INTRODUCTION
The Delhi High Court has granted a temporary injunction restraining DKA Universal Consumer Ventures Limited, the company of actor Deepika Padukone, from using the mark “Lotus Splash” for its face cleanser product, allegedly infringing the appellant’s registered trademark “Lotus” and its formative marks in Classes 3 and 5. The core legal controversy revolves around whether the respondents are entitled to the statutory defence under Section 30(2)(a) of the Trade Marks Act, 1999, which protects bona fide descriptive use of a mark indicating the kind, quality, or characteristics of goods. The Division Bench reversed the learned Single Judge’s order refusing temporary injunction, holding that the respondents’ use of “Lotus Splash” was not merely descriptive but amounted to use as a trademark/sub-brand, thereby infringing the appellant’s registered marks. The court granted interim injunction restraining the respondents from using the impugned mark.
FACTUAL BACKGROUND
Lotus Herbals Private Limited, a cosmetics and beauty products company, instituted a suit alleging trademark infringement against DPKA Universal Consumer Ventures Limited, which markets self-care products under the brand 82°E. One of the products sold by DKA is a face cleanser named “Lotus Splash.” Lotus Herbals asserted that it has been using the “Lotus” mark since 1993 and has built substantial goodwill in relation to over 1,000 skincare, beauty and haircare products sold under the house mark “Lotus.” The plaintiff contended that use of the mark “Lotus Splash” by DPKA amounts to infringement of its registered trademark and is likely to cause confusion or create a presumption of association in the minds of consumers. DKA, in defence, contended that lotus extract is the principal ingredient of its facewash and that use of the word “Lotus” was descriptive of the product’s constituents. It invoked the protection available under Section 30(2)(a) of the Trade Marks Act, 1999, which permits use of a mark to indicate characteristics of goods, as well as Section 35 relating to bona fide description. It was also argued that the products differed in pricing, get-up and channels of sale.
PROCEDURAL BACKGROUND
On January 25, 2024, the Single Judge decided not to grant an interim injunction to Lotus Herbals. The Judge reasoned that the use of “Lotus” in “Lotus Splash” referred to the product’s main ingredient, which is protected under Section 30(2)(a) of the Trade Marks Act. Feeling dissatisfied with this decision, Lotus Herbals took their case to the Division Bench. Justices V. Kameswar Rao and Vinod Kumar then reviewed the situation to determine if interim protection was necessary.
ISSUES
- Whether the mark “Lotus Splash” is prima facie deceptively similar to the registered “Lotus” mark of the plaintiff.
- Whether the defendants are entitled to protection under Section 30(2)(a) and Section 35 of the Trade Marks Act.
- Whether the plaintiff established a prima facie case, balance of convenience and irreparable injury warranting interim injunction.
CONTENTIONS OF THE PARTIES
Lotus Herbals argued that “Lotus” is not just a name but a registered trademark that plays a crucial role in defining their brand identity. They claimed that the use of mark “Lotus Splash” completely incorporates their registered mark and could easily confuse consumers. On the other hand, the defendants maintained that “Lotus” was merely used to describe the inclusion of lotus extract as a key ingredient. They also pointed out that there are significant differences in how the products are presented, their packaging, and their market positioning, suggesting that there’s no real chance of confusion.
REASONING AND ANALYSIS
The Division Bench disagreed with the reasoning of the Single Judge. The Court rendered a prima facie finding that the mark “Lotus Splash” is similar to the plaintiff’s “Lotus” mark and that the latter constitutes the dominant element of the impugned mark. The Bench observed that the statutory defence under Section 30(2)(a) cannot be invoked to justify adoption of a registered trademark as a prominent component of a competing mark, particularly where such adoption may result in consumer confusion. The Court was not persuaded that mere reference to an ingredient would justify the prominent use of “Lotus” in the product’s branding. Having found a prima facie case in favour of Lotus Herbals, the Court held that the balance of convenience lay with the plaintiff and that failure to grant interim protection could cause irreparable harm to its brand and goodwill.
DECISION
The Division Bench granted a temporary injunction restraining the defendants, their directors, dealers, distributors, agents and all persons acting on their behalf from manufacturing, selling, advertising or dealing in cosmetics, beauty and hygiene products under the mark “Lotus Splash” or any other mark identical or deceptively similar to the plaintiff’s “Lotus” trademark, whether used independently or with any prefix or suffix, until final disposal of the suit.
A few key takeaways from this judgement are:
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Prominence is Key
If the name of an ingredient is shown more prominently than the actual brand name, the court may treat it as a brand name, not just a description. In simple terms if you highlight the ingredient in big, bold letters like a brand, you cannot later say, “It’s only describing the product.”
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The “Descriptive Label” Test
If the product already clearly mentions the ingredients in small print (for example, “conditioning cleanser with lotus and bioflavonoids”), then using a big, catchy name like “Lotus Splash” looks more like a sub-brand, not a description. So, if the ingredient is already described elsewhere on the packaging, using it again as the main product name can amount to infringement.
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Digital Footprints Matter
What you do online can show your real intention. In this case, the defendant bought Google keywords like “Lotus Face Wash” so that its product would appear first in sponsored search results. The Court viewed this as proof that the company wanted to benefit from the goodwill attached to the word “Lotus.”. This weakens the argument that the word was used only in a descriptive way.
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Be Consistent in Trademark Filings
You cannot argue that a word is “just descriptive” if you have applied to register similar descriptive names as trademarks for other products. If you treat other similar names as trademarks, the court may assume you are also using this disputed name as a trademark even if you say otherwise.
In this case, the defendant had applied for trademark protection for other similar product names but not for “Lotus Splash,” which raised concerns.
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Prior User Rights
Prior user rights are superior, and registration merely recognises pre-existing common law rights. The appellant has used the mark since 1993 with registrations since 1996.
CONCLUSION
Indian courts have consistently emphasised that the manner of use of a mark is far more important than the explanation offered by a defendant after the fact. Merely labelling a term as “descriptive” does not automatically bring it within the safe harbour of Section 30(2)(a) of the Trade Marks Act, 1999. This judgment once again serves as a cautionary reminder that branding decisions, packaging choices, and even digital marketing strategies must be carefully structured to avoid crossing the line from permissible description into actionable trademark use.