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.
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.
Relief 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
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
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.
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.
The Case Law Discussed:
Case Title: Himalaya Wellness Company Vs. Wipro Enterprises Pvt. Ltd.
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.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539