Delhi High Court Injuncts Deepika Padukone’s 82°E From Using ‘Lotus Splash’; Division Bench Finds Prima Facie Infringement Of ‘Lotus’ Mark

Delhi High Court Injuncts Deepika Padukone’s 82°E From Using ‘Lotus Splash’; Division Bench Finds Prima Facie Infringement Of ‘Lotus’ Mark

Introduction

The Delhi High Court has granted a temporary injunction restraining DPKA Universal Consumer Ventures Limited, the company of actor Deepika Padukone, from using the mark “Lotus Splash” for its face cleanser product. The Division Bench overruled a prior order of a Single Judge that had refused interim relief and held, prima facie, that the impugned mark was deceptively similar to the registered “Lotus” mark of Lotus Herbals Private Limited.

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 DPKA 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.

DPKA, 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

The Single Judge, by order dated 25 January 2024, refused to grant an interim injunction to Lotus Herbals. The Single Judge held that the use of “Lotus” in “Lotus Splash” was indicative of the product’s primary ingredient and therefore protected under Section 30(2)(a) of the Trade Marks Act.

Aggrieved, Lotus Herbals preferred an appeal before the Division Bench. The matter was heard by Justices V. Kameswar Rao and Vinod Kumar, who examined whether interim protection was warranted.

Issues

1. Whether the mark “Lotus Splash” is prima facie deceptively similar to the registered “Lotus” mark of the plaintiff.

2. Whether the defendants are entitled to protection under Section 30(2)(a) and Section 35 of the Trade Marks Act.

3. Whether the plaintiff established a prima facie case, balance of convenience and irreparable injury warranting interim injunction.

Contentions of the Parties

Lotus Herbals contended that “Lotus” is its registered and well-established trademark and forms the dominant and essential feature of its brand identity. It was submitted that the adoption of “Lotus Splash” subsumes the plaintiff’s registered mark in its entirety and is likely to cause confusion among consumers.

The defendants argued that “Lotus” was used descriptively to indicate the presence of lotus extract as a key ingredient. It was further submitted that there were clear differences in product presentation, trade dress and market positioning, and that no likelihood of confusion existed.

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.

In this case the appellant was represented by Mr. Chander M. Lall, Senior Advocate with Mr. Vaibhav Vutts, Ms. Aamna Hasan, Ms. Aarya Deshmukh and Ms. Vaibhavi SG, Ms. Annanya Mehan, Advocates.Meanwhile the respondent was represented by Mr. Dayan Krishnan, Senior Advocate with Mr. Pravin Anand, Mr. Ameet Naik, Mr. Dhruv Anand, Ms. Madhu Chaudhary, Ms. Udita Patra, Mr. Sanjeevi Seshadri, Ms. Nimrat Singh, Mr. Dhananjay Khanna and Ms. Bhavya Verma, Advocates for R1 & R2.