Prior-user protection across allied goods demands category-specific goodwill at the material time: Delhi High Court in Suparshva Swabs v. AGN International

Introduction

In Suparshva Swabs India v. AGN International & Ors. (FAO (COMM) 253/2023, decided on 03.11.2025), the Delhi High Court (Division Bench: C. Hari Shankar, J. and Om Prakash Shukla, J.) dismissed an appeal against the denial of interim injunction in a trademark dispute. The appellant Suparshva Swabs, a long-standing manufacturer of cotton buds, balls and allied hygiene products under the mark “TULIPS” (word and device), sought to restrain the respondents—perfumery traders— from using “AGN TULIP” for perfumes. The core controversy involved whether the plaintiff’s prior use in hygiene products entitled it to injunct relief against the defendants’ use in perfumes—an allied/cognate class—particularly where both sides held registrations.

The case squarely raised three issues: (i) the maintainability and scope of remedies inter se registered proprietors; (ii) the standards for proving goodwill/secondary meaning across allied goods, especially when the impugned mark invokes a floral term in the perfumery context; and (iii) whether the plaintiff’s mark was “well-known” so as to command cross-class protection.

Summary of the Judgment

The High Court upheld the District Judge’s refusal of interim relief. The key holdings are:

Where both parties are registered proprietors, an infringement action inter se is not maintainable; the plaintiff must proceed in passing off (S. Syed Mohideen v. P. Sulochana Bai applied).
To succeed in passing off across allied goods, a prior user must demonstrate goodwill in the relevant trade at the material time—here, prior to the defendant’s registration date of 15.02.2010. Mere overlap of trade channels or a user claim in Class 3 is insufficient without evidence of consumer association in perfumes/cosmetics by that date.
“TULIPS” was not shown to be a “well-known mark” under Section 2(1)(zg) read with Section 11(6) of the Trade Marks Act, 1999. The evidence showed reputation within hygiene products, not universal recognition transcending product categories.
Although the trial court had spoken in terms of genericness of “tulip” for perfumes, the Division Bench emphasized the absence of proof that “TULIPS” had acquired secondary meaning in perfumery by 2010; hence, no monopoly could be claimed over a floral descriptor in that category absent such proof.
On the interim standards (Wander v. Antox), the plaintiff did not establish a prima facie case of passing off in the perfumery segment; balance of convenience and irreparable harm therefore did not warrant injunctive relief.

Analysis

Precedents Cited and Their Influence

S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683. The Supreme Court clarified that between two registered proprietors, an action for infringement does not lie; the remedy is passing off. The Division Bench treats this as the starting point: Suparshva’s claim must rest on passing off, not statutory infringement.
Laxmikant V. Patel v. Chetanbhat Shah (2002) 3 SCC 65. The triad of passing off—goodwill, misrepresentation, likelihood of damage—was reaffirmed. The High Court anchored its analysis in these elements, finding that goodwill in perfumes at the material time was not shown.
Toyota Jidosha KK v. Prius Auto (2018) 73 PTC 1 (SC). Prius underscored that goodwill must be established in India among the relevant consumer segment at the material time. The High Court applied this temporal and market-specific threshold: the plaintiff had to prove recognition in perfumery by 15.02.2010. It failed.
T.V. Venugopal v. Ushodaya Enterprises (2011) 4 SCC 85. Even descriptive/generic origins can acquire secondary meaning through extensive use (e.g., “Eenadu”). The High Court used this to frame the query: had “TULIPS” acquired secondary meaning in perfumes by 2010? The answer was no, on the evidence.
Mahindra & Mahindra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (2002) 2 SCC 147. The emblematic recognition of “Mahindra” across categories illustrates the well-known mark standard. The High Court contrasted “TULIPS,” finding no such borderless recognition.
Wander Ltd. v. Antox India Pvt. Ltd. 1990 Supp SCC 727. The appellate restraint and interim injunction standards were observed; in absence of a clear prima facie case of passing off in perfumes, no injunction could be granted.
Vaidya Rishi India Health Pvt. Ltd. v. Suresh Dutt Parashar (2025 SCC OnLine Del 6147). Cited to reaffirm the Syed Mohideen principle in the Delhi High Court, reinforcing the passing off-only route inter se registered proprietors.
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). While these guided the District Judge on genericness, the Division Bench nuanced their application by focusing on secondary meaning in the relevant category rather than declaring “tulip” generically unprotectable per se.
Wipro Enterprises Pvt. Ltd. v. Himalaya Wellness Co. (2024 SCC OnLine Del 6859). This Delhi High Court decision discussed “related goods/services” and consumer association. The Division Bench’s analysis effectively insists that related goods protection hinges on evidence that reputation actually “travels” into the junior user’s field.

Legal Reasoning and Application

The Court’s reasoning proceeds in disciplined steps consistent with trademark doctrine:

Remedy is passing off, not infringement, between registered proprietors. Both parties had registrations containing “TULIP(S)”. Under Syed Mohideen, the appellant could only pursue passing off. This set the burden: show goodwill, misrepresentation, and likely damage in the relevant market.
Material time and market specificity. Prius requires proof of goodwill in the specific market at the material time. The “material time” was pegged to 15.02.2010 (defendants’ Class 3 registration date). The plaintiff’s papers showed long-standing use for cotton buds and allied hygiene items; however, there was no persuasive proof that, by early 2010, “TULIPS” had become associated in India with perfumes or cosmetics in consumer perception.
Allied/cognate goods require proof that reputation “spilled over”. Overlapping trade channels (pharmacies, supermarkets, online marketplaces) do not, by themselves, extend goodwill across categories. The court requires evidence of secondary meaning for perfumes—sales, advertising, consumer recognition, or trade evidence—by the relevant date. This was missing.
Floral terms in perfumery: descriptive proximity and higher threshold. While the trial court bluntly termed “tulip” generic for perfumes, the High Court reframed the inquiry: floral terms naturally describe scent profiles; without proof of secondary meaning in perfumery, a party cannot monopolize such descriptors. This is a careful, category-specific application of the secondary meaning doctrine.
“Well-known mark” claim fails on Section 11(6) factors. The plaintiff’s evidence showed strong reputation in hygiene products but not universal recognition across categories; there was no judicial/administrative recognition as “well-known”. Consequently, cross-class protection under Section 29(4) could not be claimed at the interim stage.
Dominant element/house-mark arguments are not dispositive without goodwill. Even if “TULIP” appears dominant in the respondents’ packaging, passing off turns on the plaintiff’s goodwill in the perfumes market at the material time. Absent that, the dominant-part contention cannot bridge the evidentiary gap.
Interim relief standards. Applying Wander v. Antox, the Court found no prima facie case of passing off in perfumes; the balance of convenience and irreparable injury assessments did not favor restraining a registered perfumery mark in these circumstances.

Impact and Practical Implications

The decision clarifies and tightens the evidentiary burden for brand owners seeking to enforce marks across allied goods, particularly in categories where descriptive associations are strong (e.g., perfumery names derived from flowers).

For prior users contemplating brand extension: Mere longevity or scale in a parent category (e.g., hygiene) will not automatically protect against use in an adjacent category (e.g., perfumes). You must generate and preserve early, contemporaneous evidence of category-specific goodwill:
- Actual sales and distribution in the target category;
- Advertising and promotional spend focused on the target category;
- Consumer perception data (surveys, independent reviews) demonstrating association;
- Trade evidence of recognition (retailer declarations, category awards);
- Enforcement history showing market recognition beyond your core products.
Descriptive or evocative terms in perfumery: Names based on natural scents (flowers, woods, spices) will face a higher threshold for exclusive protection unless the proprietor can establish secondary meaning in perfumery. This guards against monopolization of ordinary descriptors.
Inter se registered proprietors: Expect courts to rigorously apply passing off requirements. A user claim in the class is not enough; the court will ask whether the relevant consumers, at the material time, identified your mark with the junior user’s product category.
Dominant-element and house-mark strategy: While packaging hierarchy matters, it cannot overcome the absence of goodwill in the junior user’s category at the relevant time. Proof of confusion depends on pre-existing recognition, not merely typography.
Well-known mark designations: Section 11(6) remains a demanding standard. Without robust, multi-factor evidence—and preferably judicial/administrative recognition—cross-class injunctions are unlikely at the interim stage.
Litigation sequencing with registrations: A defendant’s “proposed to be used” registration date can serve as the temporal anchor for assessing the plaintiff’s goodwill. Plaintiffs should present date-bound evidence keyed to that anchor.

Complex Concepts Simplified

Passing off: A common law remedy that protects the plaintiff’s market reputation from misrepresentation by the defendant. The plaintiff must prove (1) goodwill, (2) misrepresentation causing or likely to cause confusion, (3) likelihood of damage.
Inter se registered proprietors: When both parties have trademark registrations, statutory infringement claims aren’t available against each other; only passing off can be pursued.
Material time: The relevant date by which the plaintiff must show goodwill among the relevant Indian consumers—often pegged to the defendant’s priority date (e.g., registration or commencement of use).
Allied/cognate goods: Different products that are commercially related or travel through similar trade channels (e.g., cosmetics and perfumes). Protection across such goods is not automatic; proof of “spillover” reputation is required.
Secondary meaning: When a term that is descriptive or suggestive (like a flower name) comes to be uniquely associated in the public mind with a particular source for a specific product category.
Well-known mark (Section 2(1)(zg), Section 11(6)): A mark recognized by a substantial segment of the public across categories. The status enables broader protection even beyond registered goods. It requires strong, multi-factor evidence and is exceptional.
Proposed to be used: A registration obtained before the registrant starts use. For passing off, what matters is whether the plaintiff had goodwill in the defendant’s category by the registrant’s priority date.
Balance of convenience and irreparable harm: Interim relief is granted if withholding it would cause irreparable harm to the plaintiff and the balance of hardship favors restraint, after establishing a prima facie case.

Concluding Observations

This judgment is a careful calibration of trademark principles to real-world markets. It restates that, as between registered proprietors, infringement is out of bounds and the plaintiff must shoulder the classic passing off burden. Crucially, the Court requires category-specific, time-specific proof of goodwill for cross-category enforcement, particularly in fields where descriptive usage is endemic—like perfumery’s reliance on floral and natural scent terms.

The takeaways are clear:

Prior use prevails over registration only when the prior user demonstrates actual goodwill in the relevant trade at the material time.
Shared trade channels or class overlaps do not, by themselves, extend goodwill across allied goods; evidence of secondary meaning in the target category is indispensable.
Floral descriptors in perfumery resist monopolization absent strong proof of secondary meaning.
Claims to “well-known” status must be supported by comprehensive, cross-market evidence; mere commercial success in a niche will not suffice.

By dismissing the appeal and upholding the refusal of interim relief, the Delhi High Court signals a disciplined evidentiary standard for cross-category trademark enforcement. Brand owners contemplating expansion should plan and document early, category-specific use and market recognition. In the absence of such proof, courts will be slow to enjoin a registered user in a neighboring category, especially where the shared term is inherently evocative of the product’s attributes.