The exclusivity paradox: Lessons from Honasa Consumer Ltd. v. Visage Beauty

INTRODUCTION

The increasing use of function-oriented product descriptors in the cosmetics and personal care industry has intensified the tension between commercial branding practices and the distinctiveness requirement under trademark law. While descriptive expressions may effectively communicate a product's purpose or characteristics, they ordinarily remain incapable of distinguishing commercial origin and are therefore excluded from trademark protection, as granting a monopoly over such terms would unfairly impede competitors from describing their own products.

The Delhi High Court’s decision in Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr.¹, exemplifies this conflict. The dispute, which centred on the validity of the registered trademark "D-TAN," underscores that descriptiveness is determined by actual trade usage rather than registration status or branding intent. Furthermore, the Court clarified that neither the duration of registration nor the revenue generated from the use of the mark can substitute for direct evidence of consumer association, particularly where registration was originally granted on the basis of "honest concurrent use" under Section 12 of the Trade Marks Act.

FACTS

Visage Beauty and Health Care Pvt. Ltd. (“the Respondent”) had applied for registration of the word mark “D-TAN” in Class 3, on December 9, 2010, claiming use since December 1, 2009.

Honasa Consumer Ltd. (“the Petitioner”) marketed its skincare products under the brand name “AQUALOGICA,” and launched products including “AQUALOGICA DETAN + DEWY SUNSCREEN.”

In April 2023, the Respondent issued a cease and desist notice alleging that the Petitioner’s use of the word “DETAN” infringed its registered mark.

The Petitioner denied the allegation and contended that the word “DETAN” or “D-TAN” was a commonly used descriptive expression referring to removal of tanning from the skin. The Petitioner subsequently approached the Delhi High Court under Section 57 of the Trade Marks Act, 1999, seeking cancellation and rectification of the registered mark.

COURT’S DECISION AND ANALYSIS

The Court accepted the Petitioner’s contentions and directed the Registrar to cancel the registration of the wordmark “D-TAN”. The reasoning of the Court was based on the following three findings:

First, the Court examined the original prosecution history of the Respondent’s application. In 2012, the Registry objected to the mark under Section 9(1)(a) and (b), finding it devoid of distinctive character. The Respondent offered no substantive justification and instead invoked Section 12 of the Act, which permits registration of an otherwise non-distinctive or conflicting mark on the basis of ‘honest concurrent use’. The Court, describing this as 'Achilles' heel', observed that a proprietor who secures registration by invoking honest concurrent use necessarily accepts the legitimacy of concurrent use by, and cannot later invoke the same registration to exclude them,

Second, applying the test laid down in McCarthy on Trademarks and Unfair Competition for examining how an entire trade uses a term, the Court found that the term “D-TAN” and “DETAN” were used descriptively throughout the cosmetic industry. Further, within the range of products launched by the Respondent, the term “D-TAN” appeared in diminished font beneath the prominently displayed house mark "Professional O3+." The Court held that this practice, on the part of the Respondent itself, confirmed that the term functioned as a descriptor of the product rather than as an indicator of trade origin.

Third, with respect to acquired distinctiveness, the Court declined to accept that revenue growth and promotional expenditure, without more, established secondary meaning. It held that the Chartered Accountant certificates placed on record demonstrated commercial success but did not establish acquired distinctiveness in the absence of independent evidence, such as consumer surveys, showing that consumers exclusively associated the mark with the Respondent.

OPINION

This judgment is of particular significance because it reads Sections 9 and 12 of the Act in conjunction. Section 9 sets out the absolute grounds of refusal, denying registration to marks devoid of distinctive character or consisting exclusively of descriptive indications, subject to a proviso permitting registration where distinctiveness has been acquired through use. Section 12, by contrast, constitutes a narrower exception permitting registration notwithstanding non-distinctiveness or conflict, upon the Registrar being satisfied of honest concurrent use — a provision that necessarily contemplates the coexistence of identical or similar marks among multiple proprietors. The Court's reasoning clarifies that a proprietor who secures registration through recourse to Section 12 cannot thereafter invoke that registration to exclude the very class of concurrent users the provision was designed to accommodate.

CONCLUSION

This decision reaffirms the principle that descriptiveness is to be assessed by reference to the manner in which the term is used in trade, rather than by reference to dictionary novelty or the subjective branding intent of the proprietor. It further establishes that commercial success, however substantial, cannot serve as a substitute for direct evidence of consumer association where the acquisition of secondary meaning is placed in issue. For proprietors in the FMCG and cosmetics industry, the judgment serves as a reminder that trademark registration does not confer an indefeasible monopoly where the underlying mark lacks inherent or acquired distinctiveness.

Bhawna Mangla

Associate | bhawna.mangla@iprattorneys.com

References:

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