Blooming Confusion: Passing Off Claim Fails to Flower

In the decision of Suparshva Swabs India V. Agn International & Ors^[1], the Delhi High Court reaffirmed that in a passing off suit, the foundation lies in the recognition of a Plaintiff’s goodwill and reputation, and not merely in longevity or duration of use of a mark.

FACTS AND CONTENTIONS

The Plaintiff, Suparshva Swabs India, is a manufacturer of cotton buds, cotton balls, and related cosmetic, toiletry, and hygiene products. The Plaintiff holds multiple registrations for its mark “TULIPS” and other formative marks in Class 3 and has been using the same since 1999. In its argument, the Plaintiff contended that its mark had gained distinctiveness through long and exclusive use and further relied upon its domain name ‘tulipshygiene.com’ and brand extensions such as “HYGA BY TULIPS”. On the other hand, Defendant is engaged in offering perfumes and cosmetic products under its mark “AGN TULIP”.

In this regard, the Plaintiff’s point of contention was that the Defendant adopted a mark that was deceptively similar to the Plaintiff’s “TULIPS” marks. The Plaintiff averred that the word, ‘TULIP’ formed the dominant and memorable component of both marks, and the Defendant’s use of its mark constituted infringement, passing off, and dilution, giving rise to likelihood of confusion and causing irreparable injury to the Plaintiff’s goodwill.

PROCEDURAL HISTORY

In 2021, upon coming across the Defendant’s mark “AGN TULIP”, the Plaintiff initiated parallel proceedings, including cancellation petition and a civil suit seeking both permanent and interim injunctive relief for infringement and passing off. The learned District Judge, after applying the settled triad of tests for interim injunction, i.e., prima facie case, balance of convenience, and irreparable harm, rejected the application for temporary injunction. It was held that the word ‘TULIP’ is generic and descriptive in relation to perfumes, as well as that the goods of the parties are dissimilar and unlikely to cause confusion. The learned District Judge relied on the precedents and reinforced the principle that ‘generic words cannot acquire distinctiveness’.^[2] The Court further held that the Plaintiff failed to establish its mark “TULIPS” as well-known under Section 2(1)(zg) of the Act. By relying on the landmark case of Mahindra & Mahindra Ltd^[3], the Court held that the word, ‘TULIP’ did not bring to mind the Plaintiff’s products exclusively and thus the Plaintiff’s mark could not be afforded wider protection as in cases of well-known marks. Further, the Court also took note of the registrations of the marks of the parties and found that the Defendant held prior registration in Class 3, and henceforth, no direct loss could arise to the Plaintiff, who did not trade in perfumes. Resultantly, the Plaintiff filed an appeal challenging the refusal of interim injunction and seeking reconsideration of whether its prior use and reputation in the mark “TULIPS” for the said products entitles it to restrain the Defendant’s use of the mark “AGN TULIP” for perfumes.

ANALYSIS

The Court observed that although both sides were registered proprietors of their respective marks, their positions were distinguishable since the Plaintiff claimed prior use of its mark, whereas the Defendant held an earlier application for its mark in Class 3. In this regard, the Court reaffirmed the position established by the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai^[4], stating that an action for infringement is not maintainable between two registered proprietors. The Court further clarified that the action of passing off is the only common law remedy that is available to the prior user even against another registered proprietor since the essence of passing off lies in protection of goodwill and prevention of misrepresentation.^[5] Consequently, the burden lay squarely on the Plaintiff to establish the classical trinity of goodwill, misrepresentation, and likelihood of damage to establish passing off. While the Court acknowledged that the Plaintiff had consistently used its mark “TULIPS” since 1999 and had garnered considerable turnover in respect of cotton buds, swabs, and allied hygiene products, it also noted that such goodwill was confined to the specific product segment of the Plaintiff and could not extend to goods of dissimilar nature. Crucially, the Plaintiff failed to demonstrate that its mark had acquired any secondary meaning in relation to perfumes or fragrances prior to the Defendant’s adoption of its mark in 2010. Significantly, the Court also clarified that the mere overlap of trade channels, such as supermarkets, pharmacies, or online retail platforms, does not automatically extend the Plaintiff’s goodwill to unrelated product categories. The Plaintiff could not bridge the gap between the two sectors merely through shared points of sale.

The Court next rejected the Plaintiff’s claim that “TULIPS” had attained the status of a well-known trademark. Applying the statutory factors under Section 11(6) of the Trade Marks Act, it found that recognition of the mark was limited to the hygiene segment, that no prior judicial or administrative acknowledgment of well-known status existed for the Plaintiff’s mark, and that the evidence fell short of establishing ubiquitous or cross-category consumer recognition. In the absence of demonstrated goodwill in perfumes, the Court held that the Defendant’s use of “AGN TULIP” could not constitute misrepresentation, nor could it give rise to any reasonable likelihood of deception. The lack of spill-over reputation effectively undermined the Plaintiff’s passing-off claim and foreclosed the possibility of any presumed damage. Furthermore, while the District Judge labelled the word ‘TULIP’ as generic for perfumes owing to its association with floral fragrances, the Appellate Court refined the reasoning by emphasising the absence of any presence or reputation of the Plaintiff in the perfume market during the relevant period. It held that in absence of such market presence, no presumption of proprietary rights over “TULIP” for fragrances could arise, particularly when the Plaintiff had not shown that consumers associated the term with its brand beyond hygiene products.

DECISION

The Court upheld the order of the District Judge and found that no legal grounds existed to restrain the Defendants from using their registered mark “AGN TULIP”. The appeal was therefore dismissed.

CONCLUSION

This decision serves as a significant reaffirmation of the limitations of the prior user doctrine when applied across non-identical product categories. The Court’s insistence on credible evidence of spill-over goodwill, rather than mere trademark registration or shared distribution channels, reinforces doctrinal clarity in passing off law. Moreover, the judgment underscores the need for judicial caution in recognizing well-known trademarks, a domain prone to overbroad or speculative claims. By emphasizing market presence, secondary meaning, and actual consumer perception, the Court reinforced the evidentiary thresholds required to succeed in cross-category trademark disputes.

Vrinda Harmilapi

Associate 

vrinda.harmilapi@iprattorneys.com

^[1] FAO (COMM) 253/2023

^[2] The Learned District Judge relied on the case of Nestle's Products (India) Ltd. v. P. Thankaraja and Jain Riceland (P) Ltd. v. Sagar Overseas

^[3] FAO(OS) (COMM) 253/2023

^[4] CIVIL APPEAL NO.2758 OF 2015, (C) NO. 12671 OF 2014

^[5] Vaidya Rishi India Health Pvt. Ltd. &Anr. v. Suresh Dutt Parashar &Ors