Suparshva Swabs India vs AGN International & Ors

Recently, the Hon’ble High Court of Delhi, dismissed a plea filed by Suparshva Swabs India (“Appellant”), the manufacturer of cotton buds and hygiene products, seeking, inter alia, a decree of permanent injunction restraining AGN International & Ors. (“Respondents”) from using the mark TULIP or AGN TULIP in relation to perfumes, cosmetics, and allied goods, on the grounds of trademark infringement and passing off. One of the key grounds for rejection was that the Appellant failed to establish sufficient goodwill and reputation in respect of allied and cognate goods.

The Appellant contended that it has been using the mark TULIPS on and in relation to cotton pads, wet wipes, bathroom fragrances and related goods falling under the category of cosmetics and toiletries since the year 1999. The Appellant relied on its registration for the mark TULIPS in various classes, including, in Class 3, dated November 10, 2010, obtained with a user claim of February 10, 2004. Further, the Appellant asserted that its mark TULIPS has attained the status of a well-known mark. It was the Appellant’s case that the Respondents had adopted a deceptively similar mark in relation to allied and cognate goods to exploit the Appellant’s goodwill and reputation associated with the mark TULIPS.

The Respondents, on the other hand, are registered proprietor and user of the mark AGN TULIP on and in relation to perfumery and personal care products. The Respondents’ registration in Class 3 is dated February 15, 2010, and was obtained on a proposed to be used basis.

While determining the issue of passing off, the court observed that the fact that rival goods travel through overlapping or same trade channels such as pharmacies or supermarkets does not, by itself, establish that the reputation of the Appellant’s mark TULIPS has travelled into the field of perfumery. Just because the rival goods are displayed within the same outlet or even on the same shelf does not automatically extend goodwill across distinct product categories. The court observed that the Appellant has failed to demonstrate that its mark TULIPS has acquired a ‘secondary meaning’ in relation to cosmetics or fragrances prior to 2010 nor can the mark be regarded as a “well-known mark”. Consequently, the appeal was dismissed.

  Suparshva Swabs India vs AGN International & Ors [FAO (COMM) 253/2023] Read the judgement copy here.