The Division Bench of the Delhi High Court recently upheld the order of the District Judge, Commercial Court (South), Saket, dismissing Suparshva Swabs India’s plea for an interim injunction against AGN Tulip in an ongoing trademark dispute over the mark “TULIPS.” The plaintiff, proprietor of the registered mark and a long-standing manufacturer of cotton buds and related hygiene products, had sought to restrain the defendants from using “TULIP” or “AGN TULIP” for perfumes, cosmetics, and allied goods.

Plaintiff’s Case:

1. Suparshva Swabs India argued that it had been using the mark “TULIPS” since 1999 across a broad range of products including cotton balls, buds, pads, wet wipes, and bathroom fragrances.
2. The company claimed proprietorship over several trademark registrations spanning Classes 3, 5, 6, 10, 16, and 21, along with copyright registrations for its artistic labels and trade dress.
3. Upon discovering in mid-2021 that the defendants were selling perfumes under “AGN TULIP”, the plaintiff alleged dishonest adoption and infringement, asserting that TULIP formed the dominant and deceptive element of the defendants’ mark.
4. They further relied on their longstanding use, market presence, e-commerce reach, and asserted that “TULIPS” had acquired the status of a well-known mark.

Defendants’ Stand:

1. AGN Tulip countered that they were the registered proprietors of the mark “AGN TULIP” in Class 3 for perfumes, adopted with the house mark “AGN” and used on tulip-shaped packaging.
2. They contended that “TULIP” is a common floral descriptor, widely used in the fragrance industry like Rose, Lily, or Sandalwood, and therefore incapable of exclusive appropriation.
3. They further argued that the plaintiff’s goods, cotton buds and hygiene products were entirely distinct from perfumes in terms of nature, purpose, and consumer perception, eliminating any likelihood of confusion.

Findings of the District Court

The District Court rejected the injunction, holding that:

1. “TULIP” is generic for fragrances and perfumes.
2. The defendants’ use of “AGN TULIP” did not amount to infringement or passing off.
3. The plaintiff’s mark had not acquired well-known status.
4. No prima facie case or balance of convenience lay in favour of the plaintiff.

Grounds of Appeal Before the Division Bench

The plaintiff challenged the District Court’s findings, alleging:

1. Prior adoption and user rights since 1999.
2. Erroneous conclusions on the generic nature of “TULIP.”
3. Incorrect reliance on registration over prior use.
4. Mistaken categorisation of their goods as “medicinal.”
5. Improper rejection of their claim that “TULIPS” is a well-known mark.

The defendants reiterated that “TULIP” was generic in the context of perfumes, their adoption was bona fide, and the plaintiff had no goodwill in the cosmetics or fragrance segment.

Division Bench Analysis

The Division Bench focused on three core issues:

1. Whether the plaintiff had established goodwill in “TULIPS” across allied and cognate goods sufficient for a passing off claim.
2. Whether the defendants’ use of “AGN TULIP” was likely to confuse or deceive consumers.
3. Whether the District Court’s findings on generic nature of the word, dissimilarity of goods, and absence of well-known status were sustainable.

The Court reaffirmed that infringement cannot be claimed between two registered proprietors; thus, only passing off was in issue. In such an action, the foundational requirement is establishing goodwill within the relevant trade.

While the plaintiff demonstrated extensive use for hygiene products, the Court found no evidence that “TULIPS” had acquired a secondary meaning or reputation in the perfume or cosmetics market prior to 2010, when the defendants obtained their registration. Mere overlap in retail outlets, pharmacies, supermarkets could not establish goodwill in allied and cognate goods.

The Court also held that the plaintiff’s claim to well-known status was unsubstantiated, as their evidence showed reputation only within a narrow segment, not across the broader cosmetics or fragrance industry. No judicial or administrative authority had recognised “TULIPS” as a well-known mark.

Conclusion: Appeal Dismissed

The Division Bench found no error in the District Court’s reasoning. The plaintiff’s goodwill was confined to hygiene products and did not extend to perfumes. With no proof of secondary meaning in the relevant market and both parties being registered proprietors, the Court held that the defendants’ continued use of “AGN TULIP” could not be restrained. The appeal was accordingly dismissed.