Novamax Industries Vs. Prem Appliances

Brief Legal News Write-Up

Novamax Industries LLP Vs. Prem Appliances & Anr.
Date of Judgment: 19.06.2026 : Case No.: CS(COMM) 177/2021 : Neutral Citation: 2026:DHC:5149 : Court: High Court of Delhi : Hon'ble Judge: Justice Tushar Rao Gedela

The Court considered a dispute concerning alleged infringement of a registered design and passing off in relation to air coolers. The case arose from allegations that the defendants were manufacturing and selling air coolers bearing a design that was an identical or fraudulent imitation of the plaintiff’s registered design and were also passing off their goods as those of the plaintiff.

The principal question before the Court was whether the plaintiff’s design infringement claim could survive when evidence on record indicated prior publication of the design before its registration and whether the passing off claim could nevertheless continue independently.

After examining the material on record and the submissions of the parties, Justice Tushar Rao Gedela observed that the plaintiff’s own documents demonstrated publication of the design prior to registration, thereby attracting the grounds for cancellation under Section 19 of the Designs Act, 2000. The Court held that the infringement claim had no real prospect of success because prior publication destroyed the enforceability of the registered design. The Court further emphasized that a passing off action is an independent common law remedy and can survive even if a design infringement claim fails.

Accordingly, the Court partly allowed the application by dismissing the suit insofar as it related to design infringement, while permitting the passing off claim to proceed to trial.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

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Novamax Industries LLP v. Prem Appliances & Anr.

Introduction

The decision of the Delhi High Court in Novamax Industries LLP v. Prem Appliances & Anr. is an important judgment examining the relationship between design infringement and passing off claims. The case highlights the consequences of prior publication of a registered design and clarifies whether a plaintiff can continue a passing off action even after the design infringement claim becomes unsustainable.

The judgment is significant for manufacturers, designers, intellectual property owners, and businesses engaged in product-based industries. It reinforces the importance of maintaining novelty before seeking design registration while simultaneously recognizing that common law rights relating to goodwill and reputation may survive independently of statutory design protection.

Factual and Procedural Background

The plaintiff instituted a commercial suit alleging infringement of several registered designs relating to air coolers. The plaintiff claimed proprietary rights over various registered designs and asserted that it enjoyed exclusive rights in the shape, configuration, and visual appearance of its products. The plaintiff further alleged that the defendants had copied one of its registered cooler designs and were marketing substantially similar products.

According to the plaint, the defendants were not only using a design identical or deceptively similar to the plaintiff’s registered design but were also employing branding elements that allegedly enabled them to ride upon the goodwill and reputation associated with the plaintiff's products. The plaintiff therefore sought relief for both design infringement and passing off.

The defendants challenged the maintainability of the suit through an application seeking summary judgment under Order XIII-A of the Code of Civil Procedure. They argued that the plaintiff's own documents demonstrated prior publication of the design before registration, rendering the design vulnerable under Section 19 of the Designs Act, 2000. They further contended that the plaint lacked the necessary ingredients to sustain a passing off action.

The Court was therefore required to examine whether either or both claims could survive.

Dispute Before the Court

The principal dispute concerned whether the plaintiff could maintain an action for infringement of a registered design when evidence indicated that the design had been published prior to registration.

A second issue arose regarding the passing off claim. The defendants argued that the plaint failed to plead essential ingredients necessary to constitute a valid cause of action for passing off and therefore deserved dismissal at the threshold.

The plaintiff, on the other hand, contended that the defendants had copied the design and were attempting to misrepresent their products as those of the plaintiff. It was argued that even if issues arose concerning design registration, the passing off claim remained independently maintainable and required adjudication through evidence at trial.

Reasoning and Analysis of the Court

The Court first examined the statutory framework governing cancellation of designs under Section 19 of the Designs Act, 2000. Section 19 permits cancellation of a registered design where it has been published in India or elsewhere prior to registration, where it is not new or original, or where it otherwise fails to satisfy statutory requirements.

Upon examining the record, the Court noted that the plaintiff’s own documents disclosed invoices predating the design application as well as publication of the relevant cooler design on the plaintiff’s website before registration. The Court found that these facts constituted prior publication within the meaning of Section 19. As a result, the Court concluded that the plaintiff's infringement claim had no real prospect of success.

The Court therefore held that the suit insofar as it related to infringement of the registered design could not continue and deserved dismissal under the summary judgment provisions.

The Court then turned to the more significant question regarding passing off. It carefully examined the pleadings and observed that the plaintiff had specifically alleged imitation, deception, diversion of trade, and misappropriation of goodwill. The Court found that these averments were sufficient to constitute a cause of action for passing off at the pleading stage.

While addressing the legal position, the Court extensively relied upon the Full Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. and the Division Bench decision in Crocs Inc. USA v. Liberty Shoes Ltd.. These decisions recognized that a composite suit combining design infringement and passing off claims is maintainable and that passing off survives independently of statutory design rights.

The Court further referred to Birhan Karan Sugar Syndicate (P) Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577, Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, AIR 1965 SC 980. These authorities were discussed to explain the distinction between infringement actions and passing off actions and the requirement of proving goodwill, misrepresentation, and likelihood of damage in passing off cases.

The Court emphasized that passing off is a valuable common law remedy preserved by Section 27(2) of the Trade Marks Act, 1999 and that its availability cannot be denied merely because the dispute also involves a registered design. Whether the plaintiff ultimately succeeds on passing off would depend upon evidence, but the claim could not be summarily rejected at this stage.

Final Decision of the Court

The Delhi High Court partly allowed the defendants’ application for summary judgment.

The Court dismissed the plaintiff’s claim for design infringement after concluding that prior publication deprived the plaintiff of any realistic prospect of success on that issue. However, the Court rejected the defendants’ challenge to the passing off claim and held that the same required adjudication through evidence during trial. The suit was therefore permitted to continue solely in respect of the passing off cause of action.

Point of Law Settled

The judgment clarifies that prior publication of a design before registration can defeat a design infringement action and may justify dismissal of such a claim at the summary judgment stage. At the same time, the decision reaffirms that passing off is an independent common law remedy based on goodwill, misrepresentation, and likelihood of damage. Even where statutory design rights become unenforceable, a passing off action can continue on the same factual matrix if the pleadings disclose a viable cause of action. The ruling strengthens the distinction between statutory design protection and common law protection of business goodwill.

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Case Details

Title of the Case: Novamax Industries LLP v. Prem Appliances & Anr.

Date of Judgment/Order: 19.06.2026

Case Number: CS(COMM) 177/2021

Neutral Citation: 2026:DHC:5149

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tushar Rao Gedela

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Images used herein do not reflect actual images used in Judgement and that the same are for illustrative purpose only. Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

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4. Can a Passing Off Claim Survive Failure of a Design Infringement Action?

5. Delhi High Court Applies Section 19 of Designs Act in Air Cooler Design Dispute

6. Prior Publication and Design Registration: Important Delhi High Court Judgment

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Headnote of the Judgment

Novamax Industries LLP v. Prem Appliances & Anr., High Court of Delhi, CS(COMM) 177/2021, decided on 19.06.2026, Neutral Citation: 2026:DHC:5149. The defendants sought summary dismissal of a suit alleging infringement of a registered air-cooler design and passing off. The Court found that the plaintiff’s own documents established prior publication of the design before registration, thereby attracting Section 19 of the Designs Act, 2000 and defeating the infringement claim. Consequently, the design infringement portion of the suit was dismissed. However, relying on the principles governing passing off and composite intellectual property actions, the Court held that the passing off claim disclosed a triable cause of action and could not be rejected summarily. The application was therefore partly allowed and the suit was permitted to continue solely on the passing off claim.

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Infographic Thumbnail Prompt (14:9 Aspect Ratio)

Create a premium 14:9 ultra-realistic 3D legal intellectual property infographic depicting a major industrial design and passing off dispute involving air coolers. At the center, display a large registered design certificate for a modern air cooler being torn into two sections. One side should feature a glowing red stamp reading “PRIOR PUBLICATION” and “DESIGN CLAIM DISMISSED”, symbolizing invalidation of the design infringement claim. The other side should feature a golden shield labeled “PASSING OFF CLAIM SURVIVES” protecting business goodwill and brand reputation. Include highly detailed 3D air coolers with identical shapes and configurations facing each other, digital product catalogs, website publication screenshots, intellectual property files, design registration documents, legal scales, courtroom records, and commercial market imagery. Prominently display text elements: “Design Infringement Rejected”, “Passing Off Continues”, “Section 19 Designs Act”, “Prior Publication”, and “Goodwill & Reputation Protected”. Use cinematic lighting, photorealistic textures, reflective metallic surfaces, premium blue-gold legal theme, dramatic depth of field, high-detail corporate legal aesthetics, and publication-quality composition suitable for a leading legal news platform. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

Laboratoires Griffon Vs. Psychotropics India

Brief Legal News Write-Up

Laboratoires Griffon Pvt. Ltd. & Anr. Vs. Psychotropics India Limited
Date of Judgment: 17.06.2026 : Case No.: Interim Application No. 4006 of 2022 in Commercial IP Suit (L) No. 3999 of 2022 : Neutral Citation: Not Available : Court: High Court of Judicature at Bombay : Hon'ble Judge: Justice Arif S. Doctor

The Court considered a dispute concerning alleged trademark infringement and passing off in relation to pharmaceutical products marketed under the trademarks “GRILINCTUS” and “PIL-LINCTUS”. The case arose from allegations that the defendant adopted and used the mark “PIL-LINCTUS” for medicinal products, which was deceptively similar to the plaintiffs’ long-standing registered trademark “GRILINCTUS”.

The principal question before the Court was whether the defendant’s use of “PIL-LINCTUS” was deceptively similar to the plaintiffs’ registered trademark “GRILINCTUS” and likely to cause confusion in the pharmaceutical market.

After examining the material on record and the submissions of the parties, Justice Arif S. Doctor observed that the rival marks were phonetically, structurally, and visually similar and that a stricter standard must be applied in cases involving medicinal products because confusion may have serious consequences. The Court held that the plaintiffs had established prior registration, long-standing use, goodwill, and a strong prima facie case of infringement and passing off. The Court emphasized that even the possibility of confusion between medicinal products should be avoided.

Accordingly, the Court allowed the interim application and granted interim relief restraining the defendant from using the impugned mark “PIL-LINCTUS” in relation to pharmaceutical products pending disposal of the suit.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

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Laboratoires Griffon Pvt. Ltd. & Anr. v. Psychotropics India Limited

Introduction

Trademark disputes involving pharmaceutical products occupy a special place in intellectual property law because confusion between medicines can have consequences far beyond commercial loss. The decision in Laboratoires Griffon Pvt. Ltd. & Anr. v. Psychotropics India Limited reiterates the judicial approach that greater caution is required when assessing deceptively similar pharmaceutical trademarks.

The judgment is significant because it addresses the interplay between descriptive elements in a trademark, the overall similarity of competing marks, and the heightened public interest considerations applicable to medicinal products. The ruling serves as an important reminder that pharmaceutical companies must exercise greater care while selecting trademarks to ensure that consumers, pharmacists, and medical practitioners are not misled.

Factual and Procedural Background

The plaintiffs are proprietors of the trademark “GRILINCTUS,” which has been registered and used in relation to pharmaceutical products for several decades. The plaintiffs asserted that they had continuously used the trademark since the early 1970s and had built substantial goodwill and reputation in the market. They also relied upon historical invoices, promotional material, sales figures, and evidence of enforcement actions against third parties using similar marks.

The dispute arose when the plaintiffs became aware of the defendant's use of the mark “PIL-LINCTUS” for pharmaceutical products. According to the plaintiffs, the impugned mark was deceptively similar to their registered trademark and was likely to cause confusion among consumers and members of the trade.

The defendant resisted the claim by asserting that “PIL” was derived from its corporate name, Psychotropics India Limited, and that “LINCTUS” was a descriptive term commonly used in the pharmaceutical industry for cough syrup preparations. The defendant further contended that numerous trademark registrations containing the word “LINCTUS” existed and that the plaintiffs could not claim a monopoly over the expression.

An Interim Application seeking injunctive relief was filed by the plaintiffs pending adjudication of the suit.

Dispute Before the Court

The principal issue before the Court was whether the trademark “PIL-LINCTUS” was deceptively similar to the registered trademark “GRILINCTUS”.

The plaintiffs argued that the rival marks were phonetically, visually, and structurally similar and that confusion was likely, particularly because both marks were used in relation to pharmaceutical products. The plaintiffs further contended that the defendant was attempting to come as close as possible to their established trademark.

The defendant argued that “LINCTUS” was descriptive and common to the trade, that the prefixes “GRI” and “PIL” were entirely different, and that the use of a hyphen created sufficient distinction between the marks. The defendant also relied upon alleged delay, acquiescence, and the existence of several third-party registrations incorporating the word “LINCTUS”.

Reasoning and Analysis of the Court

The Court commenced its analysis by reiterating the settled principle that trademarks must be compared as a whole rather than by dissecting them into separate components. The proper test is the overall impression created in the mind of a person of average intelligence and imperfect recollection.

The Court relied upon the principles laid down in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 and Hiralal Parbhudas v. Ganesh Trading Co., emphasizing that deceptive similarity must be assessed from the standpoint of an ordinary consumer rather than through a meticulous side-by-side comparison.

Particular emphasis was placed upon the Supreme Court's landmark decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, wherein the Court observed that confusion between medicinal products may have life-threatening consequences. The judgment quoted the well-known observation that “drugs are poisons, not sweets,” thereby requiring a stricter standard when evaluating pharmaceutical trademarks.

Applying these principles, the Court found that “GRILINCTUS” and “PIL-LINCTUS” were phonetically, structurally, and visually similar. The Court observed that the suffix “LINCTUS” dominated the overall impression of both marks and that the prefixes “GRI” and “PIL” did not sufficiently distinguish them. The mere presence of a hyphen was considered inadequate to eliminate the possibility of confusion.

The Court distinguished F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., where the rival marks were found sufficiently distinguishable because their prefixes created different overall commercial impressions. In contrast, the Court held that the common suffix “LINCTUS” overwhelmingly dominated the competing marks in the present case.

The Court also referred to UltraTech Cement Ltd. v. Alaknanda Cement Pvt. Ltd., accepting the contention that a party seeking registration of a mark cannot simultaneously contend that an essential component of that mark is wholly descriptive and incapable of trademark significance.

On the issue of delay and acquiescence, the Court considered Willmott v. Barber, Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448, and Kamath Hotels (India) Ltd. v. Royal Orchid Hotels Ltd., holding that mere delay does not defeat a claim where a strong case of infringement exists. Acquiescence requires proof of active encouragement or consent, which was absent in the present case.

The Court further relied upon Corn Products Refining Co. v. Shangrila Food Products Ltd. and National Bell Co. v. Metal Goods Manufacturing Co. Pvt. Ltd. while rejecting the defendant’s reliance on third-party registrations. The Court observed that mere production of registry entries is insufficient without proof of actual market use.

Ultimately, the Court concluded that the plaintiffs had established prior registration, continuous use, substantial goodwill, and a strong prima facie case of infringement and passing off. The balance of convenience was found to be in favour of the plaintiffs.

Final Decision of the Court

The Court allowed the Interim Application and granted interim relief in favour of the plaintiffs. It restrained the defendant from using the impugned trademark “PIL-LINCTUS” in relation to pharmaceutical products during the pendency of the suit. No order as to costs was passed. The Court also recorded a statement that the order would not be acted upon for a period of four weeks.

Point of Law Settled

The judgment reinforces that pharmaceutical trademarks are subject to a stricter standard of scrutiny because public health considerations demand avoidance of even a possibility of confusion. It clarifies that a trademark must be assessed as a whole and that descriptive arguments cannot automatically defeat an infringement claim where the overall impression created by the competing marks is deceptively similar. The decision also reiterates that delay alone is not a defence to infringement and that third-party registrations, without proof of actual market use, do not establish that a term has become common to trade.

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Case Details:

Title of the Case: Laboratoires Griffon Pvt. Ltd. & Anr. v. Psychotropics India Limited

Date of Judgment/Order: 17.06.2026

Case Number: Interim Application No. 4006 of 2022 in Commercial IP Suit (L) No. 3999 of 2022

Neutral Citation: Not Available

Name of Court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Justice Arif S. Doctor

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Images used herein do not reflect actual images used in Judgement and that the same are for illustrative purpose only. Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

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4. Pharmaceutical Trademark Infringement: Analysis of the GRILINCTUS Judgment

5. Can Descriptive Elements Defeat a Trademark Claim? Bombay High Court Answers

6. Interim Injunction Granted in GRILINCTUS Trademark Litigation

7. Trademark Protection for Medicines: Key Takeaways from Recent Bombay High Court Ruling

8. Cadila Principles Reaffirmed in Pharmaceutical Trademark Dispute

9. PIL-LINCTUS Restrained: Important Intellectual Property Judgment of 2026

10. Pharmaceutical Brand Protection and Deceptive Similarity under Trademark Law

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Headnote of the Judgment

Laboratoires Griffon Pvt. Ltd. & Anr. v. Psychotropics India Limited, High Court of Judicature at Bombay, Interim Application No. 4006 of 2022 in Commercial IP Suit (L) No. 3999 of 2022, decided on 17.06.2026. The plaintiffs sought an interim injunction restraining the defendant from using the trademark “PIL-LINCTUS” for pharmaceutical products, alleging infringement and passing off of their registered trademark “GRILINCTUS.” Applying the principles governing deceptive similarity in pharmaceutical trademarks and relying upon the stricter standard laid down in Cadila Healthcare Ltd., the Court held that the rival marks were phonetically, visually, and structurally similar and likely to cause confusion. The Court found a strong prima facie case in favour of the plaintiffs and allowed the interim application, restraining use of the impugned mark pending disposal of the suit.

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Infographic Thumbnail Prompt (14:9 Aspect Ratio)

Create a premium 14:9 ultra-realistic 3D legal-pharmaceutical infographic depicting a major trademark infringement dispute involving two competing cough syrup brands. At the center, display two large medicine bottles labeled “GRILINCTUS” and “PIL-LINCTUS” facing each other with a glowing red warning symbol showing trademark conflict and consumer confusion. Show a giant metallic legal scale balancing intellectual property rights against pharmaceutical safety concerns. Include pharmaceutical packaging, prescription sheets, medicine boxes, capsules, trademark registration certificates, legal files, courtroom documents, digital trademark databases, and glowing comparison graphics highlighting phonetic and visual similarity between the competing marks. Add a prominent red injunction stamp reading “USE RESTRICTED” and large text banners stating “Pharmaceutical Trademark Dispute”, “Deceptive Similarity”, “Interim Injunction Granted”, and “Consumer Safety First”. Use cinematic lighting, ultra-realistic textures, reflective surfaces, premium legal-business aesthetics, dramatic depth of field, high-detail 3D rendering, blue-gold corporate color scheme, and publication-quality composition suitable for a leading legal news portal. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

Honasa Consumer Ltd. Vs. Visage Beauty and Health Care

Brief Legal News Write-Up

Honasa Consumer Ltd. Vs. Visage Beauty and Health Care Pvt. Ltd. & Anr.
Date of Judgment: 19.06.2026 : Case No.: C.O. (COMM.IPD-TM) 215/2023 : Neutral Citation: 2026:DHC:4870 : Court: High Court of Delhi : Hon'ble Judge: Justice Tushar Rao Gedela

The Court considered a dispute concerning the validity of the registered trademark “D-TAN” in relation to cosmetic and skincare products. The case arose from allegations that Visage Beauty and Health Care Pvt. Ltd., proprietor of the registered mark “D-TAN”, issued a cease-and-desist notice to Honasa Consumer Ltd. objecting to the latter’s use of the expression “DETAN” in connection with its skincare products.

The principal question before the Court was whether the registered trademark “D-TAN” was a descriptive and non-distinctive expression incapable of exclusive trademark protection and therefore liable to be removed from the Register of Trade Marks.

After examining the material on record and the submissions of the parties, Justice Tushar Rao Gedela observed that the expression “D-TAN” directly described the intended purpose and function of skincare products, namely the removal of tanning from the skin. The Court found that the mark was descriptive, common to trade, lacked inherent distinctiveness, and that the respondent had failed to establish that it had acquired secondary significance sufficient to justify continued registration.

The Court held that descriptive expressions which designate the nature, quality, or intended purpose of goods cannot ordinarily enjoy exclusive trademark protection. The Court emphasized that widespread industry use of the expressions “D-TAN” and “DETAN” demonstrated their descriptive character rather than source-identifying significance.

Accordingly, the Court allowed the rectification petition and directed the Registrar of Trade Marks to cancel and remove the registration of the trademark “D-TAN” bearing Registration No. 2065580 in Class 3 from the Register of Trade Marks.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

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Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr.

Introduction

The Delhi High Court's decision in Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr. is a significant addition to Indian trademark jurisprudence dealing with descriptive trademarks and rectification proceedings. The judgment examines whether a term commonly used in the cosmetics and skincare industry to describe the purpose of a product can be monopolized through trademark registration.

The case is particularly relevant for businesses operating in highly competitive consumer markets where product descriptions often overlap. It highlights the distinction between a trademark that identifies the source of goods and a descriptive expression that merely explains the characteristics or intended use of a product. The ruling serves as an important reminder that trademark law protects brand identifiers, not ordinary descriptive language that competitors may legitimately need to use in trade.

Factual and Procedural Background

Visage Beauty and Health Care Pvt. Ltd. applied for registration of the trademark “D-TAN” in Class 3 for cosmetic products on 9 December 2010, claiming use since 1 December 2009. During examination, the Trade Marks Registry raised objections under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999 on the ground that the mark lacked distinctiveness and appeared descriptive in nature. Despite these objections, the mark was eventually advertised and subsequently registered on 30 January 2018.

Honasa Consumer Ltd., a well-known consumer products company, launched skincare products under its “AQUALOGICA” brand. In 2023, Visage issued a cease-and-desist notice alleging infringement of its registered trademark “D-TAN” by Honasa’s use of the expression “DETAN” in connection with certain skincare products.

Honasa responded by asserting that “DETAN” was a descriptive term widely used in the skincare industry to indicate products intended to remove tanning from the skin. According to Honasa, the term was generic, lacked distinctiveness, and could not be exclusively appropriated by any single trader.

Following the exchange of notices, Honasa filed a rectification petition under Section 57 of the Trade Marks Act, 1999 seeking cancellation of the registration of the trademark “D-TAN” from the Register of Trade Marks.

Dispute Before the Court

The principal dispute before the Court was whether the registered trademark “D-TAN” was capable of trademark protection under the Trade Marks Act, 1999.

Honasa contended that the expression directly described the purpose and intended result of skincare products designed to remove tanning. It argued that the mark was descriptive, common to trade, and incapable of distinguishing the goods of one trader from another.

Visage, on the other hand, argued that “D-TAN” was a coined expression adopted in 2009 and extensively used for over fifteen years. It claimed substantial sales, widespread recognition, significant advertising expenditure, and asserted that the mark had acquired distinctiveness and secondary meaning through long and continuous use.

The Court was therefore required to determine whether the mark was descriptive or distinctive and whether any acquired distinctiveness justified its continued registration.

Reasoning and Analysis of the Court

The Court undertook a detailed examination of the statutory scheme contained in Sections 9, 12 and 57 of the Trade Marks Act, 1999.

The Court first reviewed the examination history of the trademark application and noted that the Trade Marks Registry had originally objected to the registration under Sections 9(1)(a) and 9(1)(b). These provisions prohibit registration of marks that are devoid of distinctive character or consist exclusively of indications describing the characteristics, quality, intended purpose or other attributes of goods.

Upon examining the record, the Court found that the responses filed by the proprietor did not adequately overcome the objections regarding lack of distinctiveness and descriptiveness. The Court observed that there was no satisfactory explanation demonstrating why the mark deserved registration despite the statutory objections.

The Court then examined the linguistic meaning of the expression “D-TAN”. Referring to dictionary definitions, it noted that the prefix “de” ordinarily denotes removal or reversal, while “tan” refers to the tanning of skin caused by exposure to sunlight. When combined, the expression naturally conveyed the idea of removing or reversing tanning.

According to the Court, an average consumer would immediately understand “D-TAN” as describing the function or intended purpose of the product rather than identifying its commercial source. No imagination or mental process was required to understand the meaning of the expression.

The Court also relied upon industry practice and evidence demonstrating widespread use of the expressions “D-TAN” and “DETAN” by numerous skincare manufacturers. Such widespread use indicated that the expression had become a descriptive term within the trade.

While discussing principles relating to descriptive trademarks, the Court referred to the well-known treatise McCarthy on Trademarks and Unfair Competition. The Court noted that a mark is descriptive when it directly conveys information about the intended purpose, function, quality, characteristics, or effect of a product. The treatise further recognizes that extensive third-party use of a term is a strong indicator of descriptiveness.

The Court also referred to its recent decision in Renee Cosmetics Private Limited v. Rupali Sharma & Anr., C.O. (COMM.IPD-TM) 107/2025, decided on 05.06.2026, while examining the principles governing descriptive marks.

A significant aspect of the judgment was the Court's analysis of acquired distinctiveness and secondary meaning. Although Visage produced evidence of substantial sales figures and promotional expenditure, the Court held that commercial success alone does not automatically establish secondary meaning. To establish acquired distinctiveness, a proprietor must demonstrate that consumers associate the mark exclusively with its goods and no one else's.

The Court found that the respondent had not produced sufficient evidence such as consumer surveys, market recognition studies, or other material demonstrating that the public exclusively associated the expression “D-TAN” with its products.

Another important factor considered by the Court was the respondent's own manner of usage. The Court observed that the respondent prominently displayed its house mark “Professional O3+” on product packaging, while “D-TAN” appeared more as a description of the product's function. This supported the conclusion that even the proprietor itself used the expression descriptively rather than as a primary source identifier.

The Court further held that Honasa qualified as an “aggrieved person” under Section 57 because the cease-and-desist notice sought to prevent it from using a descriptive expression that was legitimately required in trade. Reliance was placed upon the Supreme Court's decision in Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92 regarding the meaning of an aggrieved person in rectification proceedings.

Having considered the evidence and statutory framework, the Court concluded that the mark was descriptive, common to trade, lacked distinctiveness, and had not acquired secondary significance sufficient to justify continued registration.

Final Decision of the Court

The Delhi High Court allowed the rectification petition filed by Honasa Consumer Ltd.

The Court directed the Registrar of Trade Marks to cancel the registration of the trademark “D-TAN” bearing Application No. 2065580 in Class 3. The Registrar was further directed to remove the trademark from the Register of Trade Marks within four weeks from receipt of the order.

No order as to costs was passed.

Point of Law Settled

The judgment reaffirms that descriptive expressions indicating the nature, purpose, quality, function, or intended result of goods cannot ordinarily enjoy exclusive trademark protection.

The Court clarified that commercial success and high sales figures alone are insufficient to establish acquired distinctiveness. A proprietor seeking protection for a descriptive mark must produce convincing evidence that consumers identify the mark exclusively with its goods.

The decision also underscores that widespread industry use of a term is a strong indicator that the expression is descriptive and common to trade. Such terms must remain available for use by all market participants and cannot be monopolized through trademark registration.

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Case Details:

Title of the Case: Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr.

Date of Judgment/Order: 19.06.2026

Case Number: C.O. (COMM.IPD-TM) 215/2023

Neutral Citation: 2026:DHC:4870

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tushar Rao Gedela

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Images used herein do not reflect actual images used in Judgement and that the same are for illustrative purpose only. Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

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Suggested SEO Titles:

1. Delhi High Court Cancels D-TAN Trademark Registration in Landmark Descriptive Mark Ruling

2. Honasa Consumer Wins Trademark Rectification Case Against D-TAN Registration

3. Can Descriptive Terms Be Registered as Trademarks? Delhi High Court Answers

4. Delhi High Court Removes D-TAN Trademark from Register of Trade Marks

5. D-TAN Held Descriptive and Common to Trade: Important Trademark Judgment

6. Honasa Consumer v. Visage Beauty: Key Takeaways on Descriptive Trademarks

7. Acquired Distinctiveness and Descriptive Marks: Delhi High Court Clarifies Law

8. Trademark Rectification under Section 57: Analysis of the D-TAN Judgment

9. Delhi High Court on Secondary Meaning and Descriptive Trademark Protection

10. Cosmetics Industry Trademark Dispute Ends with Cancellation of D-TAN Registration

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Suggested SEO Tags:

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Headnote of the Judgment:

Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr., High Court of Delhi, C.O. (COMM.IPD-TM) 215/2023, decided on 19.06.2026. The petitioner filed a rectification petition under Section 57 of the Trade Marks Act, 1999 seeking cancellation of the registered trademark “D-TAN” in Class 3. The Court examined whether the mark was descriptive, non-distinctive, and common to trade. Holding that “D-TAN” directly described the intended purpose of skincare products used for removal of tanning and that the respondent failed to establish acquired distinctiveness or secondary meaning, the Court concluded that the mark was wrongly remaining on the Register of Trade Marks. The petition was allowed and the Registrar of Trade Marks was directed to cancel and remove the registration of the trademark “D-TAN”.

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Infographic Thumbnail Prompt (14:9 Aspect Ratio)

Create a premium 14:9 ultra-realistic 3D legal-business infographic depicting a major trademark cancellation dispute in the cosmetics and skincare industry. At the center, show a large glossy trademark certificate bearing the term “D-TAN” being removed from a digital trademark register with dramatic visual effects. One side should depict luxury skincare and cosmetic products labeled generically as “Detan Products,” sun-exposed skin transformation graphics, beauty cream jars, skincare tubes, and cosmetic branding elements. The opposite side should depict trademark law concepts including legal scales, intellectual property documents, registration records, courtroom files, legal books, digital evidence screens, and trademark registry databases. Show a glowing red “DESCRIPTIVE MARK” stamp and a large metallic “REGISTRATION CANCELLED” seal hovering over the trademark certificate. Include visual cues demonstrating widespread industry use of similar skincare terminology by multiple competing cosmetic brands. Use cinematic lighting, reflective surfaces, realistic textures, depth of field, premium corporate design aesthetics, gold and blue color palette, dramatic legal atmosphere, high-detail 3D rendering, photorealistic quality, and publication-grade composition suitable for legal news media. Include prominent text elements: “D-TAN Trademark Cancelled”, “Descriptive Mark”, “Common to Trade”, “Trademark Rectification Allowed”, and “Section 57 Trade Marks Act”. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.