Delhi High Court - Orders
Wipro Enterprises Private Limited vs Himalaya Wellness Company & Ors on 6 October, 2023
Author: Yashwant Varma
Bench: Yashwant Varma, Dharmesh Sharma
$~7
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO(OS) (COMM) 145/2023
WIPRO ENTERPRISES PRIVATE LIMITED ..... Appellant
Through: Mr. Akhil Sibal, Sr. Adv. with
Mr. Ankur Sangal, Mr. Ankit
Arvind, Mr. Kiratraj Sadana
and Mr. Asavari Jain, Advs.
Versus
HIMALAYA WELLNESS COMPANY & ORS.
..... Respondents
Through: Mr. Jayant Mehta, Sr. Adv.
with Mr. Pravin Anand, Ms.
Prachi Agarwal, Ms. Ridhie
Bajaj, Ms. Aditi Srivastava and
Ms. Kanupriya Chawla, Advs.
CORAM:
HON'BLE MR. JUSTICE YASHWANT VARMA
HON'BLE MR. JUSTICE DHARMESH SHARMA
ORDER
% 06.10.2023
CM APPL. 36103/2023 (Stay)
1. The appellant who was the defendant in the suit has instituted the present appeal assailing the validity of the order dated 12 July 2023 passed by the learned Single Judge who has granted a temporary injunction in the following terms:-
"57. Accordingly, the defendant, its directors, partners, officers, servants and agents, distributors, wholesalers, dealers, retailers or any other person acting for and on their behalf are restrained 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 is deceptively similar to the plaintiffs‟ registered „EVECARE‟ mark till the final adjudication of the suit."FAO(OS) (COMM) 145/2023 Page 1 of 10
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:30
2. The record would reflect that when the matter was initially called before us on 18 July 2023, the Court had taken on board the statement of Mr. Anand, learned counsel appearing for the respondent / plaintiff, who had on instructions, submitted that the order impugned herein shall not be enforced till the next date. It is the said undertaking which had thereafter been extended from time to time.
3. When the matter was taken up today, Mr. Mehta, learned senior counsel appearing for the respondent / plaintiff submitted that the aforesaid undertaking was causing grave prejudice to the respondent / plaintiff who had been granted an injunction after due contest. It was submitted, therefore, that the respondent / plaintiff be relieved of the undertaking which had been recorded and the stay application moved on behalf of the appellant / defendant be considered on its merits.
4. Mr. Sibal, learned senior counsel who appeared for the appellant / defendant, has while pressing for interim stay of the impugned order addressed the following submissions. It was at the outset submitted that undisputedly the appellant / defendant was granted registration of the trademark "EVECARE" on the basis of an application made on 21 November 2020 and for various products which would fall within the ambit of Class 3 of the Nice Classification. It was contended that despite the learned Single Judge finding that the validity of the aforesaid registration had neither been questioned nor an issue of infringement urged or argued, the impugned injunction has come to be granted.
5. Mr. Sibal pointed out that based upon the registration which was accorded to the appellant / defendant, it had also obtained requisite registration under the Drugs and Cosmetics Act, 1940 in 2021 and had invested huge sums of money in the launch of its FAO(OS) (COMM) 145/2023 Page 2 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:30 product "EVECARE" which is in the nature of an intimate wash used by women across the country.
6. Mr. Sibal submitted that undisputedly the product of the respondent / plaintiff was an ayurvedic medicine which is to be consumed orally and is marketed under the trade name "HIMALAYA EVECARE". According to Mr. Sibal, despite the undisputed fact that both products were envisaged to be used for wholly separate and distinct purposes, the learned Single Judge has proceeded to grant the injunction and the same is liable to be placed in abeyance for the aforesaid reasons.
7. Mr. Sibal, also drew our attention to a table which compares the two products and to the following distinctions which are sought to be highlighted in terms thereof: -
TEST / DEFENDANT'S PLAINTIFF'S
CRITERIA PRODUCT PRODUCT
Nature of goods Cosmetic Ayurvedic medicine
Method of use of Topical application Ingestible tablet/ syrup
the product
Function/ purpose Hygiene Menstrual disorder/uterine
health
Trade channels See Separate Note See Separate Note
Trade connection NO
Competing NO
Complementary NO
Class of consumers Women seeking a cleansing Women seeking ayurvedic
cosmetic vaginal wash medicine to address
menstrual disorders,
discomfort and to maintain
reproductive heath
Manner of use of
trademark
Trade Dress
FAO(OS) (COMM) 145/2023 Page 3 of 10
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:31 Actual NO confusion/association Likelihood of NO confusion /association
8. Learned senior counsel pointed out that as is manifest from the aforesaid comparative table, the appellant / defendant‟s product was a cleansing cosmetic wash as distinct from an ayurvedic medicine which is manufactured and sold by the respondent / plaintiff. Mr. Sibal highlighted the distinguishing features in the two competing products pointing out that while that of the appellant / defendant was concerned with general hygiene, the respondent / plaintiff‟s product was a medicinal preparation liable to be used for treating menstrual disorder and maintaining uterine health. According to learned counsel, the learned Single Judge has clearly erred in failing to bear the aforesaid distinctions in mind.
9. More importantly, Mr. Sibal contended that the learned Single Judge has clearly failed to bear in consideration the distinguishing features in the manner in which the word "EVECARE" is used on the two products as well as the packaging of the competing articles. Mr. Sibal submitted that the learned Single Judge has committed a manifest illegality in holding that the difference in style, get up, packaging and other writing or marks as appearing on the goods would be factors wholly immaterial for the purposes of considering whether the allegation of passing off had been made out.
10. According to learned senior counsel, the aforesaid conclusions as reflected in paragraph 43 of the impugned order are based on a wholly incorrect reading of Kaviraj Pandit Durga Dutt Sharma vs. FAO(OS) (COMM) 145/2023 Page 4 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:31 Navaratna Pharmaceuticals1, which had, in fact, and to the contrary, noted that while the aforenoted factors may not be of import while answering the question of whether an allegation of infringement had been made out, they were of critical importance when it comes to considering an issue of passing off.
11. Mr. Sibal also alluded to the non-disclosure by the respondent / plaintiff of the fact that it had in 2017 launched an intimate wash for women under its house mark "HIMALAYA" without using the trademark "EVECARE". According to Mr. Sibal, the record would reflect that it was after the appellant / defendant had taken steps to adopt "EVECARE" for its intimate wash that the respondent / plaintiff conceived of launching a competing product. According to Mr. Sibal bearing in mind the fact that appellant / defendant held the registered trademark "EVECARE" and had complied with all statutory formalities for the launch of its product way back in 2021, the grant of injunction is wholly unjustified.
12. Mr. Mehta, learned senior counsel appearing for the respondent / plaintiff while reiterating the prima facie conclusions and reasons which stand recorded in the order impugned and which according to him were rightly taken into consideration by the learned Single Judge for the purposes of grant of injunction also submitted that the assertion of the appellant / defendant that it had invested huge sums and that it had started manufacturing its product is clearly incorrect. In fact, according to Mr. Mehta, the same is imported into the country and sought to be placed for sale under the trade name "EVECARE".
13. Having considered the rival submissions which were addressed, we at the outset note that the impugned order itself records that the 1 1964 SCC OnLine SC 14 FAO(OS) (COMM) 145/2023 Page 5 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:31 respondent / plaintiff asserting invalidation of the trademark registration granted in favour of the appellant / defendant for the mark "EVECARE" has already moved a formal application under Section 124 of the Trade Marks Act, 19992 for framing of issues regarding invalidity and seeking permission to file a rectification petition for removal of the registration itself.
14. Quite apart from the above, we note that Section 31 of the Act as framed, only raises a prima facie presumption with respect to the validity of a trademark. It is well-settled that the registration of trademark does not detract from the right of a person to assail its validity either on the ground of infringement or on principles of passing off.
15. From the facts which stand recorded in the impugned order, it appears to be the admitted position that the respondent / plaintiff adopted the mark "EVECARE" in 1997 and has continuously used the same on its various products since 1998. The respondent / plaintiff is also stated to have obtained a registration of the said mark on 02 December 1997. While it is true that the said registration was accorded in respect of medical and pharmaceutical preparations falling in Class 5 of the Nice classification, we are of the considered opinion that the distinction of goods under the Nice classification would not constitute a sufficient ground to either overturn the prima facie conclusions which have come to be recorded by the learned Single Judge nor would it justify this Court placing the impugned order in abeyance. This we do hold, since, consumers who seek to purchase the competing products would not necessarily base their decisions on a Nice classification.
2Act FAO(OS) (COMM) 145/2023 Page 6 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:31
16. We further find that the learned Single Judge has noted that even though and undisputedly the respondent / plaintiff had adopted the mark "EVECARE" in relation to ayurvedic medicinal preparations in 1997, the appellant / defendant adopted the same in November, 2020. It has also come on the record, and which fact has also been duly noticed by the learned Single Judge, that the products of the respondent / plaintiff have been in the market since 1998, whereas the appellant / defendant launched its product around August 2021.
17. It is in the aforesaid backdrop that the learned Single Judge has observed that if the appellant / defendant had carried out a due diligence exercise, it would have been informed about the existence of the product of the respondent / plaintiff with an identical trademark. The impugned judgment also alludes to internet searches throwing up conflicting and confusing results. These aspects were not disputed before us.
18. The learned Single Judge while answering the question of whether there was a likelihood of confusion has further held as follows:-
"33. Applying the aforesaid principles to the facts of the present case, I am of the considered view that the goods of the defendant are similar and allied/cognate to the goods of the plaintiffs. In arriving at the aforesaid finding, the following factors weigh with this Court:
(i) Both the goods of the plaintiffs and the defendant are targeted at the same set of consumers, i.e., women.
(ii) The function of both the products is similar i.e., to maintain a healthy female reproductive system with uterine and vaginal care being the focus. The main purpose of the uterine tonic of the plaintiffs is to increase the level of oestrogen causing growth of commensal bacteria, which in turn results in lowering or maintaining of pH levels between 3.5 to 4.5. This is the optimum pH level required FAO(OS) (COMM) 145/2023 Page 7 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:31 for a healthy vagina. The function of the defendant‟s vaginal wash is also to maintain balanced pH, besides maintaining sanitation and hygiene. In fact, the defendant‟s products state on its packaging, "in order to maintain microflora balance in the feminine area, washing with the product like 'EVECARE' that has pH 3.5 is recommended".
(iii) Both the products can be taken at the same time so as to achieve better results and are hence, complimentary to each other.
(iv) The trade channels of both the products are same - both the products are sold by chemists as well as online pharmacies. The products of the plaintiffs, even though in the nature of a medicine, do not require a doctor‟s prescription and can be freely bought and sold as over-the-counter products.
(v) The products of both the plaintiffs and defendant are sold by online pharmacies under a common category on their websites i.e., „Women Care‟. Reference in this regard may be made to page numbers 165- 169 and 194-203 of the documents filed with the plaint on behalf of the plaintiffs, which are extracts from the website of „TATA 1mg‟ where the products of the plaintiffs and the defendant are sold under the common category of „Women Care‟.
(vi) When a prospective consumer would search for „EVECARE‟ on various third-party e-commerce platforms, such as „Amazon‟, „Netmeds‟ and „TATA 1mg‟, both the products of the plaintiffs and the defendant would show up, which is likely to cause confusion. Reference in this regard may be made to page numbers 144-146 of the documents filed with the plaint and page numbers 11-16 of the documents filed with the rejoinder by the plaintiffs, which are extracts from the aforesaid websites.
(vii) A perusal of the screenshots of third-party websites filed by the plaintiffs clearly shows that the prices at which the two products are sold are similar. Refererence in this regard may be made to the extracts from the website „Netmeds‟ and „TATA 1mg‟ on page numbers 11-16 of the documents filed with the rejoinder by the plaintiffs and the extracts from „Amazon‟ on page numbers 144-146 of the documents filed with the plaint.
(viii) There are common manufacturers for both the products, such as „Piramal‟, „Rapross‟ and the plaintiffs, who FAO(OS) (COMM) 145/2023 Page 8 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:31 manufacture both, the medicine as well as the intimate wash. Reference in this regard may be made to page numbers 90-136 of the documents filed with the rejoinder by the plaintiffs.
19. It is the aforesaid factors which appear to have weighed with the learned Single Judge to answer the issue of likelihood of confusion in favour of the respondent / plaintiff. While granting injunction, the learned Single Judge has also borne in mind that the respondent / plaintiff had been using the trademark "EVECARE" for the past 24 years and thus it could be safely concluded, and at least prima facie, that they had acquired sufficient goodwill and reputation in the mark.
20. While Mr. Sibal may be correct in submitting that the conclusions as framed in paragraph 43 of the impugned order may not be a correct interpretation of the principles which were enunciated by the Supreme Court in Kaviraj Pandit, we find that the impugned order is not based solely or fundamentally on what the learned Single Judge chose to record therein.
21. Prima facie and on a consideration of the rival submissions, we are of the considered opinion that the impugned order cannot be said to suffer from any manifest or patent illegality which may warrant an order of stay being granted. At this stage, and prima facie, we are of the considered opinion that the learned Single Judge has correctly appreciated the issues that arise and has proceeded to grant the injunction taking into consideration germane factors. In any event, it cannot possibly be said that the findings as returned are perverse and could not have been possibly arrived at.
22. On balance, we find ourselves unable to grant the prayers as made in the instant application which shall consequently stand dismissed.
FAO(OS) (COMM) 145/2023 Page 9 of 10This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:31 FAO(OS) (COMM) 145/2023
23. Let this appeal be called for consideration on 18.12.2023.
YASHWANT VARMA, J.
DHARMESH SHARMA, J.
OCTOBER 6, 2023/neha FAO(OS) (COMM) 145/2023 Page 10 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:55:31