Visage Beauty and Health Care applied for registration of D-TAN in Class 3 in December 2010, claiming use from December 2009. The mark was eventually registered in January 2018.<\/p>\n
Honasa Consumer later launched products under its AQUALOGICA brand and used DETAN in relation to products including sunscreen. In April 2023, Visage issued a cease and desist notice alleging that Honasa’s use of DETAN infringed its D-TAN trademark.<\/p>\n
Honasa responded that D-TAN was descriptive, commonly used in the cosmetics trade to indicate removal of tanning, and incapable of exclusive trademark protection. It thereafter filed a petition under Section 57 of the Trade Marks Act, 1999 seeking removal of D-TAN from the Register.<\/p>\n
The Court first considered the circumstances in which D-TAN had proceeded to registration. The Trade Marks Registry had originally objected to the application under Sections 9(1)(a) and 9(1)(b), stating that the mark lacked distinctive character and consisted of an indication capable of designating characteristics or intended purposes of the goods.<\/p>\n
According to the Court, the proprietor’s response did not satisfactorily answer these objections. In particular, the response did not adequately explain how the word mark D-TAN could distinguish the goods of one undertaking from those of another.<\/p>\n
The Court then considered what D-TAN communicated to a consumer of skin care products. It referred to the ordinary meaning of the prefix \u201cde\u201d, which indicates removal or reversal, and \u201ctan\u201d, meaning the colour or condition of skin resulting from exposure to the sun.<\/p>\n
When the two were put together in the context of skin care products, D-TAN conveyed removal or reversal of tanning. The expression therefore told the consumer what the product was intended to do.<\/p>\n
The Court did not accept the argument that D-TAN became distinctive merely because the precise expression did not appear in an English dictionary. What mattered was the meaning conveyed by the mark in relation to the goods for which protection was claimed.<\/p>\n
The manner in which the cosmetics industry used D-TAN and DETAN also supported this conclusion. The Court considered material showing use of the expressions by the parties and other manufacturers and concluded that they operated as descriptors of the kind, quality and intended purpose of the products.<\/p>\n
The proprietor’s own manner of using D-TAN was also relevant. Its products prominently displayed PROFESSIONAL O3+, while D-TAN appeared with terms such as BLUEBERRY, CRANBERRY and OXY. According to the Court, this usage indicated that D-TAN itself was being used more as a description of the goods than as an indicator of their commercial source.<\/p>\n
An unusual part of the case concerned the proprietor’s reliance on Section 12 of the Trade Marks Act during prosecution of the D-TAN application.<\/p>\n
Section 12 permits registration in circumstances involving honest concurrent use or other special circumstances and contemplates the possibility of identical or similar marks being registered by more than one proprietor.<\/p>\n
The Court described reliance on Section 12 as an \u201cAchilles heel\u201d in the proprietor’s case. In its view, a person who sought registration on the basis of a statutory provision contemplating concurrent rights could not easily turn around and assert complete exclusivity against another person using the same or a similar expression.<\/p>\n
The Court therefore treated the registration history of D-TAN as inconsistent with the breadth of exclusivity later asserted against Honasa.<\/p>\n
Visage relied substantially on long use, turnover, advertising and promotional expenditure to argue that D-TAN had acquired secondary meaning.<\/p>\n
The Court accepted the legal possibility that a descriptive mark may acquire distinctiveness through use. It nevertheless distinguished commercial success from trademark distinctiveness.<\/p>\n
Sales figures and Chartered Accountant certificates could establish that the products had sold successfully. They did not necessarily establish that consumers understood D-TAN as identifying only one commercial source.<\/p>\n
For secondary meaning to assist the proprietor, the evidence had to establish that the consuming public associated D-TAN with Visage and Visage alone. The Court found no sufficient evidence establishing this connection.<\/p>\n
The claim of acquired distinctiveness therefore failed.<\/p>\n
The findings of the Court are as follows:<\/p>\n
\u201cCombining both the words ‘de’ and ‘tan’ together would clearly demonstrate removal or reversal of tanned condition 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.\u201d<\/p><\/blockquote>\n
Paragraph 23<\/h4>\n
\u201cIn 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.\u201d<\/p><\/blockquote>\n
Paragraph 27<\/h4>\n
The Court stated that while the Chartered Accountant certificates established the commercial success of the products, they did not establish that D-TAN had become so associated in the minds of consumers that the goods of Visage alone came to mind when consumers encountered the mark.<\/p>\n
Paragraph 31<\/h4>\n
The Court allowed the petition and directed the Registrar of Trade Marks to cancel and remove the D-TAN registration bearing application number 2065580 in Class 3 from the Register.<\/p>\n
Case Citation<\/h3>\n