In a recent legal showdown, the Hon’ble Delhi High Court made a crucial decision by refusing to grant an injunction in a trademark infringement suit involving the well-known cosmetic brand LOTUS and Deepika Padukone’s brand LOTUS SPLASH.
Background: Lotus Herbals Private Ltd, a key player in the cosmetic industry, filed an infringement and passing-off suit against Deepika Padukone’s newly launched brand LOTUS SPLASH. The plaintiff, represented by Mr. Akhil Sibal, argued their stronghold in the market since 1993, backed by numerous trademark registrations and copyrights for LOTUS formative marks.
Contentions of the Plaintiff: The plaintiff contended that LOTUS SPLASH’s use of the mark LOTUS for face cleansers led to confusion and association with their well-established brand. They highlighted the potential for consumer confusion and the defendant’s alleged awareness of the plaintiff’s LOTUS trademark.
Counterarguments by the Defendant: Mr. Dayan Krishnan, representing the defendant, asserted the right to benefit from Section 30(2)(a) of the Trademarks Act, citing that “Lotus” is a principal ingredient in LOTUS SPLASH and is therefore descriptive. The defense argued that the use of LOTUS in the product’s name is not in a trademark sense, as per Section 30(2)(a).
Court’s Analysis and Findings: The Hon’ble Court, after careful consideration, reserved the case under Section 29(2)(a) and (b). It acknowledged that Section 29(2)(a) applies only when rival marks are identical, which was not the case here and hence, the case was limited only to the section 29(2)(b) of the Act. The Court emphasized the prominence of LOTUS in the defendant’s product, its similarity to the plaintiff’s mark, and the likelihood of confusion among consumers.
Section 30(2)(a) Defense: Delving into the defendant’s defense under Section 30(2)(a), the Court highlighted the criteria for non-infringement. It concluded that “Lotus Splash” is indicative of the product’s characteristic, i.e. containing lotus flower extract as a key ingredient in the product and bottle of the defendant’s product reads “conditioning cleanser with lotus and bioflavonoid”. Thus, the defendant’s use of the mark fell within the protective ambit of Section 30(2)(a).
Conclusion: The Court’s ruling raises questions about the descriptive nature of LOTUS in LOTUS SPLASH. While the defendant secured protection under Section 30(2)(a), the plaintiff may appeal this decision. The saga continues, and the legal community awaits further developments.
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-By Jayendra Modi and Sanjaykumar Patel (Excelon IP)