“Lotus” in the Splash: Delhi High Court Grants Interim Injunction in Lotus Herbals Trademark Dispute – FAO(OS) (COMM) 45/2024

Summary

In a notable ruling on trademark infringement and the limits of descriptive use, the Delhi High Court allowed an appeal filed by Lotus Herbals Private Limited and set aside the order of the learned Single Judge refusing interim injunction.

The dispute arose from the use of the mark “Lotus Splash” by DPKA Universal Consumer Ventures Private Limited for a facial cleanser marketed under the brand 82°E. Lotus Herbals, the registered proprietor of the trademark “LOTUS”, alleged that such use amounted to trademark infringement and passing off.

The Division Bench held that the respondents’ reliance on the descriptive use defence under the Trade Marks Act, 1999 was misplaced, as the term “Lotus” was being used as part of a product name and sub-brand rather than merely describing an ingredient. Finding that the statutory requirements for infringement were satisfied, the Court granted interim injunction in favour of the appellant.

Facts of the Case

Lotus Herbals Private Limited is a well-known Indian cosmetics and skincare company and the registered proprietor of the trademark “LOTUS”, which has been in continuous use since 1996. Over the years, the mark has acquired substantial goodwill and reputation in the cosmetics and personal care segment.

The respondents launched a facial cleanser under the name “Lotus Splash”, marketed as part of the 82°E skincare brand. The appellant alleged that the use of the word “Lotus” in the product name was likely to create confusion among consumers and amounted to infringement of its registered trademark as well as passing off.

The appellant accordingly filed a trademark infringement suit seeking injunctive relief. However, the learned Single Judge declined to grant interim injunction, holding that although the marks were prima facie similar and confusion was likely, the respondents could rely on the defence of descriptive use under Section 30(2)(a) of the Trade Marks Act, on the ground that “Lotus” indicated an ingredient in the product.

Aggrieved by the refusal to grant interim relief, the appellant preferred an appeal before the Division Bench of the Delhi High Court.

Issues before the Court

1. Whether the respondents could claim protection under Section 30(2)(a) and Section 35 of the Trade Marks Act, 1999 on the ground that the use of “Lotus Splash” was descriptive of the product’s ingredients.
2. Whether the use of the mark “Lotus Splash” amounted to trademark infringement and passing off of the appellant’s registered trademark “LOTUS.”

Findings of the Division Bench

The Division Bench held that the requirements for infringement under Section 29(2)(b) of the Trade Marks Act were prima facie satisfied, as the mark “Lotus” was wholly incorporated in the respondents’ mark “Lotus Splash”, and both parties were dealing in identical cosmetic products, thereby creating a likelihood of confusion. The Court rejected the respondents’ contention that the use of “Lotus” was merely descriptive of an ingredient, noting that the expression “Lotus Splash” was prominently used as a product name and functioned as a sub-brand. The respondents had also purchased Google keywords such as “Lotus Face Wash”, and product listings and invoices reflected the mark “Lotus Splash” without comparable emphasis on the parent brand 82°E, indicating that the term was used as a trademark rather than as a descriptor. The Court further held that the defence under Section 30(2)(a) is unavailable where a term is used as a badge of origin, and that even if “Lotus” referred to an ingredient, the composite mark operated as a source identifier. Emphasizing that the appellant was the registered proprietor and prior user of the mark “LOTUS” since the 1990s with significant goodwill, the Court reiterated that once prima facie infringement and likelihood of confusion are established, injunction ordinarily follows. The Court also observed that the Single Judge’s reasoning was inconsistent, as it had acknowledged likelihood of confusion yet denied relief on the ground of descriptive use. Accordingly, the Division Bench allowed the appeal and granted interim injunction restraining the respondents from using the mark “Lotus Splash.”

Decision of the Case

The Division Bench held that the respondents were not entitled to rely on the defence of descriptive use under Section 30(2)(a) of the Trade Marks Act. The Court found that a prima facie case of trademark infringement had been established in favour of the appellant.

Accordingly, the Court allowed the appeal, set aside the order of the Single Judge, and granted interim injunction restraining the respondents from using the impugned mark “Lotus Splash.”

Conclusion

The judgment reiterates the limited scope of the descriptive use defence under the Trade Marks Act. Even where a word may refer to an ingredient or characteristic of a product, the defence cannot be invoked when the term is used as part of a trademark or product identifier.

The decision also casts light on the importance of prior user rights and established goodwill in trademark disputes, particularly in industries such as cosmetics where brand recognition plays a central role in consumer decision-making.

By granting interim relief, the Delhi High Court reaffirmed that courts must remain vigilant against attempts to adopt marks that incorporate the essential feature of an established trademark, especially where such adoption may lead to consumer confusion and dilution of brand identity.