The Delhi High Court dismissed an application, filed under Order XXXIX Rules 1 and 2 of the CPC, seeking an interlocutory injunction against the defendants. The Court observed that there is substance in the defendants 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.
Brief Facts:
The plaintiff is aggrieved by the use, by the defendants, of the name/logo “Lotus Splash” for the face cleanser/face wash manufactured and sold by it. The use of the name “Lotus Splash” for its product, according to the plaintiff, amounts to infringement of the plaintiff’s registered “LOTUS” formative marks and also misrepresents the product of the defendants as having an association with the plaintiff. The plaintiff accordingly issued a notice to the defendants. As the notice did not deter the defendants from continuing to use the mark, the plaintiff has 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. The present application, filed with the suit under Order XXXIX Rules 1 and 2 of the CPC, seeks an interlocutory injunction, pending disposal of the suit, restraining the defendants from continuing to use the impugned “Lotus Splash” Mark, or any other mark which includes “Lotus” as a part thereof, pending disposal of the suit.
Contentions of the Plaintiff:
The Learned Counsel for the Plaintiff 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.
Contentions of the Defendant:
The Learned Counsel for the Defendant submitted that the defendants are entitled to the benefit of Section 30(2)(a) as “lotus” is a principal ingredient of the “Lotus Splash” product and is, therefore, indicative of its constituents. Further, he argued that the defendants are also entitled to the benefit of Section 35. 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 82oE mark prominently figures.
The Court noted that the aspect of infringement, in the facts of the present case is restrained to Section 29(2)(a) and (b) of the Trade Marks Act.
The Court observed that though the impugned “Lotus Splash” mark of the defendants is not registered, and the defendants have not sought registration thereof, it is clear that the products belong to the classes in which the word mark “Lotus” stands registered in favour of the plaintiff. There is the possibility of the consumer associating the defendant’s product with that of the plaintiff. Even a possibility of association is sufficient to constitute infringement.
The Court said that there is substance in the defendants 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. Since the mark “Lotus Splash” is, therefore, indicative of the characteristics of the goods in respect of which it is used, the use of the mark cannot be regarded as infringing in nature.
The Decision of the Court:
The Delhi High Court, dismissing the application, held that no prima facie case for grant of injunction is made out.
Case Title: Lotus Herbals Private Limited v DPKA Universal Consumer Ventures Private Limited & Ors.
Coram: Hon’ble Justice C. Hari Shankar
Case No.: CS(COMM) 454/2023
Advocate for the Plaintiff: Mr. Akhil Sibal Sr. Advocate with Mr. Abhishek Bansal, Ms. Asavari Jain, Mr. Mohan Vidhani, Mr. O.P, Bansal, Mr. D.K. Gupta, Ms. Bahuli, Mr. Rahul Vidhani, Mr. Prakhar Singh, Ms. Elisha Sinha and Ms. Mikshita Gautam.
Advocate for the Defendants: Mr. Dayan Krishnan, Sr. Advocate with Mr. Pravin Anand, Mr. Dhruv Anand, Ms. Udita Patro and Ms. Nimrat Singh, Advs.
Mr. Azeem Khan, Ms. Arundhati Dhar, Ms. Shreya Puri and Ms. Deepa Rathi, Advs. for Defendant 3
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