Summary
This post analyses a Delhi High Court dispute between Suparshva Swabs India and AGN International concerning the use of the marks TULIPS and AGN TULIP. The court examined whether prior use and goodwill in one product segment could extend enforceable rights into another, specifically whether Suparshva's reputation in hygiene products protected it in the perfume market. The judgment clarified that goodwill must exist in the relevant trade for a passing off claim to succeed, rejecting the notion that allied or cognate goods are presumed. The court also addressed the descriptiveness of floral terms in perfumery and the stringent criteria for well-known trademark recognition. The decision underscores the importance of market-specific reputation in trademark enforcement actions in India.
Background of the Dispute
The dispute in the instant case arose between Suparshva Swabs India, a manufacturer of cotton buds, tissues, wipes and other hygiene products sold under the trademark “TULIPS” and AGN International, a firm dealing in perfumes marketed as “AGN TULIP”. Suparshva has been using the mark “TULIPS” for over two decades and holds registrations for the same in multiple classes, including Class 3. The conflict began when Suparshva discovered AGN International’s perfumes being sold under the mark “AGN TULIP” in 2021. Alleging trademark infringement and passing off, it approached the Commercial Court, Saket, New Delhi, seeking an interim injunction to restrain AGN International from using the term “TULIP” for perfumes. While the Commercial Court refused relief, finding no prima facie case, Suparshva appealed the matter before the Delhi High Court, setting the stage for a closer examination of whether prior use and established goodwill in one product category translates into enforceable rights in another.
Matters Requiring Determination
Since both parties were registered proprietors in Class 3, a claim of infringement could not be sustained and the dispute effectively narrowed to whether Suparshva, the Appellant had made out a prima facie case of passing off. Although the dispute appeared to concern confusing and deceptive similarities, the Court was, in fact, required to address a deeper fundamental question, i.e., to determine whether a proprietor’s prior use and reputation in one line of goods and/or services automatically entitled it to restrain another trader operating in what is claimed to be an allied or cognate market.
Submissions Made by the Parties
Suparshva, contended that its long-standing use, promotional efforts and multiple registrations for “TULIPS” conferred upon it protectable rights even against the Respondent, AGN International’s use of “TULIP” for perfumes, which it claimed were allied and cognate to hygiene products. It argued that AGN International’s emphasis on the term “TULIP” in “AGN TULIP” was misleading and sought to benefit from its established brand. AGN International on the other hand, relied on its own Class 3 registration and argued that Suparshva had no goodwill or consumer association in the perfume market.
Findings of the Court
The Appellate Court held that prior use alone carries no weight unless the Appellant can show that its goodwill extends into the market where the confusion is alleged. Although the Appellant had furnished evidence of long-standing use, substantial turnover and promotional efforts, all such goodwill was confined entirely to cotton buds, tissues, wipes and other hygiene products. There was no material on record to indicate that consumers in the perfume market associated “TULIPS” with the Appellant.
And since both the parties were registered proprietors in Class 3, the Court reiterated that infringement was barred and that the Appellant’s case rested entirely on passing off, which necessarily requires goodwill in the relevant market, something that the Appellant had failed to show in relation to perfumes. With no protectable goodwill in the perfume segment, the Court found no likelihood of deception.
The Court also concluded “TULIP” to be descriptive for perfumes, observing that floral terms commonly denote fragrance profiles. A term may be distinctive in one industry yet generic in another, and in the context of perfumery, “TULIP” lacked the distinctiveness required to restrain the Respondent’s use. Consequently, the Appellant could not prevent the Respondent from using such a term that is common in that category.
Additionally, the Appellant’s argument that perfumes and hygiene products were allied or cognate was likewise rejected. The Court clarified that merely because different goods may appear in the same stores or travel through the same trade channels does not make them allied or cognate. In fact, the decisive factor is whether consumers expect the same source to produce both categories of goods, an expectation, the evidence in the instant case, did not support.
The Court further held that the Appellant could not satisfy the stringent threshold for recognition as a well-known trademark. While “TULIPS” may enjoy standing in its own class, well-known status demands broad and cross-market recognition, also something the evidence on record did not demonstrate.
Hence, in view of the foregoing factors, Suparshva’s passing off claim could not succeed. The appeal was accordingly dismissed and AGN International’s continued use of “AGN TULIP” for perfumes was held not to infringe or violate any enforceable rights of Suparshva.
Key Takeaways for Trademark Law and Brand Strategy
This judgment underscores a critical principle, i.e., a trademark is only as strong as the reputation it enjoys in the market where the dispute arises. Prior use, however extensive, does not protect a proprietor outside its own commercial segment unless its goodwill actually extends into that relevant trade. Furthermore, passing off demands proof of such market-specific goodwill and cannot be presumed merely from longevity of use or broad registration coverage. This decision also clarifies that allied and cognate goods are never assumed and that one must affirmatively demonstrate that their reputation spills over into the related market and that consumers expect the same source to produce both categories of goods. In the absence of such evidentiary foundation, neither prior use nor product proximity can sustain a passing off action.
Citation: Suparshva Swabs India vs AGN International & Ors [FAO (COMM) 253/2023], Delhi High Court, on 3rd November 2025. Available at: https://indiankanoon.org/doc/124356548/.
Authored by Ms. Vidhi Kela