The Delhi High Court recently rejected a petition filed by Lotus Herbal, a cosmetic and beauty products company, seeking to prohibit the use of the trademark 'Lotus Splash' by actress Deepika Padukone's company for a facewash or face cleanser product.

Lotus Herbal filed a lawsuit against actress Deepika Padukone and her company, DPKA Universal Consumer Ventures, alleging that the use of the 'Lotus Splash' mark for their product constituted trademark infringement, as it was deemed to infringe upon Lotus Herbal's established 'Lotus' trademark.

On January 25, Justice C Hari Shankar issued an order dismissing the interim relief application submitted by Lotus Herbal. The judge arrived at a preliminary conclusion that lotus extract is the primary component of the 'Lotus Splash' facewash. The decision was based on the prima facie observation that the inclusion of the term 'Lotus' in the product's name serves to signify this particular ingredient.

The Court held the opinion that Padukone's company had not made any effort to mislead consumers, and it acknowledged their entitlement to protection under Section 30(2)(a) of the Trade Marks Act. This provision often addresses fair use and allows companies to use certain trademarks legitimately without causing confusion among consumers.

Section 30(2)(a) of the Trade Marks Act stipulates that the utilization of a registered trademark to signify aspects such as the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods, or characteristics of the goods or services does not constitute trademark infringement. The Court, considering this provision, found that Deepika Padukone's company had used the term 'Lotus' in a manner consistent with indicating the presence of lotus extract in the product, thereby falling within the permissible scope outlined in Section 30(2)(a).

''“The use of 'lotus' is a key factor in rendering the entire mark 'Lotus Splash' indicative of the characteristics of the defendants’ face wash, containing, as its key ingredient, lotus flower extract.'' 

82°E is the name of the self-care brand started by Padukone.

The Court noted that there is a stark dissimilarity in the appearance of the products offered by Lotus Herbal and Padukone's company, with a significant contrast in their respective price ranges.

Lotus Herbal, as the plaintiff, argued that they initiated the use of the trademark "Lotus" in 1993 and currently boast a portfolio of over 1,000 skin, beauty, and hair care products marketed under the overarching house mark/trademark Lotus.

Lotus Herbal contended that the utilization of the name "Lotus Splash" by the defendant (Padukone's company) constituted infringement of the plaintiff's registered Lotus formative marks. They further argued that such usage not only infringed on their trademarks but also created a misrepresentation, suggesting an association between the defendant's product and the plaintiff.

The contention was that both the plaintiff and the defendants were employing the mark "Lotus," albeit in the case of the defendants, it was used in conjunction with the word "Splash" for similar products. The argument asserted that this similarity in the use of the mark could lead to confusion in the minds of the public or create a presumption of association between the plaintiff's and the defendants' marks.

In response, DPKA argued that they are unequivocally entitled to the benefits outlined in Section 30(2)(a) and Section 35 of The Trade Marks Act, 1999. These sections likely pertain to fair use and specific provisions regarding the use of trademarks in certain contexts without infringement.

The defendant additionally asserted that lotus serves as a principal ingredient in the Lotus Splash product, thereby indicating its constituents. Furthermore, they highlighted distinct differences in the channels of sale, pricing, and overall presentation of the products offered by Lotus Herbal and themselves.

The Court, upon consideration of the arguments, expressed the opinion that if the case is solely examined through the lens of Section 29 of the Trade Marks Act, it would establish a case of infringement. Section 29 typically addresses various scenarios of trademark infringement.

The Court pointed out that Section 30(2) of the Trade Marks Act serves as an exception to Section 29, and in this context, the defendant is entitled to the benefits afforded by Section 30(2)(a). This suggests that the defendant can legitimately utilize the mark under the conditions specified in Section 30(2)(a) without being deemed to be in violation of trademark infringement as outlined in Section 29.