New Delhi [India] : The Delhi High Court has refused to prohibit Bollywood actor Deepika Padukone’s company from using the mark ‘Lotus Splash’ for a facewash/ face cleanser product while dismissing the interim injunction plea moved by a company, Lotus Herbal Private Limited.
The bench of Justice C Hari Shankar, in an order passed on January 25, stated that no case of passing off can prima facie lie in the present case, especially as the only common feature between the plaintiff’s and defendant’s mark is the word “lotus.”
The products are completely dissimilar in appearance, with a wide difference in the prices of the products.
A consumer who uses such products would be aware of the difference between “Lotus Splash” and the plaintiff’s lotus family of products. It cannot be said, therefore, that the defendants are, by using the goods name “Lotus Splash” seeking to pass off its product as the product of the plaintiff, said the Court.
The plaintiff/Lotus Herbal Pvt Ltd, manufacturer of skin, beauty and hair care products claimed that all of its products are sold under the house mark/trade Mark LOTUS. Use of the mark LOTUS is stated to have commenced in 1993. The company stated that its LOTUS formative marks are claimed to have become indelibly associated, in the public psyche, with the plaintiff and with no one else. They have, therefore, become source identifiers.
Senior Advocate Akhil Sibal appeared for the plaintiff and submitted that the use of the name “Lotus Splash” for its product amounts to infringement of the plaintiff’s registered “LOTUS” formative mark and also misrepresents the product of the defendants as having an association with the plaintiff.
Senior Advocate Dayan Krishnan appeared for the Deepika Padukone firm and submitted that Section 30(2)(a) does not refer to “use in the trademark sense.” Moreover, he submitted that the defendants are also entitled to the benefit of Section 3510. He submitted that the defendants sell all the cosmetic products under the 82oE mark similarly. There is no want of bona fides. On each product, the 82o E mark prominently figures.
The court, while passing the order, noted that the use of the mark ‘Lotus Splash’ by the defendants for its product does not amount to infringement, as such use is squarely covered under S.30(2)(a), which provides for situations where the use of a registered trademark by a party does not constitute infringement of the registered trademark.
The use of “Lotus” as a part of the mark “Lotus Splash” is indicative at least of the “characteristic of the product” as containing, as a key ingredient, lotus flower extract. Thus, such use does not amount to infringement of the registered Lotus formative trademarks of the plaintiff. Further, such use also does not amount to passing off.
Senior Advocate Dayan Krishnan, along with Advocates Pravin Anand, Ameet Naik, Dhruv Anand, Madhu Gadodia, Udita Patro, Sujoy Mukherji, Nimrat Singh, Sampurnaa Sanyal, Tarini Kulkarni, Sanjeevi Seshadri, and Shreedhar Kale, appeared for Deepika Padukone’s DPKA Universal Consumer Ventures Private Limited and others (defendants).
