Delhi High Court Draws the Line Between Descriptive Use and Trademark Infringement

Recently, a two-judge bench of the Delhi High Court allowed an appeal filed by Lotus Herbals Private Limited (“Lotus Herbal”) against an order passed by the Ld. Single Judge of the Delhi High Court and granted an interim injunction against DPKA Universal Consumer Ventures Private Limited (“DPKA”) restraining it from using the LOTUS SPLASH and LOTUS marks and/or any other mark nearly identical/deceptively similar to Lotus Herbal’s LOTUS mark.

Despite a prima facie finding of similarity of marks and goods and resultant likelihood of confusion, the Ld. Single Judge dismissed Lotus Herbal’s interim injunction application by stating that the term LOTUS SPLASH was descriptive of the product’s key ingredient and nature. The Ld. Single Judge additionally relied on the prominent use of the house mark 82°E and the overall differences in packaging while declining interim relief.

At the appellate stage, Lotus Herbal contended that the term LOTUS SPLASH was being used as a trademark and source identifier, not merely as a descriptor. It further submitted that the Ld. Single Judge has failed to consider the manner of use of the term LOTUS SPLASH by DPKA, in conjunction with other surrounding material, including the product description, as well as the contents of DPKA’s website and advertisements. Moreover, it was argued that once the Court found deceptive similarity and likelihood of confusion, injunction ought to follow. Concludingly it submitted that the while assessing deceptive similarity, the mark had to be assessed as a whole and could not be dissected to justify descriptive use of individual elements.

DPKA maintained its stance that LOTUS in the term LOTUS SPLASH referred to its principal ingredient, i.e., lotus extracts and SPLASH described the manner of use. It further submitted that the price difference in the rival products, along with differences in the trade dress of the rival products and DPKA’s use of the house mark 82°E negates any likelihood of confusion between the rival marks.

On examining the manner of use, the two-judge bench noted that the term LOTUS SPLASH appeared as the product name in invoices and online listings, often without adequate prominence to the house mark, 82°E. It also featured in keyword-triggered search results. This indicated use of LOTUS SPLASH as a sub-brand rather than a mere description. The court clarified that while reference to LOTUS as an ingredient may be permissible, adoption of the composite expression LOTUS SPLASH as a product identifier crosses into trademark use.

Lotus Herbals Private Limited v. DPKA Universal Consumer Ventures Private Limited & Ors. [FAO (OS) (COMM) 45/2024]

Copy of the judgment can be accessed at: