The Delhi High Court on Monday passed an interim order restraining actor Deepika Padukone’s company DPKA Universal Consumer Ventures from using the mark ‘Lotus Splash’ for its facewash and face cleanser product. The order was issued in the trademark suit Lotus Herbals DPKA Universal Consumer Ventures Private Limited & Ors.
Padukone’s self-care brand 82°E sells a face cleanser named Lotus Splash. A Division Bench of Justices V Kameswar Rao and Vinod Kumar today rendered a prima facie finding that the Lotus Splash mark was similar to the lotus mark of another cosmetic and beauty products company, Lotus Herbals, and granted the interim relief.
The Division Bench overruled a single-judge order of January 25, 2024, which had refused an injunction against Padukone’s company. The single-judge had found that lotus extract was the prime constituent of the Lotus Splash facewash and that the use of ‘Lotus’ in the product’s name was to indicate this fact, which could be protected under Section 30(2)(a) of the Trade Marks Act.
However, the Division Bench said it did not agree with that reasoning. “We grant the prayer for temporary injunction and restrain the respondents, their directors, partners, owners, dealers, distributors, agents, stockists and servants, employees, assigns and all other persons acting on their behalf from manufacturing, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in Cosmetics, Beauty and Hygiene products under the impugned trade mark ‘Lotus Splash’ or ‘Lotus’ derivative marks or any other identical and/or deceptively similar trade marks to that of the plaintiff’s trade mark being ‘Lotus’ whether being used independently or with any prefix or suffix till the final disposal of the suit,” the Court ordered.
Lotus Herbals had sued Padukone and her company, claiming that the use of the mark ‘Lotus Splash’ for the product infringed Lotus Herbals’ registered ‘Lotus’ trademark. Lotus Herbals stated that it has been using the mark “Lotus” since 1993 and has a portfolio of more than 1,000 skin, beauty and haircare products sold under the house mark. They argued that the use of “Lotus Splash” amounted to infringement and could cause confusion in the minds of the public regarding association between the brands.
DPKA Universal argued that it was entitled to the benefit of Sections 30(2)(a) and 35 of the Trade Marks Act, 1999, saying that lotus is a principal ingredient of the Lotus Splash product and is therefore indicative of its constituents, and that there were clear distinctions in sales channels, pricing and packaging between the products of Lotus Herbals and those of DPKA Universal.
