LOTUS HERBALS PRIVATE LIMITED v. DPKA UNIVERSAL CONSUMER VENTURES PRIVATE LIMITED & ORS

LOTUS HERBALS PRIVATE LIMITED v. DPKA UNIVERSAL CONSUMER VENTURES PRIVATE LIMITED & ORS

CS(COMM) 454/2023

Decided on 25.01.2024

Brief Facts:

The plaintiff in this case claimed to have a vast range of over 1000 skin, beauty, and hair care products all sold under the house mark/trade mark 'LOTUS'. Additionally, the plaintiff held the copyright for the logo registered in their favor since 10-02-2011. The plaintiff was aggrieved by the defendants' use of the name/logo 'Lotus Splash' for their face cleanser/face wash product. They argued that this unauthorized use constituted an infringement of the plaintiff's registered 'LOTUS' formative marks and created a false impression that the defendants' product was associated with the plaintiff. Despite issuing a notice to cease and desist on 06-02-2023, the defendants persisted in using the 'Lotus Splash' mark. Consequently, the plaintiff initiated legal action against the defendants, seeking a permanent injunction to prevent them from using 'Lotus' as part of their product’s mark.

Plaintiff’s Arguments:

The situation arises from both the plaintiff and defendants using the mark "Lotus," albeit with the addition of "Splash" by the defendants for similar products. This similarity in branding is likely to cause confusion among consumers or lead to an assumption of a connection between the plaintiff's and defendants' marks. Importantly, when the defendants chose to adopt the "Lotus Splash" mark, they were fully conscious of the plaintiff's existing registered "Lotus" formative marks.

The defendants have argued that they use the "Lotus Splash" mark in a descriptive manner. Defendant has applied for registration of all marks, except "Lotus Splash," as trademarks under the Trade Marks Act. If "Ashwagandha Bounce," "Licorice Beam," "Patchouli Glow," and "Turmeric Shield" are being used in the trade mark sense, the defendants argue that they cannot seek to contend otherwise in the case of "Lotus Splash."

The defendants submitted an affidavit on 8 August 2023 to the Court, claiming that names like "Ashwagandha Bounce," "Turmeric Shield," and "Lotus Splash" were product names, not trade marks. They argued that these names only served to identify the products by their ingredients. However, this argument is deemed invalid as the defendants have indeed applied for these names as trademarks.

Plaintiff argues that "Lotus" in "Lotus Splash" should not be considered descriptive but, at most, suggestive. He asserts that face wash products are not mandated to include "Lotus" in their composition. Additionally, he contends that consumers primarily focus on the mark's name rather than its ingredients.

Even upon inspecting the "Lotus Splash" bottle, it is evident that "Lotus Splash" is employed as a trade mark. The mark "82°E" is placed inconspicuously at the base of the bottle, emphasizing the prominence of "Lotus Splash" as the primary branding element.

An invoice dated 29 May 2023, provided by the plaintiff, showcases the sale of the disputed product labeled as "Lotus Splash conditioning cleanser." Notably, in this invoice, there is no mention of "82° E" whatsoever.

The market confusion is apparent as a Google search for "lotus" displays both the plaintiff's and defendants' products in the search results. Additionally, the defendants' Instagram page prominently features the name "Lotus Splash,"

It is argued that an infringing trade mark can only be protected under Section 30(2)(a) if it is deemed "purely descriptive."

If the defendants' argument is upheld, they could potentially register "Lotus Splash" as a trade mark in the future by asserting its acquired reputation and secondary meaning. Emphasizing the straightforward infringement nature of the case, the plaintiff requests interim injunctive relief as outlined in this application.

Defendant’s Arguments:

In response, it is argued that the defendants are rightfully eligible for the protection under Section 30(2)(a) as "lotus" is a primary ingredient in the "Lotus Splash" product, making it indicative of its components. This argument suggests that the use of "lotus" in the product's name is directly linked to its ingredients, justifying the defendants' claim to this protection under the law.

On the advertisement page, the defendant highlights that the ingredients of Lotus Splash are listed, including "Nelumbo Nucifera Extract – A lotus plant extract that contains antioxidants." Additionally, reference is made to advertisements of Lotus Splash on the defendants' website, where lotus or lotus extract is emphasized as a key ingredient in the product.

The defendant argues that Section 30(2)(a) does not specifically mention "use in the trademark sense." Furthermore, they claim entitlement to the benefits of Section 35 of the Trade Marks Act. The defendant asserts that all cosmetic products are sold under the 82°E mark consistently, demonstrating good faith. The prominent display of the 82°E mark on each product further supports their argument regarding the legitimate use of marks across their product range.

In response to the current application, the defendant has included a comparative representation of the products to highlight their distinct appearances and showcase their complete dissimilarity. Regarding the plaintiff's claim that the defendant had sought to register other similar marks as trademarks, the defendant argues that even if these applications were made for registering descriptive trademarks, they should be considered misguided at most and cannot serve as a barrier against the defendants in the current case.

Court Judgment:

This case is one where excessive analysis would complicate a fundamentally straightforward matter. The defendants' advertising of the disputed product clearly highlights lotus extract as its essential, if not primary, component. The inclusion of "Lotus" in "Lotus Splash" serves the purpose of indicating this crucial aspect. This deliberate choice is not coincidental nor an effort to mislead consumers by mimicking the plaintiff's product. It is important to note that while "Lotus" is significant in conveying the product's characteristics, it is not the sole indicator. In an indicative mark, any word within the mark that prominently represents a characteristic can render the entire mark indicative of that feature.

In each of the defendants' product packs, the mark "82°E" is prominently displayed at the lower edge of the bottle. While this may not be conclusive in the case, if all the bottles are arranged together in a store or beauty salon, the common "82°E" brand name at the bottom of the bottles would immediately catch the consumer's attention. The use of the common "82°E" indicates that the defendants' trade mark is "82°E" and not "Lotus Splash," "Licorice Beam," "Turmeric Shield," or any other mark.

It has been determined that the use of the mark "Lotus Splash" is not infringing in nature as it accurately reflects the characteristics of the goods it represents. As a result, no injunction can be granted. Additionally, there is no basis for a case of passing off, as the only similarity between the plaintiff's and defendant's marks is the word "lotus". The products themselves are vastly different in appearance and price, and consumers would easily be able to distinguish between them. Therefore, it cannot be claimed that the defendant is attempting to pass off their product as that of the plaintiff. Based on this discussion, the application for an injunction is dismissed.

Court Analysis

The court analyzed whether the defendants' use of "Lotus Splash" infringed the plaintiff's rights and whether an injunction was necessary. The court found that the similarity between the marks was not sufficient to cause confusion among consumers, as the defendants' use of "Lotus Splash" is directly linked to the primary ingredient of their product. The court also noted the dissimilarity in appearance and pricing between the two products. Therefore, the court dismissed the plaintiff's application.