The Division Bench of the Delhi High Court, comprising Justice V. Kameswar Rao and Justice Vinod Kumar, set aside the order of the Single Judge and granted interim relief in favour of Lotus Herbals Private Limited, restraining DPKA Universal Consumer Ventures Private Limited from using the mark “Lotus Splash” for its face cleanser during the pendency of the suit.
The appeal arose from the dismissal of Lotus Herbals’ application for interim injunction under Order XXXIX Rules 1 and 2 CPC, where the Single Judge had accepted the defence of descriptive use under Section 30(2)(a) of the Trade Marks Act, 1999. The Division Bench disagreed with this approach and held that the respondents were not entitled to the statutory defence.
The Court noted that Lotus Herbals is the long-standing registered proprietor of the mark “LOTUS”, with registrations dating back to 1996, substantial sales, extensive advertising, and significant goodwill built over nearly three decades in the cosmetics and personal care market. Against this backdrop, the Bench examined whether the respondents’ use of “Lotus Splash” was merely descriptive or amounted to trademark use.
The Division Bench also noted that “Lotus Splash” was not merely used as a descriptor of ingredients. The Bench also took note of keyword advertising and online search behaviour, observing that the respondents had positioned their product to appear prominently when consumers searched for “lotus face wash”, indicating trademark use and commercial intent rather than bonafide descriptive reference.
Importantly, the Court held that while the word “lotus” could, in isolation, describe an ingredient, the composite expression “Lotus Splash” could not automatically qualify as descriptive. At best, it was suggestive, and therefore not entitled to protection under Section 30(2)(a). The Division Bench reiterated that a mark cannot be dissected selectively to claim statutory defences, especially when the overall presentation shows use as a source identifier.
The Bench also expressed serious reservations about the respondents’ conduct, noting that they had applied for trademark registration for other similarly structured product names such as “Turmeric Shield”, “Ashwagandha Bounce” and “Patchouli Glow”, but not for “Lotus Splash”. This selective approach, coupled with the manner of use, weighed against the respondents’ claim of descriptive use and raised doubts about their good faith.
On the issue of consumer confusion, the Court found that the dominant use of the word “Lotus” in relation to identical goods was likely to cause initial interest confusion, particularly given the appellant’s strong market presence and reputation. The balance of convenience was held to be clearly in favour of Lotus Herbals, a prior user with established goodwill, while continued use by the respondents risked dilution of the appellant’s well-known mark.
Accordingly, the Division Bench allowed the appeal, set aside the impugned Single Judge order dated January 25, 2024, and restrained the respondents from manufacturing, selling, advertising, or dealing in cosmetics under the mark “Lotus Splash” or any deceptively similar mark incorporating “Lotus”, pending disposal of the suit.
Appearances:
For the Appellant : Mr. Chander M. Lall, Senior Advocate with Mr. Vaibhav Vutts, Ms. Aamna Hasan, Ms. Aarya Deshmukh and Ms. Vaibhavi SG, Ms. Annanya Mehan, Advocates.
For the Respondents: Mr. Dayan Krishnan, Senior Advocate with Mr. Pravin Anand, Mr. Ameet Naik, Mr. Dhruv Anand, Ms. Madhu Chaudhary, Ms. Udita Patra, Mr. Sanjeevi Seshadri, Ms. Nimrat Singh, Mr. Dhananjay Khanna, Ms. Bhavya Verma, Advocates for R1 & R2.
