Bombay High Court vacates ex-parte injunction and imposes exemplary costs for concealment of material facts.

The Bombay High Court recently delivered a significant ruling in a trademark dispute involving the mark “DOCTOR EXTRA SOFT”, underscoring that equitable relief cannot be obtained through suppression of material facts.

The matter arose from an application filed by Chaitanya Arora and others, the defendants, seeking to set aside an ex-parte ad interim injunction earlier granted in favour of Shoban Salim Thakur, the registered proprietor of the mark DOCTOR EXTRA SOFT. The plaintiff had instituted a suit alleging infringement and passing off by the defendants, who were using marks such as “DOCTOR HEALTH SUPER SOFT,” “DOCTOR SUPER SOFT,” and “DOCTOR EXTRA SOFT” in relation to footwear.

At the admission stage, the Court had granted an ex-parte ad interim injunction restraining the defendants from using the impugned marks. Aggrieved, the defendants moved the Court to vacate the order, alleging that the injunction had been obtained by suppressing material facts and misleading the Court.

Key Grounds of Challenge

The defendants alleged that the plaintiff had deliberately concealed three crucial facts in order to wrongfully secure an ex-parte injunction:

1. Territorial Limitation Concealed: The plaintiff’s registration in Class 25 was restricted to use within Maharashtra, yet the plaintiff sought pan-India relief without disclosing this limitation. The Court found this omission to be intentional and misleading, as the plaintiff had disclosed minor procedural details but concealed the core territorial restriction. Even after the defendants exposed the limitation, the plaintiff falsely claimed the omission was “inadvertent,” despite having repeatedly relied on the very registration throughout the plaint.
2. Prior Use by Defendants Suppressed: Evidence on record showed that the defendants had been using the impugned mark since April 2022, as evidenced by filings before the Trademark Registry, namely, a Counter-Statement (July 2024) and Affidavit of Evidence (December 2024). The plaintiff was fully aware of these documents but claimed in the plaint to have discovered the defendants’ use only in March 2025, thereby fabricating urgency and misleading the Court into granting ex-parte relief.
3. Inconsistent Stand Before Trademark Registry: During prosecution of its own application for DOCTOR EXTRA SOFT in Class 25, the plaintiff had disclaimed exclusivity over the words “DOCTOR” and “SOFT,” arguing that the mark was phonetically dissimilar to prior marks such as DOCTOR PLUS and DOCTOR SOFT. However, in the present suit, the plaintiff took a contradictory position, claiming exclusivity over the same words to allege infringement. Such inconsistency attracts the principle of prosecution history estoppel, preventing the plaintiff from now asserting exclusive rights over generic elements of its mark.

Plaintiff’s Defence

The plaintiff denied any wilful suppression, asserting that:

1. There was no concealment, and all actions were bona fide.
2. The disclaimer on the Class 25 registration was irrelevant as the alleged infringement occurred within Maharashtra.
3. The defendants’ non-appeal against the ex-parte order indicated acquiescence.
4. Even if there was an oversight, it should not disentitle the plaintiff from equitable relief.
5. The defendants’ evidence of prior use was unreliable and inconsistent.

Court’s Analysis and Findings

The Court found gross suppression of material facts and deliberate dishonesty by the plaintiff, holding that the injunction was obtained by fraud.

1. Non-disclosure of territorial limitation: The plaintiff’s Class 25 registration was limited to Maharashtra. Yet, it sought and obtained an all-India injunction by producing an incomplete registration certificate and concealing the restriction.
2. Concealment of prior use: The plaintiff was fully aware that the defendants had claimed prior use since April 2022 through official filings yet falsely asserted recent discovery of infringement in March 2025.
3. Suppression of prosecution history: The plaintiff’s earlier disclaimer over “DOCTOR” and “SOFT” was a material fact that ought to have been disclosed. Its concealment demonstrated lack of bonafides and bad faith.

The Court rejected the plaintiff’s argument that these omissions were inadvertent, observing that all three suppressed facts directly related to the sole registration in Class 25. Their collective omission, therefore, could not have been accidental.

Court’s Observations

1. The Court stressed that a litigant seeking ex-parte relief is under a strict duty to make full and frank disclosure of all material facts. The plaintiff’s conduct in concealing crucial details and continuing to justify the unlawful injunction even after exposure amounted to fraud upon the Court.
2. The Court further noted that the plaintiff not only failed to rectify its misrepresentation but also pursued contempt proceedings against the defendants to preserve the tainted injunction. Such actions, the Court held, warranted exemplary costs to deter future misuse of judicial processes.

Decision

1. The ex-parte injunction was vacated.
2. The suit was dismissed.
3. The plaintiff was directed to pay ₹25,00,000 (approx. US$ 28,000) each to Defendant Nos. 2 and 3 as costs.
4. The Court also ordered the return of goods seized by the Court Receiver pursuant to the ex-parte order.

Comment

This ruling underscores that litigants must approach the Court with clean hands and transparency, particularly when seeking ex parte reliefs. By dismissing the suit and imposing substantial costs, the Court underscored that abuse of judicial process carries serious consequences.