Bona Fide Description Use versus Trademark Infringement : The Post - 2026 Judicial Approach

Introduction : Every registered trademark faces the prospect of collision with common parlance. The skin care product acquires reputation with the help of a phrase, which customers utilize to describe the intended effect of this kind of cosmetics; the website that helps in finding tickets to events registers the word “journey”; the accessory producer wants to notify the client that the valve is suitable for the leading pressure cooker brand. The Section 30 of the Trade Marks Act, 1999 was elaborated to cover such cases and allow the use of words and phrases for descriptive purposes without infringement of another trademark owner’s rights. Nevertheless, the line, which separates the honest use of the term and camouflage of another trader’s mark is not always clear, and the Indian courts are re-drawing it in several cases decided in mid - 2025 and mid - 2026.

This article aims to contribute an insight into the interpretation of “honest practices” and “necessity” tests, which were undertaken in the analysed cases, comment on the evidence needed to prove the bona fide intention to use a disputed term, as well as evaluate the borderline between acceptable and unacceptable descriptive use. The practical orientation of this legal note is to assist in-house counsel and brand managers in making timely business decisions on trade dress, keyword selection, comparative advertising, and other areas requiring immediate response without waiting for judicial instructions.

Legal Provisions

1. The starting point is the definition of infringement in general in Section 29 of the Act, and the various exceptions to liability in Section 30. It is important to note that a registered proprietor cannot prevent another from using a trademark if its use falls within any one or more of the various exceptions provided in s. 30, read in conjunction with the requirements of s. 30(1).

2. The first test is whether the use complained of (in order to which s.30(1) applies), so as to fall within the exceptions in s. 30(2). In particular, the use should not be “in breach of honest practices in industrial or commercial matters” and “taking unfair advantage of, or detrimental to, the distinctive character or reputation of the mark”. In other words, the honest practices test in s.30(1) will be a preliminary condition to the application of any of the specific exceptions in s.30(2).

3. Section 30(2)(a) is the well-known descriptive fair use exception to infringement. It provides that the proprietor of a registered trade mark cannot object to its use by way of description of the goods or services, or of their qualities, as long as the use indicates the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or any other characteristics of the goods or services to which it refers. There is an implied tolerance of some degree of overlap by way of description in the language used by the competing trader to describe his or her own goods.

4. On the other hand, s.30(2)(d) which deals with nominative fair use, allows the use of a trade mark of another by a trader who manufactures or sells goods or services which are accessories or parts adapted to be used with the goods or services of the proprietor, but only to the extent necessary to indicate that such adaptability exists. In other words, the defendant must show that there was a necessity to use the plaintiff’s mark in order to describe his or her goods as accessories or parts, and that such usage did not suggest a trade connection which does not exist.

When read together, the various exceptions do not give absolute immunity to the defendant. The defendant user must demonstrate necessity, honesty, and lack of suggestion of trade connection, failing which the various exceptions in s.30(2) would not apply. In other words, the descriptive exception contained in 30(2)(a) is not a complete defence in cases where the defendant user attempts to take unfair advantage of the reputation or distinctive character of the plaintiff’s mark in connection with similar or related goods.

Indian courts have consistently ruled that descriptive fair use is only available when the allegedly infringing use is in the dictionary sense of the word, and not as a badge of origin. The guiding principle enunciated in Carlsberg India Pvt. Ltd v. Radico Khaitan Ltd by the Delhi High Court continues to argue that a ‘fair use defence’ is available in cases of descriptive use, but the tendency to confuse decreases when use is not as a badge of origin. Another approach to descriptive fair use comes via the nominative fair use line of cases, starting with Hawkins Cookers Ltd v. Murugan Enterprises, where the Court laid down a three-part test for accessory or compatibility claims: that use of the registered proprietor’s mark be necessary to the description, that such use be bonafide and that such use does not deceive or mislead the consumer as to trade origins.

In the Division Bench hearing of Hawkins v. Murugan, the Court rejected the defence on appeal precisely because the defendant had reproduced the word “HAWKINS” in the same colour and prominence as used by the registered proprietor an observation subsequently used to distinguish between cases where the same dictionary word is used in significantly lesser contrast or size with the defendant’s own brandmark, or used in the same visual pr esentation as the registered proprietor’s.

Post-2025, there have been a few additional developments which bear mentioning. The first concerns a shift in the evidentiary onus in situations where a plaintiff’s own mark is essentially laudatory or descriptive: there has been a noticeable reluctance amongst courts to grant injunctions, or to accept registrations, of inherently descriptive or laudatory words merely on the basis of commercial success, sales figures, ad spending, and market penetration are all considered relevant but not conclusive factors. On the other hand, a proprietor’s acceptance of a disclaimer during registration may bind them, in subsequent litigation, from claiming that such disclaimer does not apply to the word itself when used independently and not in conjunction with the proprietor’s registered mark.

One further refinement can be seen in the three judgments discussed below which concern the distinct but related proposition that the use of even inherently descriptive/laudatory words may be protected if they form part of a “family of marks” in the manner explained below, that is, where a company’s consistent pattern of registering a certain word as a prefix or suffix to its registered trademarks makes it probable that the public will attribute that distinctiveness to the word itself.

Case Laws :

1. Hawkins Cookers Ltd v. Murugan Enterprises, (2008) 36 PTC 290 (Del) : The single judge was of the opinion that the phrase “Suitable for Hawkins Pressure Cookers” is protected as a bona fide compatibility reference under section 30(2)(d). However, the division bench overturned this decision and held that by using the word “HAWKINS” in a different colour, the defendant gave the trade mark an undue prominence, thus going beyond what was reasonably necessary to indicate compatibility. It was further held that the defendant can use a phrase such as “Suitable for all pressure cookers”. 

   PRINCIPLE: Under section 30(2)(d), the reference to compatibility in the fair use of a trademark must contain a trademark without prominence in use.

2. Consim Info Pvt. Ltd v. Google India Pvt. Ltd, (2010) 6 CTC 813 (Mad) : Consim Info Pvt. Ltd. filed a suit against Google India Pvt. Ltd. and other matrimonial portals for infringement of their matrimonial trade marks by using the same as AdWords. The Court held that the trademark proprietor cannot restrict competition by preventing other players from using a relevant descriptive element contained in a composite trademark. The interim injunction was revoked, and the policy of Google was permitted as the division bench and the supreme court were of the same opinion on this matter. PRINCIPLE: The registered proprietor of a composite trademark cannot claim exclusivity over the descriptive elements contained in it.

3. Lotus Herbal Pvt. Ltd v. DPKA Universal Consumer Pvt. Ltd : The single judge held that “Lotus” as used in “Lotus Splash” refers to an ingredient and thus falls under section 30(2)(a). However, this decision was overruled by the division bench on the grounds that 'Lotus Splash' functioned as a sub-brand and was not used merely in a descriptive sense." An interim injunction was granted. PRINCIPLE: Section 30(2)(a) of the Trademark Act covers the genuine use of a trademark as a reference to specific characteristics of the goods.

4. Yatra Online Limited v. Mach Conferences and Events Limited, 2025 SCC OnLine Del 5610 (decided 22 August 2025) : "The trademark “Yatra” in “BookMyYatra” cannot be restrained from use because “Yatra” is a generic word for travel and “BookMy” is descriptive. The Court declined to restrain the defendant from using 'BookMyYatra' because 'Yatra' is generic in the travel trade and the plaintiff failed to establish exclusive rights over the standalone word. PRINCIPLE: A generic or purely descriptive term cannot be monopolised by a proprietor without demonstrating that the term has acquired secondary meaning.

5. Wow Momo Foods Pvt. Ltd v. Wow Burger & Anr, CS(COMM) 1161/2024 : WOW” is a generic laudatory expression which has no protection under the Trademark Act. Hence, the single judge refused the injunction. However, the division bench overturned this decision on the grounds that Wow Momo had several other trademarks with the WOW prefix, and that the plaintiff had invested substantial resources in creating this collection of trademarks which was well known to the consumers. Thus, the division bench granted the injunction. The defendant was prohibited from using the trademark WOW BURGER. It was held that despite its laudatory nature, Wow Momo had established a protectable family of marks centred on "WOW. PRINCIPLE: A descriptive element contained in a combination of an expressive element may be eligible for protection as a trademark by virtue of being the common source identifier of a family of registered trademarks.

6. Honasa Consumer Ltd v. Visage Beauty and Health Care Pvt. Ltd & Anr (the “D-TAN” rectification) : The registration of the trademark D-TAN was cancelled as it "described the purpose or intended use of the goods and therefore failed the test of distinctiveness under section 9(1)(b). The sales and advertisement of the products could not be relied upon to demonstrate the acquired distinctiveness of the mark. PRINCIPLE: Terms which describe services or goods as a matter of fact and the mere proof of sales figures and advertisement would not meet the test of acquired distinctiveness.

7. Renee Cosmetics Private Limited v. Ms. Rupali Sharma & Anr, C.O. (COMM.IPD-TM) 107/2025 (decided 5 June 2026) : The Court cancelled the registration of the “GLASS SKIN” trademark as it failed the test of distinctiveness. It was stated that the said trademark indicates the desired effect of a complexion enhancer. The term being descriptive in nature lacks inherent and acquired distinctiveness. PRINCIPLE: Common terms used in the beauty industry are not entitled to registration as a trademark even if they indicate the desired effect.

8. Western Digital Technologies & Anr v. Hansraj Dugar (Delhi High Court, 16 May 2025) : The Court permitted the import of genuine Western Digital products sold as second-hand. The proposition that Western Digital products could be legitimately bought outside the territory and then re-sold without any warranty, with due disclosure to the buyer that they were second-hand products, was held to be valid. The doctrine of international exhaustion of rights is available under sections 30(3) and 30(4). 

Practical Implications

There are a few practical lessons to be drawn for in-house counsel and business owners from this line of cases:

• A competitor’s mark used descriptively must be presented in a manner similar to one’s own house marks, and particularly in a manner that avoids the same prominent presentation or font as the proprietor’s own trade mark. In cases of descriptive references, the reference to the mark must not go beyond what is strictly necessary, such as “suitable for” or “comprising”, and must make it clear that the user’s goods or services are not connected to the proprietor except as described.

• Plaintiffs in cases of allegedly descriptive references must be prepared to demonstrate, from the outset of litigation, that sales figures, advertising, and unsolicited publicity are sufficient to demonstrate that the word in question has gained secondary meaning.

• Proprietors must take care in choosing disclaimers during the registration process since they could bind them to terms subsequently used by competitors and are binding during litigation. Evidence of consumer outreach, such as unsolicited advertising or media mentions, must be collected by proprietors who wish to use inherently descriptive or laudatory words since figures alone are often not enough, according to the Delhi High Court.

• The creation of a “family of marks” utilising a common word in either a prefix or suffix position may help a proprietor who wishes to register a word that may appear inherently generic.

Finally, it is pertinent to remember that the use of keywords concerning a competitor in the context of online visibility and metadata falls under a separate category altogether and must be evaluated separately from the use of such a competitor’s mark on product packaging or descriptions.

Conclusion

The judgments rendered during this period indicate that the Indian courts are becoming increasingly exacting when it comes to descriptive fair use. Plaintiffs seeking to exercise rights over inherently laudatory or descriptive word marks must have sufficient evidence that the word has indeed come to possess secondary meaning, and must present such evidence during the course of litigation, since the courts are unlikely to be satisfied by sales figures, advertising, or general publicity on their own. Plaintiffs must also be aware of any disclaimers in their trademarks and any limitations that may arise from them. Meanwhile, the defendant in a lawsuit concerning allegedly infringing descriptive use must demonstrate, amongst other things, that such use was necessary and did not utilise the same visual presentation as the proprietor’s trademarks.

And finally, in those instances where a plaintiff manages to demonstrate that the word in question has acquired secondary meaning by virtue of being commonly used across a set of trademarks as a suffix or prefix, there is likelihood of success in litigation against a defendant wishing to use it descriptively. All in all, the issue before the court is now one of evidence rather than one of law, and so it becomes paramount for in-house counsel to keep detailed records of brand building in support of the registration of inherently laudatory or descriptive words.

Author: Shraddha Singh, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References (Endnotes)

1. Trade Marks Act, No. 47 of 1999, §§ 29–30 (India).

2. Carlsberg India Pvt. Ltd. v. Radico Khaitan Ltd., Delhi High Ct.

3. Hawkins Cookers Ltd. v. Murugan Enters., (2008) 36 P.T.C. 290 (Del.).

4. Consim Info Pvt. Ltd. v. Google India Pvt. Ltd., (2010) 6 C.T.C. 813 (Mad.).

5. Lotus Herbal Pvt. Ltd. v. DPKA Universal Consumer Pvt. Ltd., Delhi High Ct. (order discussed in Trademark Infringement and Defense under Section 30(2)(a), Legal Serv. India).

6. Yatra Online Ltd. v. Mach Conferences & Events Ltd., 2025 SCC OnLine Del 5610 (Del. High Ct. Aug. 22, 2025).

7. Wow Momo Foods Pvt. Ltd. v. Wow Burger & Anr., CS(COMM) No. 1161/2024 (Del. High Ct. Sept. 12, 2025), rev'd, FAO(OS)(COMM) No. 143/2025 (Del. High Ct. (Div. Bench) Oct. 16, 2025).

8. Honasa Consumer Ltd. v. Visage Beauty & Health Care Pvt. Ltd. & Anr., Delhi High Ct. (discussed in Delhi High Court Cancels D-TAN Trademark, Legal Serv. India (July 2, 2026)).

9. Renee Cosmetics Pvt. Ltd. v. Rupali Sharma & Anr., C.O. (COMM.IPD-TM) No. 107/2025 (Del. High Ct. June 5, 2026).

10. W. Digital Techs. & Anr. v. Hansraj Dugar, Delhi High Ct. (May 16, 2025) (discussed in Delhi High Court Develops Jurisprudence on International Trademark Exhaustion and Parallel Imports, World Trademark Rev.).

11. BigTree Ent. Pvt. Ltd. v. Brain Seed Sportainment, Delhi High Ct. (cited in Yatra Online Ltd. v. Mach Conferences & Events Ltd., 2025 SCC OnLine Del 5610).

12. Delhi High Court Draws Sharper Boundaries Between Descriptive Use and Protectable Brand Identity in Yatra, WOW Momo and Hotels.com, World Trademark Rev. (Nov. 13, 2025). check the citations.