Descriptive Use Defence In Trademark Disputes: How Far Can It Really Be Pushed?

A trademark stands as the face of a business and reflects who is behind the product and what kind of quality to expect. It is the embodiment of origin, goodwill, reputation and quality associated with a particular business. When another business adopts an identical or deceptively similar trademark, it not only infringes on the trade mark, but also attacks on the goodwill and reputation which is attached to the business rendered under such trademark.

The statutory provisions concerning trademark infringement in India are provided under Section 29 of the Trademarks Act, 1999 (the “Act”). They provide protection to proprietors of registered trademarks from the unauthorised use of an identical/ deceptively similar mark to the registered trademark in various situations, inter alia, infringement when goods or services are identical or similar[i], infringement is of a well-known mark[ii], or infringement by advertising that is unfair or detrimental to the distinctiveness of a registered mark[iii].

At the same time, the Act recognises that no one can claim exclusivity over ordinary, descriptive language that others may legitimately need. Section 30 lays this down in the form of certain defences against the allegations of trademark infringement. Among the defences and limitations provides under this statutory provision, Section 30(2)(a) protects certain descriptive use – where the use in relation to goods/services indicates the kind, quality, quantity, intended purpose, value or any other characteristics of such goods and services, and is not used to take unfair advantage of another trader’s reputation. This defence is based on the idea that trademark law should not allow one proprietor to monopolize over ordinary descriptive words that is common to trade.

The recent judgement rendered by the Division Bench of the Delhi High Court in the case of Lotus Herbals Pvt. Ltd. v. DPKA Universal Consumer Ventures Pvt. Ltd[iv]., has reiterated and further clarified the boundary between trademark infringement contained under Section 29 and the limits for using the defence of the mark being used as a descriptive word under Section 30.

Background of the Case

In 2023, Lotus Herbals Pvt. Ltd (“Lotus Herbals”), the proprietor of the mark ‘LOTUS’ in relation to cosmetics and allied products, instituted a suit against DPKA Universal Ventures Pvt Ltd. (“DPKA Universal”) for the usage of the word ‘LOTUS SPLASH’ by DPKA Universal for a product being face cleanser. Lotus Herbals stated that the use of the term ‘LOTUS SPLASH’ by DPKA Universal amounted to trademark infringement of their mark ‘LOTUS’ over which they enjoy own trademark rights since 1996 and copyright since 2011.

Lotus Herbals submitted that DPKA Universal were using the mark ‘Lotus’ in conjunction with the word ‘Splash’ in relation to similar products which was bound to cause confusion in the mind of public. They further submitted that DPKA Universal being the proprietor of the umbrella brand ‘82°E’ sold many products under the names ‘Ashwagandha Bounce’, ‘Turmeric Shield’, ‘Licorice Beam’ among others, and had applied for trademark registration for the all these brand names, except Lotus Splash.

Additionally, Lotus Herbals submitted that it was clear that the term ‘Lotus Splash’ was in fact being used as DPKA Universal’s trademark, and their umbrella mark, ‘82°E’ finds mention only in the base of the product bottle. Moreover, the descriptive element of the product, namely, ‘conditioning cleanser with lotus and bioflavonoids’ is also mentioned on the bottle. Furthermore, Lotus Herbals stated that a brief perusal of DPKA Universal’s official website and Instagram page clearly displayed that the product was being sold as ‘Lotus Splash’.

On the other hand, DPKA Universal’s case was that they are using the term ‘Lotus Splash’ in a descriptive manner since the product contain lotus extracts and is indicative of its constituent, and thus the scope of infringement does not exist. In response to this stand, Lotus Herbals submitted that the term ‘Lotus Splash’ cannot be considered to be descriptive, but instead suggestive in nature and therefore does not entitle DPKA Universal to take benefit under Section 30(2)(a) of the Act. Moreover, they stated that the placement of the term ‘Lotus Splash’ vis-à-vis ‘82°E’ on the packaging of the product would show that prominence is given to ‘Lotus Splash’ instead of the umbrella mark; and thus there could be a high chance of initial confusion in the minds of the average consumer.

Single Judge’s findings:

The Single Judge rejected the interim application to grant injunction to DPKA Universal[v].

The Single Judge acknowledged the fact that prima facie, Lotus Herbals had established a case of likelihood of confusion due to the similarity and identity of the products. However, it was also observed that the defence under Section 30(2)(a) was invoked as the term ‘Lotus’ was used by DPKA Universal in a descriptive manner indicating the use of lotus extract as an ingredient in the product.

The Single Judge further opined that an average consumer would not only pay attention to the terms ‘Lotus Splash’ but also on the descriptive explanation, conditioning cleanser with lotus and bioflavonoids’, placed beneath it to convey that a key ingredient in the product is lotus extract.

The Single Judge also stated that the fact that other brand identities of DPKA Universal were applied for registration and that DPKA Universal had not filed a trademark application for ‘Lotus Splash’ was not relevant to the present suit and that DPKA Universal could not be estopped from invoking the defence under Section 30(2)(a) on this ground.

Further, the Single Judge observed that product ‘Lotus Splash’ was part of the nomenclature which was followed by DPKA Universal, since the products of DPKA Universal contained the key ingredient as a descriptor in conjunction with another word, such as ‘Turmeric’ in conjunction with the word ‘Shield’ was one of the products offered by DPKA Universal.

Lastly, while stating that no case for infringement was made out by Lotus Herbals, the Single Judge observed that if the products of Lotus Herbals and DPKA Universal were placed side by side, the consumer would be able to identify the difference between both the products and the consumer would focus on the umbrella mark of DPKA Universal, ‘82°E’, which was present on the packaging. Moreover, the Single Judge also observed that the packaging of both the products is completely different and that a consumer who is a regular purchaser would know the differences between both the marks.

Observations by the Division Bench

The Division Bench of the Delhi High Court (“DB”) overturned the order of the Single Judge and held that the Appellant’s prior and registered trademark ‘LOTUS’ was contained as a whole in DPKA Universal’s ‘Lotus Splash’ and that the products rendered by both the parties under the said marks were identical in nature. Therefore, the DB reasoned that prima facie, infringement is established as there was likelihood of confusion for average consumer. In doing so, the DB moved away from the Single Judge’s finding wherein the Single Judge had stated that regular consumers would be able to differentiate between the products of the parties.

The key stands taken by the DB are as follows:

Descriptive language cannot be “promoted” into a sub-brand.

The DB re-examined the defence of descriptiveness as provided under Section 30(2)(a). While examining the matter, the DB addressed a fundamental question that was raised in the matter – whether the words are being used to simply describe the product (as alleged by DPKA Universal) or are they being used as a brand name (as alleged by Lotus Herbals).

The DB, for such assessment, observed the manner and placement in which the terms ‘Lotus Splash’ was being used and stated, wherein the expression was placed prominently on the product packaging, whereas the umbrella mark ‘82°E’ was placed in a corner.

The documentary evidence and online presentations indicate how the words are used.

The DB observed that the invoices showing sale of such products clearly revealed that the term ‘Lotus Splash’ was being used as a product name instead of as a descriptor of the product, and that the umbrella mark ‘82°E’ did not find any presence in the said invoice.

Further, the DB found that the term was being used a source identifier as when one searches for the term ‘lotus face wash’ on Google, the product of DPKA Universal pops up as the first result. This makes it evident that the term ‘Lotus Splash’ was indeed being used as a brand name, and not a mere descriptor.

In view of the above observations, the DB concluded that ‘Lotus Splash’ was operating as a sub-brand under the primary brand ‘82°E’, and was thus more than just a mere descriptor. Therefore, the DB held that the defence under Section 30(2)(a) cannot be invoked by DPKA Universal and restrained them from using the term ‘Lotus Splash’.

Concluding Remarks

The judgement rendered by the DB has a solid bearing on those that depend on ingredient-based branding. The judgement has made it sufficiently clear that while brands can use descriptive words to describe the ingredients in the product, however, the same cannot be in a manner wherein a prior trademark right of another entity is prejudiced.

Also, the judgement has drawn a clear line wherein the defence under Section 30(2)(a) is not used wrongfully as a shield against trademark infringement. It is a clear message given out to businesses that creative branding undertaken by them should be done within the contours of trademark law principles. This judgement is expected to serve as a base for any future disputes to decide upon limitations on statutory defence in infringement actions against ingredient-based branding.

For business owners, marketing teams, and in-house legal teams, this case provides useful insights when clearing names for new product launches.

Below are some practical takeaways for businesses:

If you want to refer to an ingredient while emphasizing the description of your products, do it in a way that actually reads like description, not as a product badge. Nomenclature, placement and hierarchy on packaging and listings would be scrutinised in dispute surrounding the names.
Keep invoices, vendor bills, product pages, advertisements, other promotional material, and ad keywords aligned with your “branding” strategy. Inconsistent documents can undermine a descriptive-use defence.
Buying a third party’s trade mark (or a confusingly similar term) as a keyword would be treated as trade mark use in advertising, and can be used to infer intent/ motive.
If your product-naming convention uses “ingredient + coinage” across a range, courts may treat each such name as a sub-brand, especially if your conduct shows you treat similar names as trademarks. In the pharmaceutical and cosmetic industries, it is common to adopt product names (as trademarks) based on ingredient names.

Contributed by Aditi Verma Thakur (Managing Partner) and Doyita Mukherjee (Senior Associate, Intellectual Property)

[i] Section 29(2) of the Trade Marks Act, 1999

[ii] Ibid. Section 29(4)

[iii] Ibid. Section 29(8)

[iv] (FAO(OS)(COMM) 45/2024, on 16^th February 2026

[v] 2024 SCC OnLine Del 498, decided on 25-01-2024