Introduction

An unchallenged order of the Trademarks Registry can have significant consequences in subsequent infringement and passing off proceedings. This was underscored by a Division Bench of the Delhi High Court in an appeal arising from an ex-parte ad-interim injunction restraining the use of DYNAFRESH against the registered trademark DYNA.

The appeal was principally founded on an allegation of suppression. The Defendant contended that the Plaintiff had failed to disclose 45 GST-paid invoices allegedly evidencing use of DYNAFRESH since June 2021, and that this omission was material because the Plaintiff had represented the Defendant’s adoption as recent.

The Division Bench rejected the contention. Of particular significance was the fact that the Defendant’s earlier user-based application for DYNAFRESH had already been rejected by the Trademarks Registry on the ground that the mark was phonetically and visually similar to DYNA and that the Defendant had failed to substantiate its claimed user. That order had never been challenged.

The Court held that the subsequent reliance on invoices could not overcome the effect of the earlier final order.

Background

Anchor Consumer Products Private Limited, proprietor of the registered trademark DYNA, instituted proceedings against Jagdish Dahyalal Patel alleging trademark infringement and passing off in respect of DYNAFRESH.

The Plaintiff contended that DYNA was the dominant and distinctive element of DYNAFRESH and that the Defendant’s products also bore similarities in colour scheme and overall trade dress.

The learned Single Judge found that the Plaintiff had established substantial goodwill and reputation in DYNA through its sales, advertising and celebrity endorsements. The Court further found that the Defendant’s adoption of DYNAFRESH was not bona fide and that the similarity between the competing marks, coupled with overlapping goods and trade channels, was likely to cause confusion and deception.

An ex-parte ad-interim injunction was accordingly granted.

The Defendant challenged the order before the Division Bench.

The Defendant’s Case: Suppression of Prior Use

The Defendant’s principal grievance was that the Plaintiff had suppressed a material fact.

It contended that DYNAFRESH had been used since June 2021, and not merely from 2026 as allegedly suggested in the plaint. Reliance was placed on 45 GST-paid invoices, which, according to the Defendant, demonstrated continuous prior use.

The Defendant argued that the Plaintiff had access to these documents and ought to have disclosed them before seeking an ex-parte injunction. Had the invoices been disclosed, it was contended, the learned Single Judge may have concluded that the Defendant was not a recent adopter and that an opportunity of hearing should have been afforded before granting interim relief.

The Defendant therefore sought interference with the injunction on the ground of suppression of material facts.

The Plaintiff’s Response

The Plaintiff disputed the allegation of suppression and pointed to the Defendant’s earlier trademark application for DYNAFRESH, filed in 2022 claiming use since 29 February 2020.

That application had been rejected by the Registrar of Trademarks. The Registrar found DYNAFRESH to be phonetically and visually similar to DYNA and covering similar goods, with a likelihood of confusion. Significantly, the Defendant had also failed to substantiate its claimed user since 29 February 2020 despite being given opportunities to do so.

The Defendant did not challenge the Registrar’s order.

The Plaintiff contended that this unchallenged order was crucial to the Defendant’s claim of bona fide adoption. It further pointed out that the Defendant had subsequently filed another application for DYNAFRESH without properly disclosing the earlier adverse order.

The Plaintiff also relied upon Amazon listings from 2021, 2022 and 2025, which had already been placed before the learned Single Judge and which demonstrated that the Defendant’s use of DYNAFRESH was not unknown to the Court.

Division Bench: The Registrar’s Order Changed the Evidentiary Landscape

The Division Bench rejected the Defendant’s suppression argument.

The Court attached considerable significance to the fact that the Defendant’s earlier application for DYNAFRESH had already been rejected by the Registrar and that the order had attained finality.

The Registrar had made two significant findings:

1. the competing marks were phonetically and visually similar, with a likelihood of confusion; and
2. the Defendant had failed to substantiate its claimed use of DYNAFRESH from 29 February 2020.

These findings had never been challenged.

The subsequent reliance on 45 GST invoices therefore could not, in the Court’s view, displace the effect of the Registrar’s order.

The Division Bench effectively treated the Registrar’s unchallenged findings as a significant obstacle to the Defendant’s attempt to establish bona fide adoption through the invoices.

Prior Use Cannot Be Considered in Isolation

An important feature of the decision is that the Court did not treat the alleged prior use as determinative merely because invoices existed.

The Defendant sought to use the invoices to establish use from 2021. However, its earlier application had claimed an even earlier user date of 29 February 2020, which the Registrar had found to be unsupported.

The Court therefore had before it not merely a question of whether the Defendant had invoices dating from 2021, but also an earlier quasi-judicial finding that the Defendant had failed to substantiate its claimed prior use.

The Court held that the Registrar’s findings, including the finding of similarity between DYNAFRESH and DYNA, remained unaffected by the invoices.

This was particularly important because the Defendant had not challenged the learned Single Judge’s substantive findings regarding deceptive similarity, the Plaintiff’s goodwill and reputation, or the lack of bona fides in adoption.

Its challenge was confined essentially to the alleged suppression.

Subsequent Application: The Question of Estoppel

The Division Bench also took note of the Defendant’s subsequent application for DYNAFRESH.

The Court found it significant that the Defendant had failed to disclose the earlier Registrar’s order while pursuing the subsequent application.

The earlier order had not merely rejected the claimed user. It had also found that DYNAFRESH conflicted with the registered DYNA mark.

According to the Division Bench, the Defendant could not disregard this earlier adverse determination and proceed with a subsequent application for the same mark as though the earlier proceedings had not occurred.

The Court therefore regarded the second application as ex-facie lacking in bona fides and liable to be tested against the doctrine of estoppel.

The failure to place the Registrar’s order before the Division Bench further weakened the Defendant’s case.

No Material Suppression by the Plaintiff

The Court also rejected the allegation that the Plaintiff had concealed the Defendant’s use of DYNAFRESH.

The existence of the Defendant’s use was not entirely absent from the material before the learned Single Judge. The Plaintiff had produced Amazon listings dating from 2021, 2022 and 2025.

Thus, the Court found that the Plaintiff had not withheld material information concerning the Defendant’s use of the mark in a manner that would justify setting aside the ex-parte injunction.

More importantly, the alleged invoices could not overcome the earlier Registrar’s findings regarding the Defendant’s failure to substantiate its claimed user and the conflict between the competing marks.

Findings on Similarity Remained Undisturbed

The Division Bench also noted that the Defendant had not challenged the substantive findings which had formed the foundation of the injunction.

The learned Single Judge had found that:

1. DYNA was the dominant and eye-catching element of DYNAFRESH;
2. “FRESH” appeared in a smaller and differently stylised manner;
3. the competing products exhibited similarities in colour scheme and trade dress;
4. the Plaintiff possessed substantial goodwill and reputation in DYNA;
5. the Defendant’s adoption was not bona fide; and
6. the common trade channels and overlapping consumers created a likelihood of confusion and deception.

These findings remained unchallenged in the appeal.

Consequently, even apart from the alleged suppression, the Court found that the Registrar’s earlier finding regarding the similarity of DYNAFRESH and DYNA provided substantial support for the continuation of interim protection.

The Division Bench accordingly dismissed the appeal and allowed the ex-parte ad-interim injunction against DYNAFRESH to stand.

Key Takeaways

1. Alleged prior-use invoices cannot override a final adverse finding of the Trademarks Registry concerning the same mark.
2. A party cannot disregard an earlier adverse Registry order when relying on the same mark; full disclosure of prior proceedings is essential.
3. Suppression must relate to a material fact; where prior use is already before the Court, additional invoices may not justify vacating an injunction.
4. An unchallenged Registry finding of phonetic and visual similarity can significantly influence bona fide adoption, likelihood of confusion, and interim relief.