High Court Upholds Injunction, Ruling ‘TULSI’ Use Infringes ‘TULASI’ Trademark Due To Deceptive Similarity

The dispute arose from a trademark infringement and passing off suit filed by the plaintiff, a long-established manufacturer of incense sticks, claiming exclusive rights over the trademark ‘TULASI’, which it had been using since 1950. The plaintiff held multiple valid trademark registrations, including both word and device marks, and had built significant goodwill domestically and internationally. It alleged that the defendant, a relatively recent entrant in the agarbatti business, was using the mark ‘TULSI’ on its product packaging, which was phonetically identical and deceptively similar to its registered mark. According to the plaintiff, such use was intended to ride on its reputation and had already led to confusion among consumers.

The defendant, on the other hand, contended that ‘TULSI’ was not used as a trademark but merely as a descriptive term indicating the fragrance of the incense sticks. It argued that such descriptive use was protected under Sections 30 and 35 of the Trade Marks Act, 1999. The trial court, however, granted temporary injunction in favour of the plaintiff, restraining the defendant from using the impugned mark. Aggrieved by this order, the defendant filed appeals before the High Court challenging the grant of injunction.

Main Issue: Whether the trial court’s order granting temporary injunction restraining use of the mark ‘TULSI’ was legally sustainable, particularly in light of the defendant’s plea of descriptive use under the Trade Marks Act, 1999.

HC’s Ruling: The Hon’ble High Court upheld the trial court’s order and dismissed the appeals, holding that no interference was warranted in the exercise of discretionary jurisdiction. The Court found that the plaintiff had established a strong prima facie case based on its long-standing use, valid registrations, and goodwill associated with the mark ‘TULASI’.

It was observed that although the defendant claimed descriptive use, the manner in which ‘TULSI’ was displayed on the packaging—prominently and in larger font than its own brand ‘JALLAN’, indicated trademark use rather than mere description. The Court held that such prominent usage was likely to mislead consumers and create confusion, especially given the phonetic similarity between ‘TULASI’ and ‘TULSI’.

The Court further clarified that protection under Section 30(2)(a) of the Trade Marks Act is available only for bona fide descriptive use, which was not evident in the present case. It emphasized that even if a term has a descriptive connotation, its use in a manner that functions as a source identifier would amount to infringement.

Relying on the principles governing grant of interim injunction, prima facie case, balance of convenience, and irreparable injury, the Court concluded that the balance tilted in favour of the plaintiff. It also reiterated that appellate courts should not interfere with discretionary orders unless they are perverse or arbitrary, which was not the case here.

The Court clarified that the observations were prima facie and that the defendant would be free to establish its defence during trial.

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