No Similarity Between The Products; Delhi HC Dismisses Suit Against Deepika Padukone’s Self-Care Brand




The Delhi High Court last week dismissed an application filed against actor Deepika Padukone’s self-care brand 82°E alleging infringement of trade mark. The suit was filed by Lotus Herbals Pvt Ltd seeking temporary injunction against the company that owns the brand, DPKA Universal Commercial Ventures.

Justice C Hari Shankar pronounced the judgement that was reserved in December last year, on January 25, 2024. While dismissing the application, he observed that the only common feature between the plaintiffs and defendants’ mark is the word “lotus”. The products are completely dissimilar in appearance with a wide difference in the prices of the products, he said.

According to the plaintiff, the use of the name “Lotus Splash” amounts to infringement of their registered “LOTUS” formative marks and also misrepresents the product of the defendants as having an association with the plaintiff. The impugned product is sold in brick and mortar stores as well as online through the website of the defendants.

Thus, the plaintiff issued a notice to the defendants on February 6, 2023, calling on the defendants to cease and desist from using the mark “Lotus Splash” for its product. As the notice did not deter the defendants from continuing to use the mark, the plaintiff instituted the present suit against the defendants, seeking a decree of permanent injunction, restraining them from using “Lotus” as part of the mark under which they sell their product.


Senior Advocate Akhil Sibal appeared on behalf of the plaintiff Lotus Herbals, he submitted that, given the fact that the plaintiff and the defendants are both using the mark “Lotus” – though, in the case of the defendants, in conjunction with the word “Splash” – for similar products, there is bound to be confusion in the minds of the public or a presumption of association between the marks of the plaintiff and the defendants.

He further referred to a specific paragraph of the plaint, in which it is specifically averred that talks were on, between the plaintiff and one of the defendants in March 2021 for the defendant to be an agent of the plaintiff, but talks could not fructify. Thus, at the time when the defendants adopted the impugned “Lotus Splash” mark, they were well aware of the pre-existing registered “Lotus” formative marks of the plaintiff, Mr Sibal argued.

Senior Advocate Dayan Krishnan appeared on behalf of the defendant DPKA Universal Commercial Ventures Pvt Ltd along with Ameet Naik and Madhu Gadodia of Naik Naik and Company and Pravin Anand, Dhruv Anand, Udita Patro and Nimrat Singh of Anand and Anand.

Mr Krishnan submitted at the very outset that the defendants are clearly entitled to the benefit of Section 30(2)(a) of the Trade Marks Act 1999 as “lotus” is a principal ingredient of the “Lotus Splash” product and is, therefore, indicative of its constituents. Moreover, he referred to a few advertisements of the said product wherein Lotus or Lotus Extract is underscored as the primary ingredient in the product.

The defendants are also entitled to the benefit of Section 35 as they sell all the cosmetic products under the 82°E mark similarly. There is no want of bona fides, on each product, the 82°E mark prominently figures, Mr Krishnan averred.

Placing reliance on the judgements of the Delhi High Court in Zydus Wellness Products Ltd v. Cipla Health Ltd and in Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd in support of his submissions, Mr Krishnan pointed out that the Division Bench, in Cadila Health Care, deleted even the protective caveat that the learned Single Judge had imposed, whereby the defendant in that case was allowed to use the expression “Sugar Free” as part of a sentence or as a catchy legend so as to describe the characteristic feature of a product. There is, therefore, an absolute right to use a descriptive expression on a product, and there can be no injunction against such use, he argued.


Upon examining the submissions made on behalf of the plaintiff as well as the defendants, Justice C Hari Shankar observed-

“It is not possible to dichotomize the use of “Lotus Splash” on the bottle of the defendants’ product with the use of “Lotus Splash” on the defendants’ social media web pages or advertisements. If the defendants are using “Lotus Splash” in a manner which indicates lotus extract as being a key ingredient in the product, that would apply equally to the use of the mark on the bottle of the defendants’ product as to the use of the mark elsewhere. In any case, the mark “Lotus Splash” is obviously used to indicate that the product contains lotus extract as its key ingredients.

There is therefore prima facie substance in Mr. Dayan Krishnan’s contention that the defendants would be entitled to the protection of Section 30(2)(a) and that their use of the mark “Lotus Splash” cannot be regarded as infringing in nature.”

Moreover, the bench noted that the above impression is underscored by the fact that the defendants use similar names for all their products in which the key ingredients of the product form the first word of the name such as “Ashwagandha Bounce”, “Turmeric Shield”, “Licorice Beam”, Gotu Kola Dew” and “Patchouli Glow”.

Justice Hari Shankar then went on to explain the significance of the names of the defendant’s products. He said-

“Lotus Splash” is certainly no odd man out. As in the case of the other names of the defendants’ products, the name is intended to convey by its first word, the main ingredient in the product. The use of the second word in the names of the defendant’s products reveals an interesting feature. Though, in some products such as “Licorice Beam” and “Gotu Kala Dew”, words “beam” and “dew” may not invite any immediate connection, in the mind of the consumer, with the characteristics of the product, such a connection is invited in the case of “Turmeric Shield”, “Patchouli Glow” and, indeed, “Lotus Splash”.

“Lotus Splash” is a face wash, so that the word “Splash”, when used with “Lotus”, immediately informs the consumer that the product contains lotus extract and is to be splashed on the face. The entire mark “Lotus Splash” is, therefore, inherently indicative not only of the primary constituent of the product, which is lotus flower extract, but also of the characteristic of the product as a face wash.”

Court went on to address the issue raised on behalf of the plaintiff that the name “Lotus Splash” may lead to confusion in the minds of the consumer-

In each of the packs of the defendants’ product, the mark “82°E” figures at the lower edge of the bottle. Though this may not be determinative of the controversy, if all the bottles are lined up next to each other, as they may well be, in a store which dispenses the said products, or in a beauty salon-the consumer would immediately note the common “82°E” brand name at the foot of the bottle and that in each case, the name on the face of the bottle describes the ingredients of the product. The use of the common “82°E” indicates that the trade mark of the defendants is “82°E” and not “Lotus Splash”, “Licorice Beam” “Turmeric Shield” or anything else.”

Finally, noting that if there is no infringement, there can be no injunction, Court dismissed the said application.

Click here to download the judgement

Author: Nitish Kashyap


Interns and Paralegals.


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