detailed clarifications before making a purchase.
Trademark classification not sufficient
The court also emphasised that classification of trademarks for different kinds of goods and services under Section 7 of the Trade Marks Act, 1999, was intended only for the purposes of registration of trademarks, and could not be relied upon as a criteria for deciding the similarity of goods and services.
Fraud not a required element
The court relied upon a host of Supreme Court judgments to observe that “although passing off is based on deceit, fraud is not always a necessary element”. The legal position is clear that the reasons why a mark may have been imitated or adopted are not relevant in an action for passing off, and the absence of intention to deceive cannot come in the way of such an action.
Implications of the Ruling
This decision of the Delhi High Court underscores the importance of prior use in Indian trademark law, particularly in cases involving similar or allied goods. The ruling is also significant for businesses that operate in different classes of the ‘Nice Classification’ system, reminding them that classification differences alone may not protect against passing-off claims if the products cater to a related consumer base.
The ruling has immediate implications for Wipro Enterprises, which will be unable to market its female hygiene products under the “EVECARE” mark until the case is finally disposed off. For Himalaya Wellness, the ruling reinforces its trademark rights and solidifies its claim over the “EVECARE” mark, especially in the highly competitive women’s healthcare market.
As the case moves toward a final resolution, it will serve as an important precedent for similar cases involving ‘overlapping trademarks’ across different product classes.
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