This note discusses the perils of suppressing material facts while seeking ex-parte injunction and the ensuing consequences. The Plaintiff, OM Logistics Ltd, (OML) filed suit before the Delhi High Court against the Defendant, Mahendra Pandey (Mahendra) alleging trademark infringement and passing off and to restrain the latter from using the mark/name ‘OM Logistics’ in relation to their business. OML was granted an ex parte ad-interim injunction by the court restraining Mahendra from using the mark/trading name ‘OM EXPRESS LOGISTICS’. Mahendra has filed an application to set aside the ex-parte injunction. The post summarises the contentions of the parties and court ruling.

OML in the suit states:

1. The mark ‘OM LOGISTICS’ was adopted in the year 1990 and was registered as a company in October 1999.
2. The mark ‘OM LOGISTICS’ mark is registered in Class 39. They have acquired reputation and goodwill in the logistics business on account of the long and extensive usage and the mark is well-known.
3. Mahendra is using the mark ‘OM EXPRESS LOGISTICS’ in respect of identical business of providing logistic services. Mahendra’s mark is phonetically similar, and the only difference is the addition of the word ‘EXPRESS’, which is inconsequential. It will cause confusion in the mind of the ordinary consumer, who would assume that OML has started an express delivery service.
4. Mahendra has neither applied for registration of trademark nor opposed the OML mark.

Mahendra in their application to set aside the injunction contends:

1. OML has made misleading and false claims and suppressed relevant facts/documents to obtain an ex-parte ad-interim injunction.
2. OML did not disclose to the Court that the registrations relied on by them are device/composite marks and not a word mark and they have not filed legal proceedings certificate along with the plaint. Further, concealed the replies filed in response to the examination report issued by the Trademark Registry during registration of the mark .
3. OML deliberately did not file the annexures that were a part of the reply sent by Mahendra to the former’s cease and desist letter as they had attached list of entities using the words/marks ‘OM’ and ‘Logistics’ in relation to logistics business.
4. The word ‘OM’ is a religious symbol/word and publici juris, not capable of being monopolized. The word ‘Express’ is a common dictionary word used in a laudatory sense in transport/courier service and ‘Logistics’ is a descriptive word used in the said business.
5. With regard to composite marks, when the elements are common to trade or descriptive and of not distinctive character, no exclusivity can be claimed and thus, OML is not entitled to interim injunction.

Court’s findings

• OML is guilty of suppression of materials facts. They did not disclose that the registrations relied on by them for the OM LOGISTICS marks were device/labels marks and not word mark at the time of seeking ex-parte injunction. Even though OML has stated that they are filing the online status of the registrations along with legal proceedings certificate, no such document is on record. Moreover, if those documents were filed, it would have disclosed the fact that Mahendra had already filed a rectification application in respect of OML’s registration.
• Even though OML disclosed that Mahendra responded to their cease-and-desist letter, they failed to file the documents Mahendra had relied in their reply to show several entities operating in the field of logistics and courier services are using ‘OM’ as a part of their trading style.
• Mahendra in their letter also mentioned the reply filed by OML to the examination report for their registration in class 39 where they contended that their mark is a device/label mark and not similar to the cited marks. These vital documents have not been disclosed by OML.
• In the instant case OML contend that Mahendra’s ‘OM Express Logistics’ is similar to ‘OM Logistics Ltd’. This stand of OML was totally different and claim of exclusivity in respect of the mark ‘OM LOGISTICS LTD’ as a word mark is contrary to their submission in the examination report. Thus, OML cannot be permitted to approbate and reprobate.
• The word ‘OM’ is a religious symbol and in India, it is a common practice that names of gods and goddesses and religious symbols are used as names of individuals as well as business entities. Therefore, OML cannot be allowed to monopolize the use of the religious symbol ‘OM’ In this regard.
• The words ‘Express’ and ‘Logistics’ are common English words used in a laudatory/descriptive manner in the instant case. Mahendra has filed various documents to show that there are registrations in Class 39 using the words/marks ‘OM’, and ‘LOGISTICS’ and other entities using the words/marks ‘OM’ and ‘Logistics’ in relation to their business. Thus, there is merit in the contention that the marks ‘OM’ and ‘Logistics’ are common to trade and cannot be monopolized.
• In the instant case OML has misrepresented facts to obtain the ex-parte ad interim injunction order. Further, they are guilty of concealment of material facts from the Court. Even on merits, OML cannot monopolize the use of the popular religious symbol, ‘OM’ and the word ‘Logistics’ which is common to the trade.

In light of the above the Court set aside the injunction granted earlier.