Whether the term’ HAIR SPA’ is generic, commonly understood, and used by consumers as a treatment for hair. Does the term denote the kind, quality, nature, and intended purpose of the goods?

This Appeal against the order of the Commercial judge, District Court filed by Defendant/Appellants, Pornsricharoenpun Co. Ltd and Ors (Pornsri) at the Delhi High Court challenges the restraint order from using the trademark ‘HAIR SPA.’ The trademark infringement suit was filed by L’Oreal India Private Limited (L’oreal), the registered proprietor of the mark ‘Hair Spa.’

While allowing the Appeal, the Delhi High Court held that it was not convinced that the term ‘Hair Spa’ had acquired distinctiveness for L’oreal to claim a monopoly and exclude others from using the generic expression.

This note discusses the contentions raised by the parties and the reasoning of the Delhi High court in setting aside the District Court Order.

Pornsri (Appellant) before the High Court contended:

1. Ms. A. Ngun Luechaputiporn, a Thai National, is the first and original proprietor of the trademark ‘BERINA,’ used in relation to cosmetics and hair care products, and is registered in India in Class 03. As a registered proprietor, she granted a license to the Appellants, authorizing them to use the trademark concerning the goods above. 
2. Appellants claim that their goods bear the trademark ‘BERINA’ followed by a description of products viz. bleaching preparations, hair colour, hair spa, etc. The expression ‘Hair Spa’ is used as a descriptive phrase and not as a trademark, and thus no action for infringement will lie against them.
3. ‘HAIR SPA’ is a generic word used by consumers as a treatment for hair and denotes the kind, quality, nature, and intended purpose of the goods. Several manufacturers in the cosmetics and hair care industry, apart from hair salons, beauty parlors, and spas, use the expression ‘Hair Spa’ in a descriptive sense. 
4. The trial court’s finding that the Appellants have copied the expression ‘Hair Spa,’ including the styling, colour combination, etc., with a view to usurp the goodwill of the Respondents is erroneous. There is no similarity in the trade dress of the two labels. ‘Hair Spa’ is used as a descriptor of the product and in conjunction with the trademark ‘BERINA’, which prevents any intent to infringe the trademark of the Respondents viz. ‘L’OREAL’.
5. Trial Court has committed an error in holding that Respondent is the owner of the expression ‘Hair Spa’ and the trademark ‘BERINA Hair Spa’ is deceptively similar to it, overlooking the facts (a) ‘HAIR SPA’ cannot be monopolised (b) it is not used by the Appellants as a trademark (c) it is used in juxtaposition with the registered trademark ‘BERINA’ and (d) ‘HAIR SPA’ is not a coined word and at best is a combination of two English words, which are descriptive of the nature of the product.
6. Rectification application filed by the Appellants against the Respondent’s trademark is pending, and no finality can be attached to the validity of the latter’s trademark ‘Hair Spa.’
7. The District Court’s observation that the Appellants have not filed the judgments referred to by them during arguments is not correct. This shows that the Court has passed the order without considering the proposition of law enunciated in the said decisions.

L’oreal (Respondents) contended:

1. They are organised under the laws of France. Since its adoption in the first decade of 1900, they have been using the mark “L’OREAL” word per se and various formatives and labels as trademarks, with the word “L’OREAL” forming their essential part.
2. In 2002 they honestly adopted the trademark ‘Hair Spa’ in relation to hair products and services, and on account of continuous and extensive use, the mark has acquired a global reputation. 
3. Appellants have maliciously adopted and are using the mark ‘Hair Spa’ in relation to hair care products and related services, which will cause confusion with regard to association with the Respondent. 
4. Appellants have claimed trademark rights in the impugned trademark ‘Berina Hair Spa’ and, therefore, cannot allege that the trademark ‘Hair Spa’ is generic or common to trade.
5. The Court’s order is well-reasoned and suffers from no infirmity in law.

High Court’s findings

1. The primary issue in the instant Appeal is whether the Respondents have an exclusive right to use the trademark ‘Hair Spa’ and restrain the Appellants from using an identical/deceptively similar mark.
2. The Appellants have challenged the registration of the Respondents’ trademark ‘Hair Spa’ on the ground that the mark is generic, descriptive, and common to trade. At the interlocutory stage, the Court can consider if the registration relied upon by the Respondent/Plaintiff is valid though the burden lies on the Appellant/Defendant.

The Court, upon considering the rival contentions and evidence, concluded that:

1. The trademark ‘Hair Spa’ is descriptive, and it is commonly used in the trade for products used for treating and nourishing hair. 
2. ‘Hair Spa’ is not a coined word but is only a combination of juxtaposed two popular English words, ‘Hair’ and ‘Spa’. 
3. The extensive material placed on record by the Appellants would show that ‘Hair Spa’ is a commonly used expression and describes hair treatment and falls short of serving as a source identifier of the Respondents. 
4. The Appellant cannot be restrained from using ‘Hair Spa,’ notwithstanding the Respondent’s registration for the trademark ‘Hair Spa.’ Moreover, it also needs to be considered that the Appellants use their brand ‘Berina’ in conjunction with the expression ‘Hair Spa,’ which precludes any intention to use the same as a trademark or to copy the registered trademark of the Respondents.
5. The Court noted that The Appellants’ arguments had not persuaded them to come to a prima facie conclusion that the Respondents’ trademark ‘Hair Spa’ has acquired distinctiveness so as to claim a monopoly and exclude others from using the generic expression.

Considering the above, the High Court allowed the Appeal and set aside the order of the trial court restraining the Appellants from using the mark ‘Hair Spa’ in relation to their business.