Use of Mark in a bigger font or size does not amount to be use in a descriptive sense

Introduction To Descriptive Use In Trademark Law

In trademark law, a common defence raised by new entrants in the market is that their use of a similar word is merely descriptive of the product’s quality or characteristic, such as a fragrance in incense sticks. The law allows such honest descriptive use so that no one can monopolise common words.

Key Legal Question On Display And Branding

However, a key question arises when the word is displayed prominently on packaging. Does making the word larger or bolder automatically turn it into protected descriptive use, or can the manner of display itself show that the word is being used as a brand name?

Karnataka High Court Clarification

This judgment from the Karnataka High Court provides a clear and practical answer. It holds that using a mark in a bigger font or size does not automatically qualify it as descriptive use. On the contrary, such prominent display can make the word function as a trademark in the minds of consumers, leading to infringement and passing off.

Key Legal Principles

• Descriptive use is allowed only when it is honest and not misleading.
• Prominence in packaging can convert a descriptive term into a trademark.
• Consumer perception plays a crucial role in determining infringement.
• Font size and visual emphasis can influence brand identification.

Factual Background Of The Case

Sarathi International Inc., a long-established firm in Bengaluru, has been making and selling incense sticks under the name Tulasi for more than seventy years. The mark became strongly associated with the company’s products in the market and abroad.

Jallan Enterprises, a newer player from Navi Mumbai, started selling its own incense sticks under the main brand name Jallan. For one variety that had a tulsi fragrance, Jallan printed the word Tulsi on the packaging. The word Tulsi appeared in a much larger and more eye-catching font than the house mark Jallan.

Sarathi noticed these products in the market and felt that consumers would easily confuse them with its own goods because of the close sound and the bold way Tulsi was shown. Jallan argued that it was only describing the scent and had every right to do so. Sarathi disagreed and said the prominent placement turned Tulsi into a brand identifier rather than a simple description.

Comparison Of The Parties’ Positions

Procedural Background

Sarathi filed a suit in the Bengaluru City Civil Court seeking to stop Jallan from using the word Tulsi in a way that infringed its rights. Along with the suit, it applied for temporary injunctions to restrain Jallan immediately while the case was pending. The trial court examined the rival packaging, the registrations, and the arguments from both sides. It found that the larger font made Tulsi look like a brand name and not a mere fragrance note. On that basis, the trial court granted the temporary injunctions in April 2025. Jallan challenged this order in two appeals before the Karnataka High Court, claiming that the trial court had wrongly applied a “prominence test” based on font size and had ignored the legal protection available for descriptive use. The High Court heard detailed submissions from both counsel and reserved the matter for judgment.

Reasoning And Decision Of Court

The High Court carefully reviewed the trial court’s order and the packaging in question. It agreed that the word Tulsi was displayed far more boldly and in a larger size than Jallan’s own registered mark Jallan. This prominent presentation made an ordinary consumer likely to see Tulsi as the main brand identifier rather than just a description of scent. The court observed that Jallan had used ordinary English words like Camphor or Lavender for other variants in smaller or normal fonts, but deliberately chose to highlight Tulsi in an oversized manner. Such display took the word beyond simple description and made it function like a trademark.

The High Court rejected Jallan’s argument that font size or boldness should not matter for deciding whether use is descriptive. It held that the overall impression created on the mind of the average buyer is what counts. When a word stands out prominently on the front of the package and overshadows the house mark, it stops looking like a neutral description and starts looking like a brand. The court noted that pictures of tulsi leaves or a tulsi pot on the package were not enough to remove the risk of confusion at the interim stage.

The judges emphasised that the law protects genuine descriptive use only when the word is used honestly and in a way that does not mislead consumers into thinking it is a source identifier. Prominent display in bigger font changed the character of the use and took it outside the protection of descriptive use.

• Prominent font size can transform a descriptive word into a trademark-like identifier.
• Overall visual impression on consumers is the key test.
• Use must be honest and non-misleading to qualify as descriptive use.
• Supporting images alone cannot eliminate confusion at the interim stage.

Finding no error in the trial court’s reasoning, the High Court upheld the temporary injunctions and dismissed both appeals. It clarified that the final decision on the merits would come after full trial, but at this stage the balance clearly favoured protecting Sarathi’s long-established rights.

Point Of Law Settled In The Case

This judgment settles an important practical principle in trademark disputes: the use of a mark in a bigger font or larger size does not automatically make it descriptive use. On the contrary, when a word is given prominent, eye-catching placement that overshadows the trader’s own house mark, it can indicate that the word is being used as a brand name rather than a mere description of quality or ingredient. Courts will examine the overall visual impression on packaging and the manner of display to decide whether the use crosses the line from description to trademark. Even words that have some descriptive meaning lose the benefit of the descriptive-use defence if their presentation suggests they are source identifiers.

Case Details

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi