New Delhi: The Delhi High Court has come to the rescue of actor Deepika Padukone’s brand for using the mark ‘Lotus Splash’ for a face wash— a product that Lotus Herbal claimed infringed their trademark.
In a judgment passed on 25 January, Justice C. Hari Shankar rejected an application for a provisional injunction against ‘Lotus Splash’, and asserted, “It is quite obvious that no case of passing off can prima facie lie in the present case, especially as the only common feature between the plaintiffs and defendants’ mark is the word ‘lotus’.”
He observed that the products, in this case, are “completely dissimilar in appearance with a wide difference in the prices”.
“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 observed.
Lotus Herbals has sued DPKA Universal Consumer Ventures Private Limited, which has been co-founded by Deepika. The company is behind Deepika’s brand, 82°E.
Lotus Herbals has submitted that it was aggrieved by the use of the name and logo, ‘Lotus Splash’, for the face wash sold by Deepika’s company. The use of the name ‘Lotus Splash’ for the facewash amounts to infringement of their registered trademark, ‘LOTUS’, it has asserted.
The court rejected its interim application for injunction for now, asserting that “no prima facie case for grant of injunction is made out”.
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‘Likely to cause confusion’
Lotus Herbals told the court that it has over 1,000 skin, beauty and hair-care products, all of which are sold under the trademark ‘LOTUS’.
It said that the use of the mark ‘LOTUS’ began in 1993, and that it had also registered its copyright on the logo in February 2011. It also spoke of its goodwill, and pointed out that it was the sponsor of the IPL cricket team King XI Punjab from 2017 to 2023.
In its judgment, the court considered whether the product violates Section 29 of the Trade Marks Act. Section 29(1) talks about the infringement of registered trademarks, and mentions the circumstances in which such infringement happens.
For instance, Section 29(1) says that a registered trademark is infringed by a person who is not the registered proprietor or a licensee, but uses a mark identical with or deceptively similar to the registered trademark during the course of trade of goods or services similar to those covered by the trademark.
However, the court pointed out that the allegedly infringing mark is not ‘Lotus’ but ‘Lotus Splash’, and that Lotus Herbals does not hold any registration for the mark ‘Lotus Splash’. It, therefore, felt that Section 29(1) does not apply.
Under Section 29(2)(b), a registered trademark is infringed when a person who is not the registered proprietor or a licensee, uses the mark in a way in which it is “likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark.”
Section 29(2)(b) also talks about a situation in which the rival marks are similar and the goods or services in respect of which they are used are either identical or similar, and that because of the existence of these two factors/circumstances, there is likelihood of confusion on the part of the public or of the public believing an association between the marks.
Examining these three conditions— similar marks, similar goods and likelihood of confusion— the court opined that the three ingredients are prima facie satisfied in this case, and that prima facie, a case of infringement exists.
“At a prima facie stage, there is no reason for this court to feel that a consumer of average intelligence and imperfect recollection, who has first seen the plaintiff’s ‘Lotus Herbal’ product and, later, comes across the defendants’ ‘Lotus Splash’ face wash, would not, at least at first impression, be inclined to believe an association between the two products, especially as, in both names, ‘Lotus’ forms the predominant part,” it said.
However, Section 30, which lists down exceptions to Section 29 of the Trade Marks Act 1999, came to Deepika’s rescue. Deepika’s company was represented by senior advocate Dayan Krishnan and a team from the law firm, Anand and Naik.
‘Lotus’ as key ingredient
The court accepted the contention that Deepika’s company is entitled to protection of Section 30(2)(a), which says that a registered trade mark is not infringed when the use of the mark indicates the various characteristics — like kind, quality, quantity, intended purpose, value, geographical origin — of the goods.
It then asserted that the manner in which Deepika’s company advertises the product, it has lotus extract as its essential and prime component.
The court observed that, prima facie, it was convinced that the words ‘Lotus Splash’ immediately convey to the average consumer the impression that the product contains ‘lotus’ as a key ingredient.
It noted that they use similar names for all their products in which the key ingredients of the product form the first word of the name such as ‘Ashwagandha Bounce’, ‘Turmeric Shield’, ‘Licorice Beam’, ‘Gotu Kola Dew’, and ‘Patchouli Glow’.
It, therefore, noted that ‘Lotus Splash’ is not an odd man out. The first word in these names was intended to convey the main ingredient in the product, and the second word reveals an interesting feature, the court said.
“‘Lotus Splash’ is a face wash, so that the word ‘Splash’, when used with ‘Lotus’, immediately informs the consumer that the product contains lotus extract and is to be splashed on the face. The entire mark ‘Lotus Splash’ is, therefore, inherently indicative not only of the primary constituent of the product, which is lotus flower extract, but also of the characteristic of the product as a face wash,” the court explained.
It then concluded: “Neither is it coincidence nor is it an attempt to confuse the consumers with the plaintiff’s product.”
The court, therefore, observed that this was “one of those cases in which, in my view, over-analysis would obfuscate an essentially simple issue.”
(Edited by Richa Mishra)