Honasa Consumer Ltd vs Visage Beauty And Health Care Pvt Ltd & Anr.
- Court
- Delhi High Court
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 19.05.2026
Judgment delivered on: 19.06.2026
+ C.O. (COMM.IPD-TM) 215/2023 & I.A. 18072/2023
HONASA CONSUMER LTD .....Petitioner
versus
VISAGE BEAUTY AND HEALTH CARE PVT LTD & ANR.
.....Respondents
Advocates who appeared in this case:
For the Petitioner : Mr. Abhimanyu Bhandari, Senior Advocate
alongwith Ms. Kartika Sharma, Ms. Harsha
Sandhwani, Mr. Sahil Saraswat, Mr. Manav Mitra
and Ms. Shubhika Joshi, Advocates.
For the Respondents : Mr. Vaibhav Vutts, Ms. Aamna Hasan, Ms.
Anupriya Shyam, Mr. Aarya Deshmukh and Ms.
Vaibhavi SG, Advocates for R-1.
Mr. Vikrant Nilesh Goyal, Mr. Mohit Goyal, Mr.
Yash Basoya, Mr. Inderpreet Singh and Mr. Kunal
Dixit, Advocates for R-2.
CORAM:
HON’BLE MR. JUSTICE TUSHAR RAO GEDELA
J U D G M E N T
TUSHAR RAO GEDELA, J.
1. The present petition has been filed under Section 57 of the Trade Mark
Act, 1999 (hereinafter referred to as ‘ the Act ’) seeking rectification of the
trademark ‘D-TAN’ bearing registration no.2065580 in Class-3 granted in
favour of respondent no.1.
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2. The facts, in brief, as stated by the petitioner are that the petitioner
company was incorporated in the year 2016. It is stated that the respondent
no.1 filed the Trade Mark Application bearing no.2065580 in Class-3 for the
mark ‘D-TAN’ on 09.12.2010 which was advertised in the Trade Marks
Journal bearing no.1814-0 on 11.09.2017. On 30.01.2018, the Trade Mark
Application of respondent no.1 proceeded for registration.
3. The petitioner claims to have launched its products under the trademark
‘AQUALOGICA’ in the year 2021. While the petitioner was manufacturing
and offering for sale its products under the mark ‘AQUALOGICA’, on
14.04.2023 the respondent no.1 is alleged to have issued a cease and desist
notice alleging infringement of its trademark ‘D-TAN’ by the petitioner’s
product under the mark ‘AQUALOGICA DETAN + DEWY SUNSCREEN’
on the ground that the mark used by the petitioner is deceptively similar to the
mark ‘D-TAN’.
4. Vide the communication dated 05.05.2023 the petitioner claims to have
responded to the cease and desist notice of the respondent no.1 refuting the
claims and contentions contained in the cease and desist notice. The petitioner,
in its reply dated 05.05.2023, mentioned that the notice of infringement issued
by the respondent no.1 is misconceived and bereft of merit, inasmuch as the
mark ‘D-TAN’ is a descriptive term, commonly used in the trade to denote the
process of removing tanned skin, and is therefore not eligible for trademark
protection. The petitioner also mentioned in the said reply that the use of the
mark by the petitioner is honest and concurrent, and has been so used since
2016, thereby entitling it to protection under Section 12 of the Act.
Furthermore, the petitioner mentioned in the said reply that the respondent
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no.1 has failed to demonstrate any likelihood of confusion or deception, and
that the instant proceedings are an attempt to stifle legitimate competition. The
petitioner in the said reply also places reliance on the widespread use of the
term ‘DETAN’ by multiple brands and products in the market, as evidenced
by Google search results, to demonstrate that the term has become generic and
is not distinctive of the petitioner's goods. Thereafter, a reminder dated
08.05.2023 was received by the petitioner in respect of the aforesaid notice.
5. Aggrieved by the action initiated by the respondent no.1, the petitioner
filed the present rectification petition.
ARGUMENTS OF PETITIONER:-
6. Mr. Abhimanyu Bhandari, learned senior counsel appearing for the
petitioner argued as under:
6.1. At the outset, learned senior counsel would contend that the impugned
mark ‘D-TAN’ is descriptive apart from being devoid of any distinctive
character and is common to trade, thus, not registrable. He would contend that
the mark being purely descriptive lacks distinctive character and as such, the
registration itself is in clear violation of Section 9(1)(c) of the Act. It was
contended that Section 9(1)(c) of the Act specifically prohibits registration of
marks that are devoid of distinctive character and are incapable of
distinguishing the goods of one person from those of another. His contention
was that the term ‘D-TAN’ unequivocally describes the quality and the
intended purpose of the goods.
6.2. Dilating further, learned senior counsel contended that in common
parlance, the term ‘D-TAN’ would simply imply removal of the tanning of the
skin. Thus, according to him, any product which purports to remove tanning
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of the skin or the face would ordinarily be described as a ‘de-tan’ product. He
would also contend that this term is widely and commonly used in the
cosmetics industry across the world. As an example, learned senior counsel
would contend that in the cosmetics and beauty industry, phrases like
hydrating, exfoliating, de-tan are used to describe the type and nature of the
products which cannot be monopolized.
6.3. Yet another argument in continuation of the aforesaid submission was
that a trademark would not be refused registration if (i) the mark has acquired
distinctiveness through use and (ii) the mark has come to be exclusively
associated in the public mind with the proprietor’s goods and/or services.
According to him, the impugned mark of respondent no.1 does not satisfy
either of the limbs of proviso to Section 9(1) of the Act. To demonstrate the
said submission, the petitioner has placed on record large volumes of third
party use of the word ‘DETAN’ and its variants as well as multiple third party
registration in Class-3. According to him, the aforesaid documents and
registrations are a clear indicator that all the relevant stakeholders in the
cosmetics industry manufacturing cosmetics and skin care products
understand and use the word ‘DETAN’ as a descriptive word simply to
describe the product. He places reliance on the following judgments:
(1) Delhivery Private Limited vs. Treasure Vase Ventures Pvt. Ltd.,
2020 OnLine Del 2766 (paras 69 and 75);
(2) Cadila Health Care Ltd. vs. Gujarat Cooperative Milk Marketing
Federation Ltd., 2018 SCC OnLine Bom 4789 (paras 8 to 11 and 13);
(3) Pornsricharoenpun Co. Ltd. and Anr. vs. L’oreal India Pvt. Ltd.
and Anr. , 2022 SCC OnLine Del 3826 (paras 13 and 21);
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(4) Anil Verma vs. R.K. Jewellers SK Group, 2019 SCC OnLine Del
8252 (paras 22 to 25).
6.4. The other limb of the argument canvassed by Mr. Bhandari, learned
senior counsel for the petitioner, is in respect of a purported fraud played by
the respondent no.1 upon respondent no.2/Registrar of Trade Marks by getting
a generic and descriptive term registered as a trademark. In order to
demonstrate the said contention, learned counsel referred to the screenshots of
the website of the respondent no.1 to contend that the respondent no.1 uses as
a dominant feature of its mark the word ‘PROFESSIONAL O3+’ and not ‘D-
TAN’ which makes it clear that even the respondent no.1 uses the mark ‘D-
TAN’ as a mere descriptor rather than a trademark. In this context, learned
senior counsel relies on the judgment of this Court in Marico Ltd. vs. Agro
Tech Foods Ltd. , 2010 SCC OnLine Del 3806 , particularly paras 10 and 15.
6.5. Learned senior counsel contended that even if it is assumed without
admitting that the impugned mark is registrable, the petitioner has not
infringed the mark ‘D-TAN’ of the respondent no.1. The said submission is
predicated on the contention that the registration of a descriptive mark, ‘D-
TAN’ in the present case, does not confer any exclusive right in the registered
proprietor nor does it bar others in the trade from bonafide use of such mark as
recognised in Sections 28, 30(2) and 35 of the Act. Learned senior counsel
relies on Sections 30(2) and 35 of the Act, which according to him, provide
that where a mark is descriptive of the nature, kind and intended purpose,
character or quality of goods, in such cases the registered proprietor cannot
restrain others from using the same. In the aforesaid context, he relies on the
judgment in the case of Delhivery Private Limited vs. Treasure Vase
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Ventures Private Limited , 2020 SCC OnLine Del 2766 particularly paras 69,
75, 76 and 81.
6.6. Learned senior counsel emphasized that, apart from the aforesaid legal
impediments, there is no similarity or deceptive similarity either in the
trademarks of the trade dress or even the colour combination and the
packaging of the products of both the parties. Referring to the photographs
placed on record of the petitioner’s products as also the respondent no.1’s
products, learned senior counsel submitted that while the trademark of the
petitioner is ‘AQUALOGICA’, the trademark of respondent no.1 is ‘D-TAN’.
Another distinguishing feature, according to him, is the fact that the
respondent no.1 itself prominently uses the the mark/name ‘PROFESSIONAL
O3+’ apparently as its trademark and the mark ‘D-TAN’ is used on the
packaging in a small and insignificant manner and more as a descriptor of a
product. He urged that the colour combination and the packaging of the
products of both the parties are completely different. He would also submit
that the petitioner’s ‘AQUALOGICA DETAN’ product range consists of face-
wash, face serum and a sunscreen, whereas the product of respondent is
primarily a face pack.
6.7. Learned senior counsel stated that the present petition under Section 57
of the Act on behalf of the petitioner is maintainable inasmuch as petitioner
would fall within the ambit of the definition of “ an aggrieved person ” as
stipulated in the said Section. He would submit that the respondent no.1 has,
by issuing the cease and desist notice dated 14.04.2023, made some baseless
and false allegations with the demand that the petitioner refrains from using
the mark ‘DETAN’. He would contend that in case the respondent no.1
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succeeds in retention of the mark ‘D-TAN’ in the Register of Trade Marks, the
petitioner would be adversely impacted and thus, would be an “ aggrieved
person ” as defined in Section 57 of the Act. He relied upon the judgment of
the Supreme Court in Hardie Trading Ltd. vs. Addison’s Paint and
Chemicals Ltd., 2003 (11) SCC 92 particularly para 32 in support of his
contention.
6.8. Learned senior counsel sums up his arguments by referring to Section
57(2) of the Act which provides rectification of a mark which has been
entered without sufficient cause or is wrongly remaining on the Register of
Trade Marks. According to him, the case squarely falls within the category of
a mark ‘wrongly remaining on the register’. In support of the aforesaid
submission, he would contend that as the impugned mark is non-distinctive,
descriptive and common to trade, the registration itself is in violation of
provisions of Section 9 of the Act. For the said proposition, he relied on
Bennet, Coleman & Company Limited versus Vnow Technologies Pvt. Ltd.
& Anr., 2023 SCC OnLine Delhi 864 (para 31) in support of his
aforementioned contention.
ARGUMENTS OF THE RESPONDENT NO.1:-
7. On behalf of the respondent no.1 Mr. Vaibhav Vutts has argued as
under:-
7.1. Giving the background of the respondent no.1, learned counsel states
that it is a well-known beauty care company and its clients include some of the
leading names in the beauty industry. In support of the said submission, it is
stated that respondent no.1 has filed on record numerous documents to
demonstrate accomplishments and accolades received by respondent no.1 in
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relation to skincare and beauty products and services. Respondent no.1 is
stated to be a proprietor of several marks including D-TAN, DE-TAN, D 10,
O3+, AGELOCK, SARA, DERMAMELON, SHINE & GLOW etc.
7.2. Learned counsel would submit that the mark ‘D-TAN’ a unique,
memorable and a catchy mark coined by the respondent no.1 in the year 2009.
It is stated that the said mark does not find mention in the English language
dictionary. It is emphasized that ‘D-TAN’ was adopted by respondent no.1 at
a time when there was no person or entity using the said mark for the goods
and services provided by respondent no.1. It is stated that from the year 2009
and for the last fifteen years, the respondent no.1 has regularly, extensively,
openly and continuously been using the mark ‘D-TAN’ for its goods and
services which has resulted in substantial and immense reputation in the said
mark. It is stated that the sales of the products under the mark ‘D-TAN’ have
been steadily increasing from Rs.13,25,898/- in FY 2009-10 to about Rs.51.8
Crores in FY 2023-24. In support thereof, the learned counsel for respondent
no.1 would submit that the sales invoices and Chartered Accountant
(hereinafter referred to as “ CA ”) certificate has been filed and is relied upon.
7.3. Equally, learned counsel would also submit that the respondent no.1 has
spent crores of rupees for the promotion of its mark ‘D-TAN’ in support
whereof, the CA certificate has also been annexed. So far as its visibility both
in print media and social media platforms is concerned, learned counsel would
submit that magazines like Femina, Cosmopolitan, Salon International, Bridal
Asia, etc., do carry promotional material apart from the respondent
popularizing its brand through its own website. That apart, learned counsel
also submits that the products under the brand ‘D-TAN’ are available on third
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party e-commerce platforms like Amazon, Nyka, Flipkart etc. Additionally,
the respondent no.1’s mark ‘D-TAN’ is claimed to be featuring prominently
on social media platforms like Facebook, Instagram and X (formerly Twitter).
7.4. It was stated by learned counsel that after extensive use of the mark ‘D-
TAN’ for about ten years, commencing from the year 2009, it started noticing
an increase in the number of infringers and violators after 2020. Learned
counsel asserts that this trend commenced only and only because the mark ‘D-
TAN’ of the respondent no.1 had already become successful and popular by
then. In other words, learned counsel emphasized that the third parties started
capitalizing, though unlawfully, the brand value of its mark ‘D-TAN’ in
various forms. Since then, learned counsel would submit that the respondent
no.1 was ever vigilant in protecting its mark ‘D-TAN’ and in support thereof
has placed on record at least ten Court actions and oppositions, including
issuance of legal notices in order to protect its mark ‘D-TAN’. Mr. Vutts,
learned counsel stated that out of the aforesaid legal proceedings 23 parties
have already given undertakings not to use the mark ‘D-TAN’. His contention
on the aforesaid narration is, that this Court would assume, apart from the
documentary evidence placed on record, by assessing the number of legal
proceedings and the undertaking given by third parties, the substantial and
immense reputation that the mark ‘D-TAN’ has garnered so as to become a
source identifier for the respondent no.1’s goods or has come to be exclusively
associated with it.
7.5. Defending the entry made in the Register of Trade Marks of its mark
‘D-TAN’, learned counsel would submit that such entry in the Register of
Trade Marks is on account of sufficient cause for the following reasons:
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(a) that the mark ‘D-TAN’ is unique, catchy and easy to remember.
(b) that the mark has no meaning in the English language.
(c) that the mark ‘D-TAN’ was examined substantively under the
statutory proceedings. Though an objection was raised by the Trade
Marks Registry under Section 9 of the Act, the respondent no.1 filed its
response whereafter, the said mark was advertised in the Trade Marks
Journal and subsequently registered. In other words, learned counsel
would vehemently contend that the objections raised in the petition
were already raised by the Trade Marks Registry, considered and
thereafter, the mark ‘D-TAN’ was granted registration. Thus, according
to him, the petitioners are bound by the principles of res judicata and
cannot raise the same issue again.
7.6. Mr. Vutts, learned counsel forcefully contended that the mark ‘D-TAN’
is neither generic nor common to trade as contended by the petitioner. He
would contend that the petitioner’s argument on this issue is baseless
inasmuch as the petitioner has relied upon some screenshots of third party
manufacturers who are using the mark ‘D-TAN’ in different variants but have
entered the field more than ten years after the respondent no.1 had coined,
adopted and commenced use of the mark ‘D-TAN’ on its products. Thus,
according to learned counsel, a mark which was already registered and had
garnered substantial goodwill and reputation cannot be said to be wrongly
remaining on the Register of Trade Marks merely because the market is now
flooded with other stakeholders who are new entrants into the said field of
manufacture of skincare products. In addition, he would stoutly contend that
as a matter of fact the respondent no.1 has not slept over its rights and has
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from time to time taken recourse to legal remedies as available in law.
Learned counsel would submit that it is settled that a proprietor of a mark is
neither expected nor obligated to take action against all the third party
infringers. In that context, he relies on the judgment of this Court in Pankaj
Goel vs. Dabar India ( 2008 SCC OnLine Del 1744 in para 21-22); Under
Armour Inc. vs. Aditya Birla Fashion & Retail Ltd. ( 2023 SCC OnLine Del
2269 in para 31-34).
7.7. Learned counsel asserts that the mark ‘D-TAN’ has always been used in
all capital letters and prominently on the product packaging and thus,
distinguishes it from the other contents of the product packaging. He would
submit that respondent has and continues to claim rights in the mark ‘D-TAN’
and therefore, the said mark is a source indicator under Section 2(1)(za) of the
Act and is not a product indicator at all.
7.8. On account of its long usage, credibility, popularity and wide publicity
in the market, learned counsel contends that the mark ‘D-TAN’ has acquired
exclusivity in relation only to the respondent no.1 and has thus, acquired a
secondary meaning in the minds of the public. He would urge that in such
circumstances, the Court must be loath to interfere in such matters particularly
when the said mark has been in continuous and extensive use from the last
fifteen years. He relied upon the judgment in Godfrey Philip India Ltd. vs.
Girnar Food & Beverages Pvt. Ltd ., 2004 (5) SCC 257 particularly para 4.
7.9. Learned counsel next contended that the petitioner has not approached
this Court with clean hands and has deliberately suppressed material facts. He
would submit that the petitioner himself has filed a trademark application
no.5919882 dated 02.05.2023 seeking registration of the mark
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‘AQUALOGICA DETAN + DEWY SUNSCREEN’ which has been filed
without any limitation or disclaimer and claims a recent use of 03.03.2023.
Learned counsel would vehemently contend that having rights in the said
mark including the mark ‘D-TAN’, it is not within the competence of the
petitioner to now state that the term ‘D-TAN’ is either generic, or descriptive,
or even common to trade. Petitioner cannot be permitted to approbate and
reprobate. In support of the said contentions, learned counsel relies on
Automatic Electric Ltd. vs. R.K. Dhawan & Anr.; 1999 (77) DLT 292 , para
14-16 and 19; Indian Hotel Company Ltd. vs. Giva Institute of Vedic Science
& Culture, 2008 (37) PTC 468 (Del) and Zydus Wellness Products Ltd. vs.
Cipla Health Ltd., 2023 SCC OnLine Del 3785 at para 205.
7.10. Mr. Vutts, learned counsel would also submit that the falsity of the
petitioner’s claim can be ascertained from the reply dated 05.05.2023 issued
by the petitioner to the cease and desist notice sent by the respondent no.1
wherein, the petitioner has categorically stated that it has not applied for any
trademark containing the mark ‘D-TAN’. Whereas, the petitioner by that time
on 02.05.2023 had already applied for registration of the mark
‘AQUALOGICA DETAN + DEWY SUNSCREEN’. Thus, on the said
contention, learned counsel would submit that the petitioner having
approached this Court with unclean hands and false assertions, cannot be
entertained and the petition ought to be dismissed.
7.11. In any case, learned counsel would contend that the sales turnover of all
the products of the petitioner even when calculated from the year 2021 is
about Rs.31 Crores only, while the respondent no.1’s extends back to the year
2009 and for one year itself the sales turnover for the brand ‘D-TAN’ alone
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has crossed Rs.50 Crores. He would contend that in case the petitioner is
claiming on such sales turnover of all its products brought together, as a well-
known trademark, by that logic the petitioner’s mark ‘D-TAN’ too, be
declared as a well-known trademark and can fall within the category of a
distinctive mark.
7.12. Predicated on the aforesaid arguments, learned counsel would contend
that the petition is bereft of any merits and ought to be dismissed with costs.
REJOINDER ON BEHALF OF THE PETITIONER:-
8. Mr. Bhandari, learned senior counsel, to the argument that the word ‘D-
TAN’ is a coined word and a distinctive mark having no meaning in English
language, contends that the word ‘ De’ as per the Oxford Dictionary
universally recognizes the said word to denote the removal, reversal or
deduction of an action. Coupled with that, the word ‘ Tan ’ is defined as (i) a
yellowish-brown colour and (ii) a golden brown-shade of skin developed by
pale skinned people after being in the sun. He contended that both the words
combine together only convey the removal or reversal of the tanning of the
skin which occurs due to exposure to the sun. According to him, it requires no
mental leap or imagination by the ordinary prudent consumer to understand
the nature and the kind of goods that are being offered when a manufacturer
uses the mark ‘D-TAN’.
8.1. Learned senior counsel emphasized that respondent no.1 itself uses the
word ‘D-TAN’ alongwith functional classifications like hydrate, glow, clear
and radiance. Thus, according to him, the mark of respondent no.1 is neither
coined word nor distinctive but a mere descriptor.
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8.2. Contrary to the argument of respondent no.1 that petitioner is using
‘DETAN’ as their sub-brand. Learned senior counsel would submit that the
petitioner is not using ‘D-TAN’ or ‘DETAN’ as a trade mark or an
independent proprietary sub-brand. It is stated that the mark is employed
strictly as a secondary, descriptive modifier to explain the functional
characteristics etc., and intended purpose of the product. Even visually,
according to the learned senior counsel, the text ‘DETAN’ appears as an
explanatory descriptor modifier alone. Learned senior counsel quotes a
number of market leaders who too use the mark ‘DETAN’ or ‘D-TAN’ right
after the brand name to denote the use of the product. Thus, there is no
question of the mark ‘DETAN’ being used as a sub-brand.
8.3. So far as the mark of the respondent no.1 having acquired either
distinctiveness or secondary meaning on account of continuous use and
massive financial turnover is concerned, learned senior counsel relied upon
the judgment of Delhivery Pvt. Ltd. ( supra ) to submit that the financial
turnovers would simply show commercial growth of business and do not
transition a descriptive term into a distinctive word. Thus, as per learned
senior counsel, the mark ‘D-TAN’ wrongly remains on the Register of Trade
Marks or trademarks and ought to be removed.
ANALYSIS AND CONCLUSION:-
9. Before adverting to the other aspects of the dispute at hand, it appears
significant to appreciate as to under what circumstances the respondent no.1
got its mark ‘D-TAN’ registered in the year 2010. It is relevant to note that
respondent no.1 applied for registration of its mark ‘D-TAN’ on 09.12.2010
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claiming user since 01.12.2009 in respect of manufacture of cosmetic products
under Class-3.
10. The Trade Mark Registry (hereinafter referred to as “ TMR ”) raised an
objection under Section 9(1)(a) and 9(1)(b) of the Act on 02.02.2012. It would
be relevant to extract the said objection hereunder:
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11. It is clear from the reading of the objection that the TMR found the
mark applied for, devoid of any distinctive character, covered by Section
9(1)(a) of the Act and that it consists exclusively of marks or indications
which may serve the trade to designate the kind, quality, quantity, intended
purposes etc. It is interesting to note the reply dated 30.09.2014 submitted by
respondent no.1 in response to the objection dated 02.02.2012. Before
analysing and examining the response, it would be appropriate to extract the
reply dated 30.09.2014 hereunder:-
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12. What comes to fore is the complete absence of any response to the
objection under Section 9(1)(a) of the Act regarding the mark applied for
being devoid of any distinctive character. Meaning thereby, that respondent
no.1 did not have any answer to the objection of the mark not having any
distinctive character. This aspect becomes clearer while examining the said
response further. Before this Court alludes to the other relevant aspect, it is
also significant to note the response to the objection under Section 9(1)(b) of
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the Act. Other than to simply deny that the mark does not designate any of the
ingredients of Section 9(1)(b) of the Act, there is no substantive explanation or
reason to overcome the said objection. In a weak manner, the respondent no.1
claimed that the said mark “ is represented in a particular label with logo
bearing a distinctive artistic work, style and representation and the same as
such is distinctive of the goods ”. Firstly, the mark ‘D-TAN’ is a word mark
thus, the question of it being distinctive merely being represented in a label
with a logo bearing distinctive artistic work, style, etc. does not arise; and
secondly, no such logo or label has either been demonstrated or placed on
record to show “ distinctiveness ”. Thus, in the opinion of this Court,
respondent no.1 has been unable to provide any satisfactory justification or
explanation to overcome either the objection under Sections 9(1)(a) or 9(1)(b)
of the Act.
13. In continuation of the aforesaid, respondent no.1 in its reply dated
30.09.2014 had squarely relied upon the provisions of Section 12 of the Act to
contend that an application seeking registration of a mark on the basis of
honest concurrent use is permissible. Though, no doubt that while registering
the mark ‘D-TAN’ in favour of respondent no.1, the respondent no.2/Registrar
of Trade Marks did not place any conditions or disclaimer, however, the
reliance of respondent no.1 on Section 12 of the Act may be an “ Achilles heel ”
to its case. What could be various circumstances under which registration
under Section 12 of the Act can be permitted, has to be gathered from the
language itself. Section 12 of the Act is therefore reproduced hereunder:-
“Section 12. Registration in the case of honest concurrent use, etc.
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In the case of honest concurrent use or of other special circumstances
which in the opinion of the Registrar, make it proper so to do, he may
permit the registration by more than one proprietor of the trade marks
which are identical or similar (whether any such trade mark is already
registered or not) in respect of the same or similar goods or services,
subject to such conditions and limitations, if any, as the Registrar may think
fit to impose.”
14. It appears from a plain and harmonious reading of the provisions of
Section 12 of the Act that in case of an honest concurrent use of a particular
mark by a proprietor, the Registrar of Trade Marks may permit the registration
of the said mark by more than one proprietor of the said mark which is
identical or similar in respect of the same or similar goods or services, subject
to conditions and/or limitations. It is relevant to note that identical or similar
marks may be registered by more than one proprietor even when “ any such
trade mark is already registered or not ”. In the opinion of this Court Section
12 of the Act appears to be an exception to the absolute grounds of refusal
under Section 9 and relative grounds of refusal of registration under Section
11 of the Act. The legislature in its wisdom seems to have carved out this
exception bearing in mind “ honest concurrent use or of other special
circumstances ” to be considered by the Registrar of Trade Marks.
15. The fallout of reliance on Section 12 of the Act by any “ honest
concurrent user ”, in view of the aforesaid opinion, would surely imply that the
registrant under Section 12 of the Act may not have any reason to object to
any other person or entity from using similar or identical marks in respect of
same or similar goods or services. This is for the reason that the said entity
itself has obtained registration on a demurrer that there could be other
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registrants or users of same or identical marks in respect of same or similar
goods or services. The subsequent registrant, of course, may be bound by
conditions and limitations, if any, imposed by the Registrar of Trade Marks.
However, it is pertinent to note that in the present case, the petitioner has not
sought registration of the mark ‘DETAN’ separately or independently but has
sought registration only of its mark ‘AQUALOGICA’. In fact, unreservedly,
the petitioner contends and admits that the word ‘DETAN’ is purely
descriptive of its goods and, therefore, it also contends that respondent no.1
possibly cannot have any objection to its use of the mark ‘DETAN’ alongwith
its registered trademark ‘AQUALOGICA’.
16. Thus, bearing in mind the lack of justification or explanation to the
objections under Section 9(1)(a) and flimsy and unacceptable explanation to
those under Section 9(1)(b) of the Act, this Court is of the considered opinion
that the respondent no.1 could not have got its mark ‘D-TAN’ registered under
the Act.
17. The other contention in respect of the mark ‘D-TAN’ is in the context
of the same being descriptive and not distinctive. Learned counsel for
respondent no.1 had contended that the mark ‘D-TAN’ is unique, easy to
remember, catchy and has no meaning ascribed to it in the English language
dictionary. He had also contended that at the time when the mark ‘D-TAN’
was coined and adopted no other entity or manufacturer had adopted or used
the said mark. Learned counsel also had argued that the said mark was being
regularly, extensively, openly and continuously being used for the
manufacture of its products for the last more than 15 years and has garnered
immense goodwill and tremendous reputation. On the said basis, learned
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counsel also argued that the said mark has gathered secondary significance.
Thus, according to him, the said mark cannot be removed from the Register of
Trade Marks.
18. In the aforesaid context, learned senior counsel for the petitioner had
referred to the Oxford Dictionary, the relevant screenshots of respondent
no.1’s own website and the screenshots of other manufacturers in the same
trade to contend that the word ‘D-TAN’ is purely descriptive of the product
and its intended purpose.
19. This Court would initially examine the meaning attached to the words
‘de’ and ‘tan’ in the Eleventh Edition of the Oxford Dictionary. According to
the said dictionary the word ‘de’ connotes “ prefix forming or adding to verbs
of the derivatives, 1. Down: deduct, 2. Completely: denude, 3. Indicating
removal or reversal: de-ice” . Apart from above, there are numerous such
words like deregister, demote, delink, deficiency, defect, decrease, demerit,
delete, demise, deprivation etc., which would clearly demonstrate removal or
reversal of the previous condition or an act etc. The word ‘tan’, according to
the said dictionary, is defined as “ Noun. 1. A yellowish-brown colour, 2. A
golden brown-shade of skin developed by pale-skinned people after being in
the sun. ”.
20. Combining both the words ‘de’ and ‘tan’ together would clearly
demonstrate removal or reversal of tanned condition of the skin. This has to be
considered bearing in mind that the products manufactured by both the parties
are cosmetics falling in Class-3 in relation to skincare products. Clearly, in the
context of such products, the word ‘DETAN’ or for that matter ‘D-TAN’
would undoubtedly imply a product which, when used, may bring about
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removal or reversal of the tanning of the skin. Thus, the words ‘D-TAN’ or
‘DETAN’ would be nothing other than a pure description of the goods
manufactured by both the parties.
21. In order to evidence and corroborate the above analysis based on the
dictionary meaning and to understand and appreciate how the stakeholders in
the cosmetic industry too consider the words ‘D-TAN’ or ‘DETAN’ as a
descriptor, it is found necessary to extract hereunder screenshots of the
products of not only the respondent no.1 but also the petitioner and other such
manufacturers in the cosmetic industry:-
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22. Apart from the above, it would be relevant to also note paras 11.16 and
11.69 of ‘McArthy on Trademarks and Unfair Competition’. According to the
learned author the hierarchy of the protection to be received by various marks
are described as under:-
“11.16 What is a “descriptive mark”?
Types of Description. A "descriptive" term is one that directly and
immediately conveys some knowledge of the characteristics of a product
or service.
A mark is “descriptive” if it is descriptive of:
● the intended purpose, function or use of the goods.
● the size of the goods.
● the provider of the goods or services.
● the class of users of the goods or services. Thus, the term
PHILADELPHIA CARD was found to be descriptive of credit card
services for cards depicting Philadelphia targeting customers in
Philadelphia.
● a desirable characteristics of the goods or services. Thus, the term
OATNUT for bread immediately tells that the bread contains oats
and nuts. The word ERGONOMIC immediately informs potential
buyers of a ceiling fan that the fan is designed to interact efficiently
and safely with the user.
● a desirable ingredient in the goods.
● the sound made by an important feature of the goods.
● the nature of the goods or services. Thus, the term E-FASHION
immediately and directly says that the Internet service provides
information about fashions.
● the end effect upon the user.
● a common serving size or unit of measurement in which the product
is sold.
Descriptive of Some of the Goods or Services or Some of Their
Aspects. That the term asserted to be non-descriptive may not be descriptive
of all of the goods or services with which it is used does not mean that it is
not “merely descriptive.” A term is “descriptive” if it directly describes any
of the goods or services with which it is used. Similarly, a term that
describes some, but not all, of the aspects of the goods or services is still
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“descriptive.” To be found “descriptive,” a term need only describe a
single, significant quality or feature of the goods or services.”
Retail Sales Services. A term can be descriptive of retail sales
services if it is the generic name of a product sold at that outlet. For
example, a mark for restaurant services which comprises the generic name
of a food that is the speciality of the house can be merely descriptive of
restau-rant services, be it in English or in a foreign language. LE
CROISSANT SHOP was held descriptive of restaurant services, since
prospective customers would immediately know that croissants could be
purchased. Similarly, the word PENCILS was held to be descriptive of
“retail stationery and office supply services” because it describes an item
that is sold in stationery and office supply stores even though it is not the
main item sold in such stores.
Evaluate the Term in Relation to These Goods and Services.
Descriptiveness cannot be determined as an abstraction. The possible
descriptiveness of a designation is highly dependent on the goods or services
in connection with which the designation is used. A term can be descriptive
of one product and nondescriptive of another. As the Trademark Board
observed:
§11:69 Tests for determining descriptive- suggestive distinction-Use by
competitors, the media and dictionaries
Descriptive Use by the Proponent and Others. A use-ful way to test whether
a designation is descriptive or suggestive is to determine the extent to which
other sellers have used the designation on similar goods and services. If
others are in fact using the term to describe their goods or services, an
inference of descriptiveness can be drawn. For example, in finding QUIK-
PRINT to be descriptive of copying and printing services, the Trademark
Board said that: "[T]he widespread use of the term “QUIK-PRINT”
throughout the United States by others…….tends to establish that the term
has lost whatever suggestiveness it may have possessed and has taken on
and projects a descriptive significance of quick or fast printing services to
the general public. Proliferation of use of a term can often lead to a
diminution of its ability to identify and distinguish the services or goods of
any one user thereof.” Extensive descriptive use indicates that both sellers
and buyers view the designation as descriptive:
In determining whether a word or syllable has a descriptive or
suggestive significance as applied to merchandise it is proper to take
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notice of the extent to which it has been used in trademarks by others
on such merchandise. If it has been frequently so used, the inference
is warranted that it is not purely arbitrary; that it would be likely to
be understood by purchasers as identifying or describing the
merchandise itself, rather than the source thereof and hence as
having little or no trademark significance.”
On the other hand, if both plaintiff and defendant use the same term but
in connection with two very different kinds of goods or services, this tends to
negate the claim that the term is merely descriptive.
It is also relevant that the proponent of trademark status itself used the
term in a descriptive sense. After the designa-tion has been found
descriptive, evidence of extensive third party use can prevent a finding of
secondary meaning.
Third Party Registrations. Third-party registrations are probative
evidence of the meaning of a word, in the same way that a dictionary can be
used. Similarly, third-party registrations of composite marks including an
allegedly descriptive term can be used to help prove the descriptive nature
of that term. For example, introduction of many third-party registrations for
electronic products of marks with a -TRONICS or -TRONIX suffix could be
evidence that those third parties and the public consider such a suffix
descrip-tive, such that there would be no likely confusion between
DAKTRONICS and TEKTRONIX.
However, third party mark registrations may in some cases support the
argument that a designation is not descriptive. The fact that the U.S.P.T.O.
registered a number of marks containing the same designation without
requiring proof of secondary meaning is some evidence that the PTO
considers the designation not descriptive.
Trade Publications. Articles from trade publications evidencing use by
others of the term in a descriptive manner are competent to prove
descriptiveness and are not hearsay because they are not introduced to
prove the truth of the statements, but only that they were made.
Dictionaries. The Trademark Board will take judicial no-tice of a
dictionary definition to help determine if a term has an accepted descriptive
meaning." However, the fact that a certain word does not appear in any
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dictionary is not determinative if other evidence shows that the word clearly
conveys a descriptive meaning.
But dictionary definitions can help shed light on whether a designation
is likely to be perceived as directly descriptive of the goods or services. As
the Seventh Circuit remarked: “[T]here is no prohibition on using
dictionaries as a piece of the puzzle.”
23. A cumulative reading of paras 11.16 and 11.69 of McArthy provides
guiding principles for determination of whether a mark is descriptive or
otherwise. One of the tests which has been laid down by McArthy is to
examine and apply to the facts of a particular case as to how the entire
industry is using the said mark. In the present case, if one were to apply the
said test, manifestly the marks ‘D-TAN’ or ‘DETAN’ are nothing but pure
descriptors of the kind, quality and intended purpose of the products
manufactured falling strictly within Section 9(1)(b) of the Act. Thus, even on
this aspect the mark ‘D-TAN’ appears to be a descriptive word and not
distinctive. [See Renee Cosmetics Private Limited vs. Ms. Rupali Sharma &
Anr. , in C.O. (COMM.IPD-TM) 107/2025 , decision dated 05.06.2026]
24. Additionally, the mark ‘D-TAN’ conveys the nature, kind and intended
purpose of the goods which too is opined to be descriptive as per McArthy.
25. Notwithstanding the fact that the respondent no.1 had not furnished and
explanation or justification to the objection of the TMR under Section 9(1)(a)
of the Act, this Court also finds, particularly in view of the aforesaid analysis,
that the mark of respondent no.1 is not capable of distinguishing the goods or
services of one person from those of another. Therefore, not only is the mark
‘D-TAN’ of respondent no.1 descriptive but also appears to be common to
trade.
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26. The aforesaid screenshots, particularly of the products of respondent
no.1 indicate that respondent no.1 itself uses the words ‘Professional O3+’
prominently on its products and the mark ‘D-TAN’ in a small font at the lower
end of the product, usually with prefixes like ‘BLUEBERRY’,
‘CRANBERRY’ and ‘OXY’ indicating the nature of the product. This
particular usage of the mark ‘D-TAN’ of respondent no.1 with aforesaid
prefixes also impels this Court to draw the conclusion that the respondent
no.1 itself uses the said mark more in the nature of a description of the goods
rather than a trademark.
27. Great emphasis was laid by the learned counsel for respondent no.1 on
the substantial goodwill and immense reputation garnered by the mark ‘D-
TAN’ over the last 15 years and as to how it has gathered secondary
significance leading the said mark to be distinctive. Though respondent no.1
has placed on record sales figures and revenue generation of the last 15 years
garnered by the mark ‘D-TAN’ in the form of certificates issued by the CA,
however, that by itself may not necessarily imply secondary significance. It is
trite that a generic or a descriptive mark may receive statutory protection
provided that long usage of such mark has gathered secondary significance.
However, in the present case respondent no.1 has not placed on record
anything other than the CA certificates to establish its case in the context of
secondary significance. While the CA certificates, prima facie establish,
commercial success of respondent no.1’s products, the same do not, and
cannot, in the facts of the present case connote, corroborate or establish as a
fact that the mark ‘D-TAN’ of respondent no.1 has been imprinted in the
minds of the general consumer indelibly in such manner that when the mark
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‘D-TAN’ of respondent no.1 is recollected by the general public, it is the
goods of respondent no.1 and respondent no.1 alone that come to the mind of
the general public. No such document or any such evidence has been placed
on record, in the absence whereof, this Court is unable to accede to the
argument that the mark ‘D-TAN’ has gathered secondary significance to be
granted any protection as sought.
28. So far as the objection regarding maintainability of the present petition
under Section 57 of the Act is concerned, the petitioner would clearly fall
within the meaning of “ an aggrieved person ” occurring in the said section.
This is for the reason that by virtue of cease and desist notice dated
14.04.2023 issued by the respondent no.1, it was demanded that the petitioner
refrain from using the mark ‘D-TAN/DETAN’ on its products which
according to the petitioner is a descriptive mark and not registrable under the
Act. Having regard to the aforesaid analysis and the conclusion that the mark
‘D-TAN’ is descriptive, the restriction or prohibition sought by respondent
no.1 to the use of the mark ‘DETAN’ by the petitioner, would be restrictive of
petitioner’s lawful trade, constituting an act by virtue whereof the petitioner
would be “ an aggrieved person ” [See - Hardie Trading Ltd. (supra) para 32].
Therefore, the present petition instituted by the petitioner is maintainable
under Section 57 of the Act.
29. In view of the aforesaid analysis and conclusions reached by this Court,
it appears that an order under Section 57(2) of the Act against the registered
trade mark ‘D-TAN’ of respondent no.1 is made out.
30. Since, the aforesaid analysis are purely fact based, and on the basis of
the material on record, the ratios laid down by the judgments relied upon by
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the parties, in the context of legal interpretations may not be required to be
gone into, and are therefore, not referred to.
31. Ergo , the petition is allowed and the respondent no.2/Registrar of Trade
Marks is directed to cancel the registration of the mark ‘D-TAN granted in
favour of respondent no.1 bearing application no.2065580 registered on
30.01.2018 under Class-3. The Registrar of Trade Marks is further directed to
remove/rectify the registration of the mark ‘D-TAN’ granted in favour of
respondent no.1 vide bearing application no.2065580 on 30.01.2018 under
Class-3 from the Register of Trade Marks within four weeks from date of
receipt of this Order.
32. No order as to costs.
33. The petition alongwith pending applications, if any, stand disposed of in
above terms.
TUSHAR RAO GEDELA
(JUDGE)
/yrj/rl
JUNE 19, 2026
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