Court’s decision
The Delhi High Court refused to grant an interim injunction restraining the defendants from using the mark “AGN TULIP” for perfumes, holding that the plaintiff’s trademark “TULIPS”, though registered and long-used for cotton products, could not extend to perfumes and cosmetics.
Justice Om Prakash Shukla, sitting as the Commercial Court at Saket, held that “TULIP being a flower is descriptive of fragrances and cannot be monopolised in relation to perfumes.” The Court observed that the plaintiff failed to establish a prima facie case of trademark infringement or passing off, and that the balance of convenience lay with the defendants, who were the prior registered proprietors of “AGN TULIP” in Class 3.
Facts
The plaintiff, a well-known Indian manufacturer of cotton buds and cotton balls since 1999, owns several registrations for the mark “TULIPS” across multiple classes under the Trade Marks Act, 1999, including Classes 3, 5, 10, 16, and 21. It claimed continuous, exclusive, and extensive use of the mark for over two decades, resulting in acquired goodwill and distinctiveness.
In 2021, the plaintiff discovered that the defendants were marketing perfumes and cosmetic products under the mark “AGN TULIP”. The plaintiff alleged that the impugned mark was identical and deceptively similar to its “TULIPS” mark and sought a permanent and interim injunction restraining the defendants from using it.
The defendants, however, had secured registration of “AGN TULIP” in Class 3 (perfumes and cosmetics) in 2010 on a “proposed to be used” basis and were lawfully marketing products under it.
Issues
- Whether “TULIP” is a generic or descriptive term in relation to perfumes and fragrances.
- Whether the plaintiff, by prior use, had acquired goodwill and secondary meaning entitling protection beyond its registered classes.
- Whether the plaintiff could restrain the defendants’ use of “AGN TULIP” under Sections 29 and 134 of the Trade Marks Act or through the common law of passing off.
- Whether the balance of convenience justified an interim injunction.
Petitioner’s arguments
The plaintiff argued that it had been using “TULIPS” since 1999 and had achieved extensive recognition in India and abroad through high sales and advertising. It asserted that the mark was arbitrary and distinctive, not descriptive of any goods, and had become a well-known mark under Section 11(6) of the Trade Marks Act.
It was contended that the defendants’ mark “AGN TULIP” was deceptively similar, and their use of “TULIP” as the dominant element indicated an intent to mislead consumers. The plaintiff argued that the defendants’ registration could not override its prior use, citing S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683, which established that prior user rights prevail over registration.
It was further argued that cotton buds, wet wipes, and personal hygiene products fall under Class 3 and share common trade channels with perfumes and cosmetics, thus making the goods allied and cognate. The plaintiff also relied on Mahindra & Mahindra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (2002) 2 SCC 147 and Laxmikant V. Patel v. Chetanbhat Shah (2002) 3 SCC 65 to contend that deception is judged by consumer association, not product identity.
Respondent’s arguments
The defendants contended that “TULIP” is a common floral word, widely used in the perfume industry to describe fragrances. Hence, it is incapable of exclusive appropriation or trademark protection in relation to perfumes. They argued that their use of “AGN TULIP” was bona fide, lawfully registered in 2010, and used in good faith for their perfumery line.
The defendants maintained that the goods were entirely distinct—the plaintiff dealt in cotton buds and hygiene products, while they sold perfumes and cosmetics. Therefore, there was no likelihood of confusion. The balance of convenience, they argued, favoured them, as an injunction would unjustly restrain their legitimate business.
Analysis of the law
The Court examined the principles under Sections 9(1)(b), 29, and 31 of the Trade Marks Act. It noted that a term descriptive of the nature or quality of goods cannot be monopolised unless it acquires secondary meaning.
The Court held that “TULIP”, being a flower, naturally denotes fragrance and is generic in relation to perfumes. It relied on Nestle’s Products (India) Ltd. v. P. Thankaraja (1977 SCC OnLine Mad 72) and Jain Riceland (P) Ltd. v. Sagar Overseas (2017 SCC OnLine Del 11305) to reaffirm that generic or descriptive words cannot be exclusively appropriated.
Even though the plaintiff’s mark was registered, the Court emphasised that protection cannot extend to unrelated product categories, especially when the mark is inherently descriptive in the defendants’ field.
Precedent analysis
- Nestle’s Products (India) Ltd. v. P. Thankaraja (1977) – Held that traders cannot monopolise common descriptive terms.
- Jain Riceland (P) Ltd. v. Sagar Overseas (2017) – Reiterated that generic words lack distinctiveness.
- Wander Ltd. v. Antox (India) Pvt. Ltd. (1990) – Laid down the threefold test for interim injunction: prima facie case, balance of convenience, and irreparable injury.
- Mahindra & Mahindra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (2002) – Defined the scope of “well-known marks” as those immediately evoking consumer association.
Court’s reasoning
The Court observed that while “TULIPS” is registered and distinctive for cotton products, it cannot automatically extend to perfumes. The plaintiff’s first registration in Class 3 was dated November 10, 2010, while the defendants’ “AGN TULIP” registration dated February 15, 2010, made them prior registrants in that class.
The Court held:
“A businessman cannot register a name for a non-generic product and then assert the right to stop its use for products where the name is generic.”
It further held that the plaintiff’s claim to well-known mark status failed since TULIPS did not evoke the plaintiff’s brand in the public mind the way “Mahindra” or “Whirlpool” do. The Court noted that TULIP more commonly recalled flower associations or hotels, not the plaintiff’s products.
Finding no prima facie case or likelihood of deception, the Court refused injunction and observed that any loss to the plaintiff could be compensated monetarily.
Conclusion
The Court dismissed the interim injunction application, holding that the plaintiff had no exclusive right over a floral term in relation to perfumes, that the goods were not identical, and that no evidence proved cross-market goodwill. It concluded that “TULIP” is generic for perfumes and that the plaintiff failed to establish either a prima facie case or irreparable harm.
Implications
This ruling underscores the principle that generic or descriptive words cannot be monopolised, especially across unrelated product categories. It reinforces that even long-standing registrations cannot override the descriptive nature of a term in another trade. The judgment clarifies that distinctiveness must be contextual, and a mark famous in one field does not automatically gain protection in another.
It also reiterates that prior user rights prevail only when goodwill extends to the relevant trade and that “well-known mark” recognition requires strong, cross-sector consumer association.