Delhi High Court Upholds Interim Injunction Against Use of Identical Mark “EVECARE” by Appellant for Female Hygiene Products: “Prima Facie Passing Off Case Established”

Court’s Decision

The Delhi High Court dismissed the appeal against an interim injunction order passed by the Single Judge, which restrained the appellant from using the mark “EVECARE” for its intimate hygiene products. The court held that there was a prima facie case of passing off, given that both the appellant and the respondents use the identical mark “EVECARE” for goods related to female hygiene and reproductive health. The injunction order was upheld as the Single Judge’s findings did not suffer from any illegality or manifest error.

Facts

1. The Respondents have been using the mark “EVECARE” since 1998 for ayurvedic proprietary medicines, specifically for uterine health and regulating menstruation. The mark is registered in Class 5 of the Trade Marks Act, 1999.
2. The Appellant, an FMCG company, expanded its product line in 2020 to include intimate hygiene products and launched an intimate wash under the identical mark “EVECARE” in 2021. The mark was registered in Class 3.
3. The Respondents issued a cease-and-desist notice to the Appellant in November 2022, which went unheeded, leading to the present suit for passing off and the grant of the interim injunction.

Issues

• Whether the Respondents, as prior users of the mark “EVECARE,” have established a prima facie case of passing off against the Appellant.
• Whether the use of an identical mark in unrelated classes can lead to confusion and deception.

Petitioner’s Arguments

1. The Appellant argued that their use of the mark “EVECARE” in Class 3 was distinct from the Respondents’ use in Class 5.
2. They contended that there was no likelihood of confusion as the products catered to different consumer needs: the Respondents’ product was an ingestible medicine, while the Appellant’s was an external intimate wash.
3. It was argued that the packaging and trade dress of both products were sufficiently different to avoid any confusion.
4. The Appellant claimed that the mark was adopted in good faith after conducting a due diligence search and that it had invested heavily in promoting its brand.

Respondent’s Arguments

1. The Respondents emphasized that they were prior users of the mark and that “EVECARE” had acquired substantial goodwill over two decades.
2. They argued that both products, despite falling under different trademark classes, were related as they pertain to female reproductive health and hygiene.
3. They submitted that the Appellant’s use of the identical mark would mislead consumers, given that both products are sold under a common category on e-commerce platforms.
4. The Respondents argued that both products target the same consumer base—women—and that the appellant’s adoption of the mark after 22 years of the respondent’s use demonstrated dishonest intent.

Analysis of the Law

The court relied on the principles of passing off, as elucidated in previous judgments, including N.R. Dongre v. Whirlpool Corporation and S. Syed Mohideen v. P. Sulochana Bai. It reiterated that the rights of prior users are superior and unaffected by the registration rights of a subsequent user. The court noted that a passing-off action is premised on the likelihood of deception, and the primary focus should be on whether the use of the mark is likely to cause confusion among the public.

Precedent Analysis

The court distinguished the present case from Sun Pharmaceutical Laboratories Ltd. v. Hetero Healthcare Ltd., where the marks were visually dissimilar. Instead, it emphasized the precedent set in Pfizer Ltd. v. Eurofood Link (U.K.) Ltd., where similarity in the nature, use, and consumer base of the goods was deemed more relevant than mere classification differences.

Court’s Reasoning

1. The court agreed with the findings of the Single Judge that both products pertain to female reproductive health and are sold through common channels such as chemists and online pharmacies.
2. It held that the identical mark “EVECARE” used by both parties, despite registration in different classes, would likely lead to confusion in the minds of consumers.
3. The court noted that even though the appellant’s mark was registered under Class 3, the distinctiveness of the respondent’s long-standing use and goodwill of “EVECARE” in Class 5 cannot be undermined.
4. The court observed that the confusion was more likely as both products are classified as “hush products” that consumers may hesitate to openly inquire about, leading to a higher likelihood of deception.

Conclusion

The appeal was dismissed, and the interim injunction order was upheld. The court emphasized that the observations made were prima facie and would not influence the final determination of rights after the trial.

Implications

The ruling underscores the importance of safeguarding prior user rights, especially in cases where identical marks are used for related goods, even if they fall under different trademark classes. The decision serves as a cautionary reminder for companies to conduct comprehensive searches and due diligence before adopting marks that are identical or similar to existing ones in unrelated classes, especially when the consumer base and nature of goods overlap.

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