Background of the Case
In the case of Lotus Herbal Private Limited v. DPKA Universal Consumer Ventures Private Limited & Ors, the dispute pertains to an application filed by the plaintiff, Lotus Herbal, to restrain the defendant, actress Deepika Padukone’s company DPKA Universal Consumer Ventures (referred to as DPKA), from utilizing the trademark ‘Lotus Splash’ for a facewash or face cleanser product. The matter was adjudicated by the Delhi High Court, and the order was rendered on January 25.
Plaintiff’s Arguments
Lotus Herbal alleged trademark infringement, asserting that DPKA’s use of ‘Lotus Splash’ encroached upon Lotus Herbal’s registered ‘Lotus’ trademark. The plaintiff contended that the prominent use of ‘Lotus’ in the defendant’s product name created confusion and misrepresented an association with Lotus Herbal’s products. Lotus Herbal claimed a history of using the ‘Lotus’ mark since 1993 and highlighted its repertoire of over 1,000 skin, beauty, and hair care products sold under the ‘Lotus’ trademark. Lotus Herbals accused the defendant of trademark infringement and sought the protection of section 29 of the Trade Marks Act, 1999.
Defendant’s Arguments
DPKA, the defendant, argued that their use of ‘Lotus Splash’ was protected under Section 30(2)(a) of The Trade Marks Act, 1999 which tolerates a limited level of confusion between the marks in the interest of free competition. They emphasized that lotus extract was the prime constituent of the facewash, and the use of ‘Lotus’ in the product’s name was indicative of this key ingredient. DPKA further asserted that there were clear distinctions in the channels of sale, pricing, and appearance of the products offered by Lotus Herbal and DPKA. The presence of the ’82°E’ brand name on the packaging reinforced that their primary trademark was ’82°E,’ not ‘Lotus Splash.’
Ratio Decidendi
The Court noted that there exists a marked dissimilarity in the appearance and pricing of the products provided by Lotus Herbal and Padukone’s company. Nevertheless, it emphasized that Section 30(2) of the Trade Marks Act serves as an exception to Section 29, thereby entitling the defendant to the advantages afforded by Section 30(2)(a).
Held
On January 25, 2024 Justice C. Hari Shankar, after a prima facie evaluation, dismissed the provisional remedy petition submitted by Lotus Herbal. The Court held that the ‘Lotus Splash’ facewash is lotus extract, and the incorporation of the term ‘Lotus’ in the product’s nomenclature serves the purpose of denoting this particular characteristic. Observing that DPKA had no intention to confuse consumers, and the use of ‘Lotus’ in conjunction with ‘Splash’ indicated the key ingredient (lotus extract) and the nature of the product, the Court concluded that no case of infringement or passing off was established and that they were entitled to protection in accordance with the stipulations delineated in Section 30(2)(a) of The Trade Marks Act. The Court highlighted the dissimilarity in appearance and pricing of products offered by both parties, affirming that consumers would discern the distinction between ‘Lotus Splash’ and Lotus Herbal’s products. Therefore, the application filed by Lotus Herbal was dismissed.
