Delhi High Court rejects plea to stop Deepika Padukone's company from using 'Lotus Splash' mark for face cleanser

The Delhi High recently dismissed an application filed by cosmetic and beauty products company, Lotus Herbal to restrain actress Deepika Padukone’s firm from using the mark ‘Lotus Splash’ for a facewash/ face cleanser product [Lotus Herbal Private Limited v DPKA Universal Consumer Ventures Private Limited & Ors]..Lotus Herbal had sued Padukone and her company DPKA Universal Consumer Ventures, claiming that the mark ‘Lotus Splash’ used for their (DPKA Universal Consumer Ventures) product infringed on Lotus Herbal’s ‘Lotus’ trademark..In an order passed on January 25, Justice C Hari Shankar rejected the interim relief application filed by Lotus Herbal after coming to a prima facie conclusion that lotus extract is the prime constituent of ‘Lotus Splash’ facewash and the use of ‘Lotus’ in the product's name is to indicate this fact.The Court was of the view that there was no attempt by Padukone's company to confuse the consumers and that they were entitled to protection under Section 30(2)(a) of The Trade Marks Act. Section 30(2)(a) states that the use of a registered trademark in such a manner as to indicate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services or other characteristics of the goods or services is not trademark infringement.“The use of 'lotus' is a key factor in rendering the entire mark 'Lotus Splash' indicative of the characteristics of the defendants’ face wash, containing, as its key ingredient, lotus flower extract. Moreover, as already observed earlier, the word 'Splash' is also indicative of the nature of the product, especially when used in conjunction with 'Lotus,'” Justice Hari Shankar held..He added,“In each of the packs of the defendants’ product, the mark '82°E' figures at the lower edge of the bottle. Though this may not be determinative of the controversy, if all the bottles are lined up next to each other, as they may well be, in a store which dispenses the said products, or in a beauty salon – the consumer would immediately note the common '82°E' brand name at the foot of the bottle and that in each case, the name on the face of the bottle describes the ingredients of the product. The use of the common “82°E” indicates that the trade mark of the defendants is '82°E' and not 'Lotus Splash', 'Licorice Beam' 'Turmeric Shield' or anything else.” 82°E is the name of the self-care brand started by Padukone. .The Court observed that the products offered by Lotus Herbal and Padukone’s company are completely dissimilar in appearance with a wide difference in the prices as well.“A consumer who uses such products would be aware of the difference between 'Lotus Splash' and the plaintiff’s lotus family of products. It cannot be said, therefore, that the defendants are by using the goods name 'Lotus Splash' seeking to pass off its product as the product of the plaintiff,” the Court held..It was Lotus Herbal’s (plaintiff) case that they started using the mark Lotus in 1993 and today have a repertoire of over 1,000 skin, beauty and hair care products sold under the house mark/trademark Lotus.They said that the use of the name “Lotus Splash” by the defendant (Padukone’s company) amounted to infringement of the plaintiff’s registered Lotus formative marks and that such usage also misrepresented the product of the defendants as having an association with the plaintiff.It was contended that the plaintiff and the defendants are both using the mark Lotus – though, in the case of the defendants, in conjunction with the word Splash – for similar products. As such, it was argued that there is bound to be confusion in the minds of the public or a presumption of association between the marks of the plaintiff and the defendants..Meanwhile, DPKA argued that they are clearly entitled to the benefit of Section 30(2)(a) and Section 35 of The Trade Marks Act, 1999.The defendant added that lotus is a principal ingredient of Lotus Splash product and is, therefore, indicative of its constituents.It was further stated that there are clear distinctions in channels of sale, pricing and get-up of the products offered by Lotus Herbal and the defendants..The Court considered the arguments and opined that if the case is only viewed from the lens of Section 29 of the Trade Marks Act, a case of infringement would be made out. However, Section 30(2) of the Trade Marks Act is an exception to Section 29 and the defendant is entitled to benefit of Section 30(2)(a), the Court said. “Lotus forms such a dominant part of the overall mark “Lotus Splash” as to render the mark prima facie indicative of lotus flower extract as a key ingredient of the product, and, therefore, so as to entitle the defendants to the benefit of Section 30(2)(a) of the Trade Marks Act… Given the prominence of lotus extract as an ingredient of the defendants’ impugned product, as is apparent from the material cited by Mr. Dayan Krishnan [defendants’ counsel], the moniker “Lotus Splash” is clearly indicative of the existence of lotus extract as an ingredient. That suffices, for Section 30(2)(a) to apply.”The Court, therefore, concluded that no case of infringement or passing off was made out against the defendants (Padukone's company). It then proceeded to dismiss Lotus Herbal’s application..Senior Advocate Akhil Sibal along with advocates Abhishek Bansal, Asavari Jain, Mohan Vidhani, OP Bansal, DK Gupta, Bahuli, Rahul Vidhani, Prakhar Singh, Elisha Sinha and Mikshita Gautam appeared for Lotus Herbal.DPKA Universal Consumer Ventures' was represented through Senior Advocate Dayan Krishnan along with advocates Pravin Anand, Ameet Naik, Dhruv Anand, Madhu Gadodia, Udita Patro, Sujoy Mukherji, Nimrat Singh, Sampurnaa Sanyal, Tarini Kulkarni, Sanjeevi Sheshadri and Shreedhar Kale from Anand and Naik..[Read Judgment]