Trademark : "TULIP" is a generic term for perfumes describing a floral scent - Cannot be monopolised

Delhi High Court Dismisses Suparshva Swabs' Trademark Appeal Against AGN International Court Upholds District Judge's Decision, Citing Lack of Goodwill and Generic Nature of "TULIP" in Perfumes

The Delhi High Court has dismissed the appeal filed by Suparshva Swabs India, a manufacturer of cotton buds, challenging the decision of a District Judge who refused to grant an interim injunction against AGN International's use of the trademark "AGN TULIP" for perfumes.

In a detailed judgment delivered by a Division Bench comprising Justices C. Hari Shankar and Om Prakash Shukla, the court examined the complexities surrounding the use of the trademark "TULIP." The appellant, Suparshva Swabs, claimed that its trademark "TULIPS" had acquired significant goodwill and reputation, which extended to perfumes and related products. However, the court found that the evidence presented failed to demonstrate that such goodwill extended beyond cotton buds and hygiene products.

The judgment emphasized that for a passing off action to succeed, the plaintiff must prove goodwill, misrepresentation, and the likelihood of damage. The court held that the term "TULIP" is generic for perfumes as it describes a floral scent, and therefore, Suparshva Swabs could not monopolize the term for perfumes. Additionally, the court noted that the plaintiff's reputation in the trademark "TULIPS" did not extend to perfumes before the defendants' registered use in 2010.

The court also dismissed the plaintiff's argument that "TULIPS" should be treated as a well-known mark under the Trade Marks Act, 1999. The court found no evidence of judicial or administrative recognition of the mark as "well-known" and concluded that the plaintiff's reputation was confined to cotton buds and hygiene products.

Furthermore, the court upheld the District Judge's finding that "TULIP" is a generic term for perfumes and not subject to exclusive rights. The judgment reaffirms the principle that prior use prevails over registration only if goodwill is established in the relevant trade.

The appeal was dismissed on merits, and the interim injunction sought by Suparshva Swabs was denied. The court's decision underscores the importance of establishing goodwill in the specific line of trade when seeking protection against passing off.

Bottom Line:

Passing off action requires the establishment of goodwill, misrepresentation, and likelihood of damage. Mere registration does not suffice; prior user and reputation in the relevant trade must be proved.

Statutory provision(s): Trade Marks Act, 1999 Sections 2(1)(zg), 11, 29, 11(6), Commercial Courts Act, 2015 Section 13(1), Code of Civil Procedure, 1908 Order XXXIX Rules 1 and 2, Section 151.

Suparshva Swabs India v. AGN International, (Delhi)(DB) : Law Finder Doc Id # 2803640