Delhi High Court restrains Deepika Padukone's company from using 'Lotus Splash' mark for its face cleanser

The Delhi High Court on Monday passed an interim order restraining actor Deepika Padukone's company DPKA Universal Consumer Ventures from using the mark ‘Lotus Splash’ for its facewash/ face cleanser product [Lotus Herbals Private Limited v DPKA Universal Consumer Ventures Limited & Ors]. .Padukone's self-care brand 82°E sells a face cleanser named Lotus Splash.A Division Bench of Justices V Kameswar Rao and Vinod Kumar today rendered a prima facie finding that the Lotus Splash mark was similar to the the lotus mark of another cosmetic and beauty products company, Lotus Herbals Private Limited.The Division Bench overruled a single-judge's order of January 25, 2024, which had refused an injunction against Padukone. The single-judge had said 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.It was held that Lotus Splash mark was protected under Section 30(2)(a) of the Trade Marks Act which states that the use of a trademark 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.However, the Division Bench said that it does not agree with the single-judge's reasoning. "We grant the prayer for temporary injunction and restrain the respondents, their directors, partners, owners, dealers, distributors, agents, stockiest and servants, employees, assigns and all other persons acting on their behalf from manufacturing, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in Cosmetics, Beauty and Hygiene products under the impugned trade mark “Lotus Splash” or “Lotus” derivative marks or any other identical and/or deceptively similar trade marks to that of the plaintiffs trade mark being “Lotus” whether being used independently or with any prefix or suffix till the final disposal of the suit," the Court ordered. .Lotus Herbals had sued Padukone and her company DPKA Universal Consumer Ventures, claiming that the mark ‘Lotus Splash’ used for DPKA's product infringed on Lotus Herbal’s ‘Lotus’ trademark.Lotus Herbals stated that they started using the mark in 1993 and today have a repertoire of over 1,000 skin, beauty and hair care products sold under the house mark/trademark Lotus.The company said that the use of the name “Lotus Splash” by Padukone’s company amounted to infringement of Lotus' registered marks and that such usage. Further, it was contended that there is bound to be confusion in the minds of the public or a presumption of association between the marks of Lotus Herbals and the DPKA Universal.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.DPKA added that lotus is a principal ingredient of Lotus Splash product and was, 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 Herbals and the defendants.After the single-judge denied Lotus the interim relief, the company challenged the order before the Division Bench..Senior Advocate Chander M Lall with advocates Vaibhav Vutts, Aamna Hasan, Aarya Deshmukh, Vaibhavi SG and Annanya Mehan appeared for Lotus Herbals. .Senior Advocate Dayan Krishnan with advocates Pravin Anand, Ameet Naik, Dhruv Anand, Madhu Chaudhary, Udita Patro, Sanjeevi Seshadri, Nimrat Singh, Dhananjay Khanna and Bhavya Verma represented DPKA Universal Consumer Ventures..[Read Judgement].Follow Bar and Bench channel on WhatsAppDownload the Bar and Bench Mobile app for instant access to the latest legal news.