In a significant decision highlighting the importance of consistency in trademark prosecution and litigation, the Division Bench of the Bombay High Court dismissed the appeal filed by Laser Shaving India Pvt. Ltd. and upheld the refusal of interim injunction against RKM International Products Pvt. Ltd. and others in relation to the use of the mark “SETMAX”.

The ruling serves as a reminder that equitable relief is reserved for parties who approach the court with clean hands. A litigant cannot adopt one position before the Trademarks Registry to overcome an objection and subsequently take an inconsistent stand before a court to secure an injunction. The judgment reiterates the limited scope of appellate interference with discretionary orders passed by a Single Judge in interim proceedings.

Background

Laser Shaving India Pvt. Ltd., a well-known manufacturer of safety razor blades with an international presence in the men’s grooming market, adopted the trademark “SETMAX” for its razor blade products and claimed rights over the artistic packaging and trade dress associated with its “SetMax Platinum Blades ”.

The Plaintiff applied for registration of the word mark “SETMAX” in Class 8 on 1 September 2023. The mark was registered in its favour on 1 January 2026. According to the Plaintiff, through extensive use, sales, and promotion of products under the SETMAX mark, it had acquired substantial goodwill and common law rights in the mark as well as its packaging and trade dress.

However, the dispute had a prior history. Galactic Conquistadors FZE had already filed an application on 31 August 2023 for registration of a stylized “” label in Class 8, on a proposed-to-be-used basis. Galactic had subsequently permitted the Defendant, RKM International Products Pvt. Ltd., to use the said mark.

In December 2023, the Plaintiff discovered that the Defendants were manufacturing and marketing safety razor blades under the “SETMAX” mark with packaging and trade dress which, according to the Plaintiff, closely resembled its own. Consequently, the Plaintiff initiated a suit alleging passing off and, after amending the plaint, also raised claims of copyright infringement and sought damages of ₹100 crore.

Pending disposal of the suit, the Plaintiff sought an interim injunction restraining the Defendants from using the impugned mark, packaging, and trade dress. However, the Single Judge declined to grant such relief, resulting in the present appeal before the Division Bench.

The Earlier Proceedings Before the Trademarks Registry

An important aspect of the case was the Plaintiff’s conduct during the prosecution of its trademark application.

When the Trademarks Registry examined the Plaintiff’s application, it raised an objection citing Galactic’s earlier “SETMAX” application as a conflicting mark. Galactic also issued a cease-and-desist notice alleging trademark infringement and passing off.

In response, the Plaintiff contended that its adoption of “SETMAX” was honest and bona fide. More importantly, it argued that its mark was visually, structurally, and conceptually distinct from Galactic’s stylized label and was therefore incapable of causing confusion among consumers. Simultaneously, the Plaintiff asserted that it was the prior user of the mark and that Galactic had not established any genuine commercial use in India.

The Plaintiff’s stand before the Registry enabled it to overcome the objection and secure registration of the SETMAX mark.

Plaintiff’s Case Before the Division Bench

1. Before the Division Bench, the Plaintiff argued that the Single Judge had wrongly denied interim relief primarily on the ground of alleged suppression rather than examining the traditional principles governing the grant of injunctions, namely prima facie case, balance of convenience, and irreparable harm.
2. It was contended that the earlier ex-parte injunction had been vacated only because of the alleged non-disclosure of certain facts and not because the Court had rejected the merits of the Plaintiff’s claims.
3. The Plaintiff further submitted that statements made during trademark prosecution did not automatically create an estoppel preventing a party from subsequently alleging deceptive similarity. It argued that it had consistently maintained that it was the prior adopter and user of the SETMAX mark and had always asserted superior rights over Galactic.
4. With respect to the copyright and passing off claims, the Plaintiff submitted that it had established substantial goodwill in the market and that the Defendants had adopted deceptively similar packaging and artwork with the intention of causing confusion among consumers.

Defendants’ Submissions

1. The Defendants, on the other hand, argued that the Plaintiff had obtained an earlier ex-parte injunction by deliberately suppressing material facts and thereby committing a fraud upon the Court.
2. According to the Defendants, the Plaintiff had failed to disclose several crucial documents, including Galactic’s prior trademark application, the examination report issued by the Trademarks Registry, its response to that report, and the cease-and-desist correspondence exchanged between the parties.
3. The Defendants contended that such non-disclosure was a deliberate attempt to prevent the Court from examining the Plaintiff’s contradictory positions.
4. They contended that the limited scope of appellate review precluded interference with the Single Judge’s discretionary order in the absence of arbitrariness or perversity.

Findings of the Division Bench

1. The Division Bench agreed with the reasoning of the Single Judge and found no reason to interfere with the exercise of discretion.
2. The Court noted that Galactic’s trademark application for the stylized “SETMAX” label had been filed prior to the Plaintiff’s applications. The Plaintiff was aware of this application and had actively responded to the objection raised by the Trademarks Registry.
3. Importantly, the Plaintiff had represented before the Registry that its mark was visually, structurally, and conceptually different from Galactic’s mark and that the two marks were incapable of causing confusion. However, in the suit, the Plaintiff adopted the opposite position by alleging that the Defendants’ use of the SETMAX mark was deceptively similar and likely to mislead consumers.
4. The Court held that the Plaintiff could not be permitted to shift positions according to the forum in which it appeared. Having obtained registration on the basis of a particular representation before the Registry, the Plaintiff was bound by the consequences of that representation, especially when Galactic and its licensees had acted upon the same.
5. The Division Bench also took note of the fact that the Plaintiff did not disclose the earlier proceedings and correspondence before the Registry while seeking ex-parte relief. Such suppression of material facts was sufficient to deny equitable relief.
6. Additionally, the Court observed that despite having knowledge of Galactic’s prior application and involvement in the dispute, the Plaintiff failed to implead Galactic as a party to the proceedings.
7. Finally, applying the settled principle that an appellate court should exercise restraint while reviewing discretionary orders passed by a Single Judge, the Division Bench held that there was no arbitrariness, perversity, or error warranting interference. The appeal was accordingly dismissed.

Conclusion

The decision highlights that statements made during trademark prosecution may affect a party’s position in later litigation, particularly where the party takes an inconsistent stand while seeking equitable relief. It further reiterates that a party seeking an injunction must make full and candid disclosure to the Court. Suppression of material facts, especially in ex-parte proceedings, may justify denial of relief irrespective of the merits of the claim.