Suparshva Swabs India Vs. AGN International

Floral Words and Trademark Boundaries

Factual Background: This case arose out of a conflict between two entities engaged in manufacturing and marketing consumer goods, primarily involving the use of the word “TULIP” as a trademark. The appellant, Suparshva Swabs India, is a partnership firm engaged in manufacturing cotton buds, cotton balls, and allied products since 1999. The firm claimed that it had coined, adopted, and used the trademark “TULIPS” (word and device) continuously since that year and had obtained registrations under various classes of the Trade Marks Act, 1999. According to the appellant, the mark “TULIPS” had, over time, acquired substantial goodwill and reputation, not just in India but also abroad, and had attained a distinctive association with its hygiene products.

On the other hand, the respondent, AGN International, is a firm engaged in the business of perfumes and cosmetic products. It had registered the trademark “AGN TULIP” in 2010 in Class 3 under a “proposed to be used” application, claiming that its goods, namely perfumes and sprays, were unrelated to the appellant’s products. The appellant alleged that the respondents had dishonestly and fraudulently adopted a deceptively similar mark to trade upon its reputation and confuse consumers.

In 2021, Suparshva Swabs discovered that AGN International was marketing perfumes under the name “AGN TULIP”. Believing that the impugned mark infringed its “TULIPS” trademark and amounted to passing off, the appellant filed a suit before the Commercial Court, South, Saket, New Delhi, seeking a permanent injunction to restrain AGN International from using the word “TULIP” in any form for perfumes, cosmetics, or related goods.

The plaintiff also filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking a temporary injunction pending trial. The trial court dismissed this application on 03.10.2023, holding that no prima facie case was made out. The appellant challenged this order before the Delhi High Court under Section 13(1) of the Commercial Courts Act, 2015.

Procedural Background: Before the District Judge, Suparshva Swabs claimed that its trademark “TULIPS” was arbitrary, coined, and distinctive. It argued that the mark was registered in several classes, including Class 3 (cosmetics), and that it had long-standing use since 1999, with significant advertising and international recognition. The plaintiff asserted that AGN International’s use of “AGN TULIP” for perfumes was deceptively similar, given that the dominant portion of the respondent’s mark was the word “TULIP,” used prominently while “AGN” appeared merely as a prefix.

The defendants opposed the injunction, contending that “TULIP” is a generic term associated with fragrances and floral products. They asserted that their mark “AGN TULIP” was duly registered and that their goods — perfumes and sprays — were entirely different in nature and market segment from the plaintiff’s cotton buds and swabs. They further argued that the plaintiff had no exclusive right over a common word like “TULIP,” which naturally described the floral fragrance of their goods.

The District Judge, after hearing both sides, held that the plaintiff failed to establish a prima facie case or show irreparable harm. The court found that “TULIP” is a generic term for perfumes and that the goods were dissimilar. The judge observed that perfumes, being fragrant floral products, naturally associate with flowers such as tulips and roses. Hence, “TULIP” could not be monopolized by one trader for all categories of goods. The plaintiff’s plea for interim injunction was thus rejected.

Feeling aggrieved, the plaintiff filed the present appeal before the Delhi High Court.

The Dispute:  The principal question before the High Court was whether the trial court erred in refusing to grant an interim injunction under Order XXXIX Rules 1 and 2 CPC. The core issue revolved around whether the appellant’s mark “TULIPS” enjoyed such reputation and goodwill that it extended to the respondents’ category of perfumes, making their use of “AGN TULIP” likely to cause confusion or deception in the minds of consumers.

The dispute also required the Court to determine whether “TULIP” was a generic or descriptive term in relation to perfumes and fragrances, and whether the appellant’s prior use since 1999 conferred upon it rights superior to the respondents’ later registration from 2010.

Reasoning:  The High Court began by reaffirming that when both parties hold trademark registrations, no action for infringement can lie between them. The only available remedy is passing off, as explained by the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683. Therefore, the question before the Court was confined to whether the appellant had established goodwill and reputation in “TULIPS” sufficient to sustain a passing off action against “AGN TULIP.”

The Court then examined the three essential elements of passing off laid down in Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65 — goodwill, misrepresentation, and damage. The judges emphasized that goodwill must be established in the specific market or line of trade in which the alleged misrepresentation occurs. They further referred to Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 73 PTC 1 (SC), where it was held that goodwill cannot be presumed merely from global reputation; it must exist in India and within the relevant segment of trade.

Applying these principles, the Court found that while Suparshva Swabs had substantial goodwill in relation to cotton buds, cotton balls, and hygiene products, it had not demonstrated that this goodwill extended to perfumes or fragrances before the respondents’ adoption in 2010. The evidence produced, including invoices, advertisements, and awards, showed recognition in hygiene products, but not in cosmetics or perfumery. Thus, the element of goodwill within the relevant trade segment was not satisfied.

The Court also evaluated whether “TULIP” was capable of exclusive protection. It noted that while “TULIP” might be arbitrary in connection with cotton products, it is descriptive or generic when used for perfumes, as tulips are flowers naturally associated with fragrance. Citing 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, the Court reiterated that generic words cannot be monopolized by traders for ordinary use. Hence, the plaintiff could not prevent others from using a floral name for perfumes.

The Court further discussed the claim that “TULIPS” was a well-known mark under Section 2(1)(zg) and Section 11(6) of the Trade Marks Act, 1999. It observed that for a mark to achieve “well-known” status, it must be widely recognized by the general public beyond its product class. Relying on Mahindra & Mahindra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147, the judges noted that while “Mahindra” immediately evokes the automobile company, “TULIP” does not trigger an immediate association with Suparshva Swabs in the minds of consumers. The recognition of “TULIPS” was confined to a specific market segment of hygiene products, not perfumes or cosmetics.

On the issue of prior use, the Court reaffirmed that though prior use prevails over registration, it must be shown within the relevant trade context. The plaintiff’s use since 1999 in hygiene products did not automatically extend to perfumes. The Court found no evidence of consumer confusion or overlap in product identity sufficient to warrant protection across categories.

The High Court also referred to Wipro Enterprises Pvt. Ltd. v. Himalaya Wellness Co., 2024 SCC OnLine Del 6859, which reiterated that the test of “allied and cognate goods” depends on consumer perception, not mere retail proximity. The Court concluded that even though hygiene products and perfumes might appear in similar retail spaces, they cater to different consumer needs and associations.

Finally, the Court upheld the trial court’s view that “TULIP” was generic in the context of perfumes and that no irreparable injury or confusion was demonstrated. The balance of convenience lay with the respondents, who were using a registered mark within their trade domain.

Decision: The Delhi High Court dismissed the appeal and upheld the District Judge’s order dated 03.10.2023. It held that the appellant failed to establish the essential elements of passing off — particularly, goodwill in the relevant trade and likelihood of deception. The Court clarified that procedural fairness and trademark protection cannot extend to monopolizing common or descriptive words, especially those naturally connected to the goods in question. The Court concluded that both parties, being registered proprietors in their respective domains, must coexist without encroaching upon each other’s legitimate business rights.

The Court’s closing observation emphasized that the word “TULIP,” while distinctive in connection with hygiene products, cannot be treated as a proprietary or well-known mark across unrelated product categories such as perfumes. Hence, the injunction sought by the appellant was rightly denied, and the appeal was dismissed with no order as to costs.

Case Title: Suparshva Swabs India Vs. AGN International & Ors.

Case Number: FAO (COMM) 253/2023

Neutral Citation: 2025:DHC:9625-DB

Order Date: 03.11.2025

Court: High Court of Delhi at New Delhi

Coram: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi