What happens when a term commonly used across an industry to describe a product’s function is claimed as an exclusive trademark by one market participant? Can a business prevent competitors from using language that consumers ordinarily understand as descriptive of the product itself?
These questions came before the Delhi High Court in Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd.1, a decision examining the extent to which descriptive expressions can receive protection under the Trade Marks Act, 1999. The dispute concerned the expression “D-TAN,” widely used in the cosmetics and skincare industry in relation to products intended to remove skin tanning caused by sun exposure.
While Visage Beauty and Health Care Pvt. Ltd. asserted exclusive rights over its registered trademark “D-TAN,” Honasa Consumer Ltd. challenged the validity of the registration on the ground that the expression was descriptive, common to trade, and incapable of distinguishing the goods of one trader from another. The judgment consequently examines descriptive marks, acquired distinctiveness, and the evidentiary threshold required to sustain exclusivity over industry terminology.
Background and Evolution of the Dispute
The dispute arose after Visage Beauty and Health Care Pvt. Ltd., proprietor of the skincare brand “Professional O3+,” issued a cease-and-desist notice to Honasa Consumer Ltd. in April 2023 alleging infringement of its registered trademark “D-TAN.” The allegation was based on Honasa’s use of the expression “DETAN” in products such as “Aqualogica Detan + Dewy Sunscreen.”
Visage had applied for registration of the mark “D-TAN” in Class 3 in 2010 claiming user since 2009, and the mark was subsequently registered in 2018. Following receipt of the cease-and-desist notice, Honasa contended that “DETAN/D-TAN” merely described the intended purpose of the products, namely removal of tanning from the skin, and therefore could not be exclusively appropriated. Honasa thereafter instituted rectification proceedings before the Delhi High Court under Section 57 of the Trade Marks Act seeking cancellation of the registration.
Rival Contentions Before the Court
Honasa argued that the registration of “D-TAN” was liable to be cancelled as the expression was descriptive, non-distinctive, and common to trade. Senior counsel appearing for Honasa specifically argued that the registration violated Section 9(1)(c) of the Trade Marks Act on the ground that the mark was devoid of distinctive character. It was contended that “De” signified removal or reversal while “Tan” referred to tanning of the skin, making the expression directly descriptive of the intended purpose of the goods.
Honasa further relied upon widespread third-party usage of “DETAN” and “D-TAN” within the cosmetics industry to demonstrate that the expression had become common to trade and incapable of functioning as a source identifier. It was also argued that Visage itself used “D-TAN” descriptively on product packaging, whereas “Professional O3+” functioned as the dominant brand identifier.
In support of its submissions, Honasa relied upon several decisions including Delhivery Private Limited v. Treasure Vase Ventures Pvt. Ltd.2, Cadila Health Care Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd.3, Pornsricharoenpun Co. Ltd. v. L’Oreal India Pvt. Ltd.4, Marico Ltd. v. Agro Tech Foods Ltd.5, and Hardie Trading Ltd. v. Addison’s Paint and Chemicals Ltd6.
Visage, on the other hand, argued that “D-TAN” was a coined and distinctive mark adopted in 2009 and had acquired substantial goodwill and recognition through long and continuous use. It was contended that considerable sales and promotional activities had resulted in the mark acquiring secondary significance. Visage further argued that the Trade Marks Registry had already examined objections during prosecution before granting registration and therefore the validity of the registration ought not to be disturbed. Additionally, it was argued that Honasa itself had applied for registration of “Aqualogica Detan + Dewy Sunscreen” and therefore could not simultaneously claim that the expression was descriptive or generic.
Visage relied upon decisions including Pankaj Goel v. Dabur India7, Under Armour Inc. v. Aditya Birla Fashion & Retail Ltd.8, Godfrey Philips India Ltd. v. Girnar Food & Beverages Pvt. Ltd.9, and Zydus Wellness Products Ltd. v. Cipla Health Ltd.10
Findings and Reasoning of the Delhi High Court
Justice Tushar Rao Gedela allowed the rectification petition and directed removal of the “D-TAN” registration from the Register of Trade Marks. The Court held that the expression directly conveyed the intended purpose and characteristic of the goods, namely removal or reversal of tanning of the skin, and therefore lacked inherent distinctiveness.
The Court examined the prosecution history of the mark and noted that the Trade Marks Registry had initially raised objections under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act on the ground that the mark lacked distinctiveness and designated the nature or intended purpose of the goods. The Court found that the response furnished by Visage did not satisfactorily overcome those objections.
Significant reliance was also placed on evidence showing extensive third-party use of “DETAN/D-TAN” within the cosmetics industry. In this context, the Court referred to McCarthy on Trademarks and Unfair Competition and its earlier decision in Renee Cosmetics Private Limited v. Ms. Rupali Sharma11 to hold that widespread descriptive use within an industry indicates absence of trademark significance.
Importantly, the Court clarified that its conclusions were based primarily on the factual material placed on record and specifically observed that it was unnecessary to examine the ratios of the numerous authorities cited by the parties. Consequently, except for Renee Cosmetics pvt. ltd., the precedents relied upon by the parties did not form part of the operative reasoning of the judgment.
The Court further rejected Visage’s contention that substantial turnover and commercial success were sufficient to establish acquired distinctiveness. It held that sales figures alone cannot demonstrate that consumers exclusively associate the expression with a single source unless supported by independent evidence establishing such consumer association.
The Court additionally noted that Visage had relied upon Section 12 of the Trade Marks Act during prosecution proceedings. According to the Court, reliance on Section 12 dealing with honest concurrent use itself recognised the possibility of coexistence of similar marks within the market and consequently weakened the assertion of exclusivity advanced by Visage.
Accordingly, the Delhi High Court concluded that “D-TAN” was descriptive, common to trade, devoid of inherent distinctiveness, and had failed to acquire secondary significance warranting continued registration.
Conclusion
The judgment in Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. clarifies that trademark protection cannot ordinarily extend to expressions directly describing the nature, purpose, or characteristic of goods. The decision further underscores that extensive sales and long-standing commercial use, by themselves, are insufficient to establish acquired distinctiveness in the absence of cogent evidence demonstrating exclusive consumer association.
From a trademark enforcement and prosecution perspective, the ruling is significant for its emphasis on prosecution history, industry-wide descriptive usage, and the evidentiary burden required to sustain exclusivity over descriptive terminology. The judgment is likely to remain an important reference point in future disputes concerning descriptive marks and rectification proceedings under the Trade Marks Act, 1999.
Expositor(s): Adv. Aparna Shukla
