Prominent Use Of Descriptive Word 'TULSI' On Incense Sticks Amounts To Trademark Infringement, Not Bona Fide Description: Karnataka High Court

"Though protection under Section 30 (2) (a) of TMA is urged on ground that 'TULASI' denotes fragrance, underlying principle is that statutory protection is available only for bonafide and purely descriptive use." Karnataka High Court, in a significant ruling dated March 25, 2026, held that using a descriptive term prominently as a brand identifier rather than a mere descriptor amounts to trademark infringement, denying the protection of bona fide descriptive use under the Trade Marks Act.

A single-judge bench of Justice Ravi V Hosmani observed that while competitors can use terms indicating ingredients or fragrances, such usage must be strictly descriptive and not designed to ride on the goodwill of a registered trademark.

The dispute arose between M/s. Sarathi International Inc., a manufacturer using the registered trademark 'TULASI' for incense sticks since 1950, and M/s. Jallan Enterprises, which began selling incense sticks in 2023 with the word 'TULSI' printed on its packaging alongside its brand name 'JALLAN'. The plaintiff filed a suit for infringement and passing off, and the XVIII Additional City Civil and Sessions Judge, Bengaluru, granted a temporary injunction restraining the defendant. Aggrieved by this interim order, the defendant approached the High Court arguing that 'TULSI' merely described the fragrance of the incense sticks and was protected under the law.

The primary question before the court was whether the defendant's use of the word 'TULSI' constituted an infringement of the plaintiff's registered trademark 'TULASI'. The court was also called upon to determine whether such use was protected as a bona fide description of the product's fragrance and ingredients under Section 30(2)(a) and Section 35 of the Trade Marks Act, 1999.

Analyzing the competing packaging, the High Court found that the defendant's use of the word 'TULSI' was not merely descriptive but functioned as a source identifier. The court observed that the word was printed in a much larger font than the defendant's actual trademark 'JALLAN', which was masked in a significantly smaller size. This deliberate prominence indicated an intention to attract customers by treating the ingredient name as a trademark. "It noted display of word 'TULSI' by defendant on its package was not only in large font style masking its trademark ‘JALLAN’, which was in significantly smaller font and therefore prominent, rather as trademark than as descriptor."

Addressing the statutory defense raised by the defendant, the bench elaborated on the limits of Section 30(2)(a) of the Trade Marks Act. While acknowledging precedents like the Marico Ltd and Cadila Health Care cases which shield traders using descriptive terms for product characteristics, the court emphasized that this shield only applies when the usage is absolutely bona fide. Since the defendant used the word prominently to identify the source rather than just the contents, the statutory protection was unavailable at the prima facie stage. "Though protection under Section 30 (2) (a) of TMA is urged on ground that 'TULASI' denotes fragrance, underlying principle is that statutory protection is available only for bonafide and purely descriptive use."

"There cannot be any dispute about proposition that while applying strength of mark test, Courts are required to consider distinctiveness, with suggestive and arbitrary marks receiving higher protection."

The court further rejected the defendant's argument that adding pictures of a Tulsi pot and leaves on the packaging sufficiently distinguished their product from the plaintiff's goods. Relying on settled trademark jurisprudence, the court held that visual differences or added matter cannot defeat a claim of infringement when the essential features are adopted, especially given the striking phonetic similarity between the registered mark 'TULASI' and the impugned mark 'TULSI'. "Moreso, when 'TULASI’ and 'TULSI' are phonetic similar. Hence, conclusion that defendant's use of similar mark 'TULSI' prima facie constitutes infringement regardless of packaging differences, even if proof of goodwill for passing off is limited at interlocutory stage, also cannot be contended to be without any basis or contrary to material on record."

Finally, the High Court reiterated the settled principles governing appellate interference with discretionary interim orders passed by trial courts. Citing the Supreme Court's landmark judgment in Wander Ltd. v. Antox India, the bench held that an appellate court should not substitute its own view merely because a different conclusion is possible, provided the trial court's exercise of discretion was not arbitrary or perverse. "Appellate Court will not interfere with trial Court’s exercise of discretion unless it is shown to be arbitrary, capricious, perverse or in disregard of settled legal principles and that appellate Court was not entitled to substitute its own view simply because it might have reached a different conclusion."

Dismissing the appeals, the High Court upheld the trial court's order granting the temporary injunction in favour of the plaintiff. The ruling reinforces that competitors cannot disguise trademark infringement as a descriptive use by exploiting common ingredient names in a prominent, brand-like manner on their product packaging.

Date of Decision: 25 March 2026