How to navigate 'hush' branding disputes

Trademark disputes are often where legal principles and the dynamics of commerce and consumer perception intersect. A recent judgment from the Delhi High Court (Himalaya Wellness Company v Wipro Enterprises Private Limited CS(COMM) 118/2023) involving rival menstrual health and hygiene products is significant in this regard.

The case: ayurvedic tonic versus intimate hygiene wash

Himalaya – a well-known Indian company that has been engaged in the production and distribution of ayurvedic preparations since 1930 – markets an ayurvedic uterine tonic for menstrual health, branded as EVECARE and EVECARE FORTE. The product aims to alleviate symptoms of dysfunctional uterine bleeding and support uterine health. EVECARE has been registered as a trademark by Himalaya in Class 5 since 1997 and has been on the market since 1998.

Wipro, the defendant, registered EVECARE as a trademark in Class 3 in November 2020 for an intimate hygiene wash that it subsequently launched in August 2021. Himalaya issued a cease and desist notice but Wipro declined to comply. As a result, Himalaya filed a lawsuit alleging passing off and trademark infringement.

Wipro made detailed submissions in its defence. It contended that EVECARE is derived from the words 'Eve', the name of the biblical first woman and a symbol of femininity, and 'care', which conveys a protective and nurturing essence. Further, the rival products were categorised differently. Himalaya's EVECARE products, available in tablet and syrup form, were protected for medicinal and pharmaceutical products in Class 5. By contrast, Wipro’s mark pertained to an external use intimate wash - a cosmetic product in Class 3. Wipro also stressed dissimilar packaging and trade dress that minimised the likelihood of consumer confusion, including Himalaya’s prominent use of its house mark alongside the brand name EVECARE.

Court decision

In light of Wipro’s registration for the EVECARE mark in Class 3, the validity of which Himalaya did not challenge, the court held that the trademark infringement claim was untenable.

With regard to passing off, it recognised Himalaya's prior rights in EVECARE and said that it was a coined mark devoid of dictionary meaning. Wipro had offered no reasonable explanation for adopting an identical mark for allied and cognate goods. Its conduct was clearly disingenuous owing to its probable awareness of Himalaya's decades-long use of the EVECARE mark in the Indian market.

Contrary to Wipro’s belief, the court identified a strong likelihood of confusion due to the interconnected nature of the rival products. They concluded that Himalaya’s uterine tonic and Wipro’s intimate wash shared a common consumer base and exhibited robust trade connections. Further, it acknowledged that both products were so-called ‘hush products’ that tended to invite minimal inquiries from buyers on account of the social taboos surrounding open discussions on women’s menstrual and reproductive hygiene.

Foreign case references were also relied upon to show how female buyers could be differentiated from casual purchasers when it came to matters of menstrual and reproductive health. The court also pointed out that when it comes to online shopping – a crucial channel of commerce today - searches are often conducted using trademarks themselves. Thus, Himalaya’s use of its house mark together with EVECARE would be unhelpful. Wipro was consequently restrained from utilising the EVECARE mark.

Key takeaways

This case spotlights the interplay between legal doctrine and commercial realities. It highlights the pivotal role that courts can play in resolving matters where cultural sensitivities, consumer behaviour and business interests are entwined.