Can the use of a registered trademark be justified if it is used only in a descriptive sense? Karnataka High Court clarifies in Tulasi vs Tulsi dispute

This question recently came before the Karnataka High Court in M/s. Jallan Enterprises v. M/s. Sarathi International Inc (Miscellaneous First Appeal No.5183 Of 2025 C/W Miscellaneous First Appeal No.5220 Of 2025), where the Court examined whether the use of the word “TULSI” on agarbatti packaging constituted trademark infringement or merely a descriptive reference to fragrance. In this significant ruling, the Trial Court clarified and the High Court reaffirmed the limits of the descriptive use defence under the Trade Marks Act, 1999, particularly where a registered trademark is used in a manner that appears to function as a brand identifier rather than a description.

The Plaintiff claimed longstanding rights in the trademark “TULASI” for incense sticks (agarbattis). The mark has allegedly been used continuously since 1950, with multiple registrations in India and internationally. Over decades of use, the plaintiff asserted that the mark had acquired substantial goodwill and reputation in the incense stick market. The dispute arose when the Defendant began selling incense sticks using the word “TULSI” on its packaging. As the competing marks were phonetically identical, deceptively similar and used in respect of identical goods which was likely to mislead consumers. Consequently, the plaintiff filed a suit seeking injunction for trademark infringement and passing off, along with interim relief restraining the defendant from using the impugned mark.

Unlike in other standard cases, the Defendant did not dispute that the word “TULSI” appeared on its packaging or the lack of similarities. However, it argued that its primary trademark was “JALLAN” which was duly registered, and the term “TULSI” was not used as a trademark but merely to indicate that the agarbattis had Tulsi fragrance. They argued that such descriptive use is protected under Sections 30(2)(a) and 35 of the Trade Marks Act, 1999 and no one can claim exclusive rights over a descriptive term, even if it appears in a registered mark. The defendant further contended that while “TULASI” may appear arbitrary for incense sticks generally, the word becomes descriptive when used for tulsi-scented incense sticks.

Following the arguments of both parties, the Trial court applied the well-established trademark principle of the average consumer with imperfect recollection. Upon examining the rival packaging, the Court noted that the word “TULSI” appeared prominently in a large font with the trademark “JALLAN” in a much smaller font, which would likely lead consumers to treat “TULSI” as a brand name rather than merely a fragrance description. The Court therefore rejected the Defendant’s reliance on the descriptive use defence, holding that the manner of use suggested an attempt to benefit from the goodwill associated with the plaintiff’s mark, and thereby granted temporary injunction in favour of the Plaintiff.

The Karnataka High Court upheld the trial court’s order granting interim injunction noting that the Plaintiff had established longstanding use and valid trademark registrations for “TULASI” for incense sticks and the competing marks were phonetic and confusingly similar. Most importantly, the Court agreed with the trial court’s conclusion that the defendant’s use of “TULSI” was not purely descriptive, given its prominent placement on the packaging. Accordingly, the High Court refused to interfere with the interim injunction and dismissed the appeals. However, the Court also clarified that the Defendant would still have the opportunity to prove at trial that its use was genuinely descriptive and sufficiently distinguished from the plaintiff’s mark.

Key takeaways for Brand Owners:

• Descriptive Use is Not an Automatic Defence: Even if a term is generic and is used as a descriptor for an ingredient or fragrance, the defence will apply only where the use is purely descriptive and bona fide.
• Manner of Use matters: The manner of use of the term, particularly as to whether it functions as a brand name, plays a crucial role in determining passing off/infringement actions.
• Higher protection for arbitrary marks: Arbitrary and/or fanciful marks are awarded the highest level of protection.
• Test of average consumer: Regardless of the intent of the business owner, the determination of infringement/passing off action is primarily based on the test of average consumer of imperfect recollection. Brand rights are based on the perspective and likelihood of confusion of an average consumer.

While descriptive terms must remain available for use in trade, they cannot be used in a manner that functions as a trademark or capitalizes on another party’s goodwill. For businesses, this case serves as a reminder that product descriptions, ingredient references and fragrance indicators must be carefully designed on packaging to avoid being perceived as a competing brand.

Written by Keerthana K