Delhi High Court Cancels 'D-TAN' Trademark, Holds Mark Descriptive And Non-Distinctive

Justice Tushar Rao Gedela allowed a rectification petition filed by Honasa Consumer Ltd, the company behind 'AQUALOGICA'. The Court ordered the Registrar of Trademarks to remove the mark from the register within four weeks.

The dispute arose after Visage Beauty issued a cease and desist notice to Honasa Consumer in April 2023, alleging that its product 'AQUALOGICA DETAN + DEWY SUNSCREEN' infringed the registered mark 'D-TAN'. Visage Beauty claimed to have coined and used the mark since 2009 for its skincare products.

Honasa Consumer responded refuting the allegations, asserting that 'D-TAN' was a generic and descriptive term used industry-wide to denote tan removal and therefore incapable of trademark protection. It subsequently approached the High Court seeking rectification of the registration.

Senior Advocate Abhimanyu Bhandari, appearing for Honasa Consumer, argued that the mark directly described the purpose of the goods. He pointed to widespread third-party use of 'DETAN' and 'D-TAN' across the cosmetics industry, relying on dictionary meanings of "de" and "tan" to show the term simply conveyed removal of skin tanning.

Bhandari also contended that Visage Beauty itself used 'PROFESSIONAL O3+' as its dominant brand, with 'D-TAN' appearing only as a minor descriptor on packaging.

Appearing for Visage Beauty, Advocate Vaibhav Vutts argued that the mark was coined in 2009, did not appear in the English dictionary, and had acquired secondary meaning through fifteen years of continuous use and sales exceeding Rs 51.8 crore in FY 2023-24.

Examining the prosecution history of the mark, the Court noted that Visage Beauty had failed to substantively address the Trade Marks Registry's objection when the application was first examined in 2012.

The Court observed that the response filed by Visage Beauty contained a "complete absence of any response to the objection" regarding the mark being devoid of distinctive character.

On the question of descriptiveness, the Court relied on dictionary meanings along with product packaging from across the cosmetics industry to hold that "the words 'D-TAN' or 'DETAN' would be nothing other than a pure description of the goods manufactured by both the parties."

Referring to Visage Beauty's own product packaging, the Court found that the respondent itself prominently used "Professional O3+" while the mark 'D-TAN' appeared in small font, usually with prefixes like "Blueberry", "Cranberry" and "Oxy" indicating the nature of the product, leading the Court to conclude that the respondent used the mark "more in the nature of a description of the goods rather than a trademark."

On the claim of acquired secondary meaning through long use, the Court held that financial figures alone were insufficient. It observed that the Chartered Accountant certificates placed on record did "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."

Holding that the mark was wrongly remaining on the Register of Trade Marks, the Court allowed the petition and directed the Registrar to cancel registration for 'D-TAN' within four weeks.

No order as to costs was passed.

For Honasa Consumer: Senior Advocate Abhimanyu Bhandari with Advocates Kartika Sharma, Harsha Sandhwani, Sahil Saraswat, Manav Mitra and Shubhika Joshi

For Respondents: Advocates Vaibhav Vutts, Aamna Hasan, Anupriya Shyam, Aarya Deshmukh and Vaibhavi SG for Visage Beauty; Advocates Vikrant Nilesh Goyal, Mohit Goyal, Yash Basoya, Inderpreet Singh and Kunal Dixit for Registrar of Trade Marks.