Breaking down the Delhi High Court’s recent order concerning goods of intimate nature (labelled as “Hush Products” by the Court), SpicyIP intern Bhuwan Sarine assesses the Court’s unique finding on likelihood of confusion in case of these products. Bhuwan is a third year B.A., LL.B. (Hons.) student at National Law School of India University, Bengaluru. He is interested in Intellectual Property Laws and the dynamic intersection of law and technology, and seeks to pursue a career in academia and research.
Trademark for ‘Hush Products’: Is there Greater Likelihood of Consumer Confusion?
By Bhuwan Sarine
Recently, a division bench of the Delhi HC, in Wipro Enterprises Pvt. Ltd. v. Himalaya Wellness Company (“Wipro”) upheld the order of the Single Judge granting interim injunction to Himalaya Wellness (“respondents”) in a suit for passing off. While the Court undertook an in-depth analysis of the similarity of products and the factors contributing to the likelihood of confusion, the significant point coming out of the division bench ruling is related to ‘hush products.’ According to the Delhi HC, ‘hush products’ refers to a category of goods considered to be of intimate nature (more on this below). The Court noted that the goods involved were ‘hush products’ and a buyer would be unlikely to ask too many questions about it before purchasing the product. Resultantly, the likelihood of confusion would be heightened due to this peculiar factor.
In this post, I will reflect on the likelihood of confusion specific to ‘hush products.’ I argue that the Court’s reasoning is sound, when viewed from the test of ‘average consumer with imperfect reflection’ as well as the test of ‘initial interest confusion.’ I also argue that the likelihood would be greater in these ‘hush products’ cases.
The Judgement at a Glance
The respondents sold an ayurvedic medicine for uterine health of women under the trademark “EVECARE” and “EVECARE FORTE.” The mark was adopted in 1997 and had been in continuous and extensive use since 1998. In November 2022, they came to know of the appellant using an identical mark for its own product, i.e., a cosmetic intimate wash for women, and filed the suit for injunction. The Single Judge decided in favour of the respondents. Even though an action for infringement was not made out since both the appellant and respondents were registered proprietors of their respective marks, injunction was granted on the basis of passing off because the respondents were the prior users of the mark and had generated substantial goodwill. It is against this decision that the appellant preferred an appeal.
The appellant argued that their product varied from that of the respondents, and the trade dresses of both products were completely different, so as to preclude any likelihood of confusion. The division bench disagreed, noting that the products were allied/related as they broadly related to female reproductive health/hygiene. Further, it was held that since the end users were common, there existed a likelihood of confusion. There were other factors as well which contributed to the likelihood of confusion, such as the marks being identical, trade channels being the same, product category being common on websites and the products being ‘hush products.’ Based on these, the Court upheld the Single Judge’s ruling.
Assessing Likelihood of Confusion in ‘Hush Products’
The term ‘hush products’ has been conceived by the Delhi HC, to refer to a category of products which are of an intimate or personal nature such as contraceptives, sanitary pads, medical appliances relating to reproductive health/hygiene etc. What sets these products apart is the fact that the buyers are less likely to enquire about them openly. The Single Judge cites the 1931 US case of Kotabs, Inc. v. Kotex Co., in distinguishing the likelihood of confusion in this case, from other situations. There, the US Court of Appeals, dealing with trademark for sanitary pads, called the women “exceptional purchasers,” who would hesitate to make inquiries about the product. In the same situation, “casual purchasers” of other products may carry out more inquiries about the product and its origin. (As perhaps a matter of separate enquiry outside the scope of this post, one wonders if the sociological observations from a case nearly 100 years old, from a separate jurisdiction, is the best type of case to cite for this rationale.)
Average Consumer Test: Multi-pronged Nature
The assessment of likelihood of confusion in trademark disputes has a long jurisprudence. One of the dominant tests is the test of ‘average consumer with imperfect reflection.’ Courts have repeatedly held it to be (i) composite, i.e., made up of several factors, and (ii) subjective, i.e., viewed from the perspective of the consumer. In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., the Supreme Court laid down several factors to be taken into account while assessing the likelihood of confusion for an average consumer. They included the nature of the marks, their degree of resemblance, the nature of goods offered, mode of purchase and the class of purchasers. Again, in ITC Ltd. v. CG Foods Pvt. Ltd., it was highlighted by the Karnataka HC that the ‘perceptive’ abilities of an average consumer is measured by balancing multiple factors. The nature of goods sold and the class of purchasers remained the common factors. The takeaway is that the threshold for satisfying the likelihood of confusion varies depending upon the products and the purchasers involved.
Application of the Above Test in Wipro
In Wipro, both the Single Judge and the division bench emphasized on the products being ‘hush products.’ This is noteworthy since the Court accounted for the social stigma and taboo associated with this product category. Even though we live in the 21st century, the reality is that a large number of people may be hesitant to openly inquire or undertake a roving search into the origins of ‘hush products, which include a number of products of intimate or private nature, medical or otherwise.’ In their post on the likelihood of confusion in ‘hush products,’ Prachi Agarwal and Aditi Srivastava refer to Professor J. Thomas McCarthy’s insight on the impact of product category on buyers. In his book Trademarks and Unfair Competition (paywalled link), McCarthy mentioned that buyers exercise a lesser degree of care because of the inherent nature of the product. As a result, confusion between very similar marks would be very likely for buyers of such products.
Now, a counter-argument could be that in the age of the internet, there are numerous sources of getting information about the products, and the level of consumer sophistication is increasing with each passing day. However, it should be kept in mind that the class of purchasers and the level of sophistication is a different factor. The purchasers of ‘hush products’ are not (necessarily) deprived of information because of lack of access to resources, but because of a strong social stigma that exists around talking about these products. Even otherwise, the sophistication argument is flawed. The purchasers of these products are not only a small cross-section of people who are technologically advanced and/or otherwise socially immune to such stigma, but people across genders, age groups, social and educational backgrounds. In such a case, it is fallacious to presume a higher level of sophistication. This point was precisely made in Baker Hughes Ltd. v. Hiroo Khushalani. The Delhi HC said that there may be an informed class of purchasers who are more knowledgeable than ordinary purchasers, but the element of confusion can not be ruled out if the marks are profoundly similar and other factors hint towards a greater likelihood of confusion.
Applying the factors of the test of ‘average consumer with imperfect recollection,’ the circumstances surrounding the purchase substantiate the Court’s stand in Wipro. The impugned marks were identical and the goods involved were allied/cognate goods. Further, the products being ‘hush products’ because of which the purchasers were not expected to engage in a thorough inquiry about it. This would lead to a dearth of information as to the origin of the product. Taken together, these factors are sufficient to lead to the conclusion that there is a greater likelihood of confusion here.
Initial Interest Confusion Test
Another test to assess the likelihood of confusion in trademark law is the Initial Interest Confusion test (“IIC”). In the landmark case of Consim Info Pvt. Ltd. v. Google India Pvt. Ltd., the Madras HC held that this test requires consumer confusion to occur prior to purchase. Under normal circumstances, the likelihood of confusion is required at the time of purchase. However, initial diversion of consumer attention is sufficient to constitute TM infringement as per IIC. Recently, Courts have modified the test under which real confusion is also not required, a possibility is enough. Promatek Industries Ltd. v. Equitrac Corporation is a case in point. Aditya Bhargava reflects on the contemporary relevance of the IIC test while undertaking a review of the Single Bench decision in Mountain Valley Springs India v. Baby Forest Ayurveda. His post can be accessed here.
Viewed from the lens of the IIC test, the division bench’s ruling in Wipro holds true. The Court pointed out that due to the marks being identical and product categories being similar, an internet search for “EVECARE” would display the products of the appellant as well as the respondents. This first impression would easily divert an average consumer to confuse the appellant’s product for the respondents’ product. While purchasing the product online, this would take them to the appellant’s website. This possibility is even greater in case of ‘hush products’ for which purchasers might not cross-check the source like they would do in other product categories. In an era where impulse buying is a reality, increased consumer sophistication does not guarantee consumers engaging in a thorough inquiry to ascertain the source of two products so apparently similar.
If the impugned product is being purchased at a drugstore instead of an e-commerce website, the degree of care would be even lesser because buyers inevitably are less inquisitive in case of ‘hush products.’ As the consumer gets diverted to the incorrect product, the threshold of IIC test is met. Afterall, it is not required that the initial confusion be sustained till the purchase is completed.
What is the Significance of the Ruling?
This ruling stresses on the subjectivity involved in assessing likelihood of consumer confusion. It shows how the threshold for confusion varies with the intersection of a unique product category and social reality of the target consumers. Viewed from the tests of ‘average consumer’ and ‘initial interest confusion,’ the likelihood of confusion appears to be heightened in case of ‘hush products.’ The Court has correctly kept the threshold low since the purchasers do not undertake a detailed inquiry in these cases.