In Joy Creators Pvt Ltd v. Natures Essence Pvt Ltd
, CS (COMM) 632/2018, the High Court of Delhi on September 20, 2018, recognized the protection of slogans and expressions which are ordinary linguistic spoken words.
The plaintiff manufactures and markets a wide range of cosmetic lotions, and in 1996 launched and began marketing a variety of products under the mark
HONEY & ALMONDS in India and other areas. In addition, the plaintiff also used the slogan in Hindi, “Poshan Wala Lotion,” which means “Lotion Providing Nutrition.”
In 2013, the plaintiff found that the defendant was marketing cosmetic lotions with the mark NATURE’S ESSENCE ALMONDS & HONEY BODY LOTION, wherein the part “ALMONDS & HONEY” was written prominently (see images below), and that the shape of the bottle, packaging, color scheme, and trade dress were similar to the plaintiff’s. In addition, the defendant adopted a tag line in Hindi, “Sampoorna Poshan Wala Lotion” meaning “Lotion Providing Complete Nutrition.”
The plaintiff filed suit in the High Court of Delhi against the defendant seeking permanent
injunction, trademark infringement, and passing off, claiming that the mark HONEY & ALMONDS had acquired distinctiveness.
The court made two significant observations. First, regarding the defendant’s use of the expression “Almonds & Honey,” the court noted that the expression “Almonds & Honey” had been given greater prominence than the defendant’s brand name, NATURE’s ESSENCE, and held that if, as the defendant argued, the term “Almonds & Honey” was merely used as a descriptor, then the defendant should have used the expression in a less prominent manner.
The second observation relates to the recognition of the distinctiveness in the plaintiff’s slogan, “Potion Wala Lotion,” in ordinary language, which is incorporated into the defendant’s slogan, “Sampoorna Poshan Wala Lotion.” The court held the defendant misused the plaintiff’s slogan “Poshan Wala Lotion” and issued an injunction banning the defendant from using said
Further, the court also issued an injunction that banned the defendant from using the shape of the bottle in order to prevent consumer confusion and deception.
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