The Delhi High Court has granted an interim injunction restraining Deepika Padukone’s company from using the ‘Lotus Splash’ mark for its face cleanser. The Court held that the mark is prima facie similar to Lotus Herbals’ registered ‘Lotus’ trademark and may cause consumer confusion.
The Delhi High Court on Monday passed an interim order stopping actor Deepika Padukone’s company, DPKA Universal Consumer Ventures Limited, from using the mark “Lotus Splash” for its facewash and face cleanser products. The order was passed in the case titled Lotus Herbals Private Limited v DPKA Universal Consumer Ventures Limited & Ors.
Deepika Padukone’s self-care brand 82°E currently sells a face cleanser under the name “Lotus Splash”. However, the dispute arose after Lotus Herbals Private Limited objected to the use of the word “Lotus” in the product name, claiming that it infringed its long-standing registered trademark.
A Division Bench comprising Justice V Kameswar Rao and Justice Vinod Kumar gave a prima facie finding that the mark “Lotus Splash” is similar to the registered “Lotus” trademark of Lotus Herbals, which is a well-known cosmetics and beauty products company in India.
The Bench set aside the earlier order of a single judge dated January 25, 2024, which had refused to grant an injunction against Padukone’s company.
Earlier, the single judge had held that lotus extract was the main ingredient of the “Lotus Splash” facewash and that the use of the word “Lotus” was only descriptive in nature. The single judge had observed that the mark was protected under Section 30(2)(a) of the Trade Marks Act, 1999.
This provision allows the use of a trademark to describe the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of goods or services, and such use does not amount to infringement.
However, the Division Bench disagreed with this reasoning and granted interim protection to Lotus Herbals. In its detailed order, the Court stated:
“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,”
Lotus Herbals had filed the suit claiming that the mark “Lotus Splash” used by DPKA for its face cleanser infringed its registered “Lotus” trademark. The company informed the Court that it has been using the “Lotus” mark since 1993 and has built a strong reputation in the market. Today, it offers more than 1,000 skincare, beauty, and haircare products under the house mark “Lotus”.
According to Lotus Herbals, the use of “Lotus Splash” by Padukone’s company amounts to trademark infringement and is likely to create confusion among consumers. The company argued that customers may assume a connection or association between Lotus Herbals and DPKA Universal Consumer Ventures because of the similar branding.
On the other hand, DPKA Universal Consumer Ventures argued that it is entitled to protection under Section 30(2)(a) and Section 35 of the Trade Marks Act, 1999. The company submitted that lotus is a key ingredient in its “Lotus Splash” product and that the word “Lotus” is being used only to describe the product’s constituents.
It also argued that there are clear differences in pricing, marketing channels, packaging, and overall appearance between the products sold by Lotus Herbals and those sold by the defendants.
After the single judge denied interim relief to Lotus Herbals, the company filed an appeal before the Division Bench, which has now granted the temporary injunction in its favour.
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Senior Advocate Chander M Lall, along with advocates Vaibhav Vutts, Aamna Hasan, Aarya Deshmukh, Vaibhavi SG and Annanya Mehan, appeared for Lotus Herbals. Senior Advocate Dayan Krishnan, along 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.
The matter will now proceed further before the Delhi High Court, and the final outcome will decide whether Deepika Padukone’s brand can continue using the name “Lotus Splash” for its face cleanser.
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