Self-contradictory statements haunt the Plaintiff

This is an order passed by the Bombay High Court in an appeal filed against the order of the District Judge-4, Pune. The word ‘ANNA’ is the bone of contention among two entities dealing in South Indian delicacies. The Plaintiff, Shantapa, filed the suit against the Defendant, Anna before the District Judge – 4, Pune, alleging trademark infringement and passing off. The Plaintiff seeks to restrain the Defendant from using the mark Anna or any other mark deceptively similar to the Plaintiff’s registered mark . The Defendant relied on its registration for the mark and that the Plaintiff is guilty of taking inconsistent plea before the Court and the Trademark Registry.

The District Court, after hearing the parties refused to grant an injunction holding that the Plaintiff had suppressed material facts regarding the representations made before the Trademark Registry at the time of examination of their marks. The Plaintiff has assailed the order of the District Court by way of this appeal before the High Court.

Plaintiff has filed the appeal contending:

  1. Plaintiff has been using the marks and ‘ANNA IDLI GRUHA’ since 2011 whereas the Defendant was yet to commence use of the mark as on the date of filing of the suit. As the Plaintiff has established prior use, a clear case of passing off is made out.
  2. District Judge erred in rejecting the application for temporary injunction on sole ground of representation made by Plaintiff at the time of registration of the mark ‘ANNA IDLI GRUHA’.
  3. The representation made by the Plaintiff at the time of examination regarding dissimilarities with cited marks will not disentitle them from seeking injunction in a passing off action and the principle of ‘prosecution history estoppel’ would not apply to the present case. The replies filed by the attorneys of the Plaintiff at the time of registration are cyclostyled and such defenses are required to be restricted to the proceedings for registration and cannot apply to an action instituted for passing off.
  4. The applications filed by Plaintiff for registration of the mark and the defenses taken by his attorney are in public domain and there is no suppression as alleged by the District Court.
  5. Prior registration of Defendant’s mark is an irrelevant factor as prior use is superior to registration. Moreover, registration of trademark is no defence to a passing off action.

Defendant filed counter on the following grounds:

  1. The Plaintiff, on account of suppressing the contradictory stand taken at the time of seeking registration is not entitled to an injunction.
  2. The Plaintiff filed the present Appeal in April 2023 and sought circulation thereof in November 2023 showing thereby that there is no urgency for grant of any temporary injunction.
  3. The suit is bad for non-joinder of necessary parties as Plaintiff failed to implead the registered owner of the mark and the suit is vaguely filed in the name of ‘M/s. Anna’ which is a non-existent entity.
  4. Plaintiff has committed fraud on Court by suppressing material facts. The contention that Plaintiff’s attorney has filed cyclostyled copy before the Trademark Registry is not true as it is the proprietor who has filed the reply stating that ‘ANNA IDLI GRUHA’ does not resemble with other marks cited in the search report, which included Defendant’s mark ‘ANNA’.
  5. The scope of interference by the Appellate Court in the exercise of discretion by the trial court is extremely narrow and thus, the appeal ought to be dismissed.

Findings of the High court

  1. In the instant case, both the Plaintiff and Defendant are registered owners of their respective trademarks and there is no question of infringement. The Plaintiff contends that they have been using the marks and at a prior point of time and the act of the Defendant in selling his goods and services under the mark amounts to passing off. Documents evidence prior use of the marks by the Plaintiff. In this regard it is well settled that the rights of prior user are superior to that of registration and are unaffected by the registration rights under the Act.
  2. A perusal of the order passed by the District Judge would show that a temporary injunction is refused considering that the Plaintiff suppressed the stand taken at the time of registration and by applying the principle of estoppel. Documents on record evidence that in response to the examination report of the Plaintiff’s marks and ANNA IDLI GRUHA they had categorically contended that it is not similar to the cited marks so as to cause confusion and deception which included the Defendant’s mark . It is the Defendant’s specific case that once the Plaintiff represented before the Trademark Registry that his marks did not resemble with Defendant’s mark, he is estopped from suing the Defendant for using the mark .
  3. The doctrine of prosecution history estoppel is now being increasingly applied to trademark infringement actions as well. This doctrine seeks to stop a person from claiming any advantage associated with a right which he has consciously waived in previous proceedings.
  4. It is strenuously contended that an incorrect admission of law would not bind the Plaintiff and that representation made at the time of obtaining registration cannot deprive a Plaintiff from suing the Defendant for passing off.
  5. The applicability of the doctrine of ‘prosecution history estoppel’ would depend on the facts of each case. In the instant case the Plaintiff contended before the Trademark Registry that his marks did not resemble the mark of the Defendant. By stating so, the Plaintiff has acquiesced in the position that the Defendant could commence and carry on restaurant business with the tradename ‘ANNA’.
  6. On analyzing the judgments on the issue of applicability of principle of estoppel in actions for infringement of trademark and/or passing off, the stand taken by a party in proceedings for registration of a mark cannot be ignored in each and every proceeding filed for infringement or passing off. In the instant case, the doctrine of prosecution history estoppel would fully apply where Plaintiff has twice made a representation before the Trademark Registry that there is no resemblance with the Defendant’s mark. This was with full knowledge that Defendant was intending to use the mark ‘ANNA’ for the same class of goods and services. The Plaintiff thus led Defendant to believe that they are free to commence and operate the business of selling the same class of goods and services by using the mark ‘ANNA’.
  7. Even though Plaintiff has successfully demonstrated prior use of his trademarks, since it represented before the Trademark Registry that the two marks do not resemble each other, it cannot now be permitted to seek any restraint order against the Defendant in the form of temporary injunction. The District Judge has rightly considered the conduct of the Plaintiff in not disclosing repeated stands taken before the Trademark Registry for refusing the discretionary relief of injunction.
  8. Even if the doctrine of prosecution history estoppel and the conduct of suppression is to be ignored, no prima-facie case is made out by the Plaintiff for grant of temporary injunction.
  9. In the instant case the exercise of discretion by the learned District Judge does not suffer from any palpable error which calls for interference. The Plaintiff has failed to establish a prima-facie case, irreparable loss and balance of convenience and no case is made out for grant of any temporary injunction to restrain the Defendant from operating his business activities with tradename .

In light of the above the High Court refused to interfere with the order of the District Court and dismissed the appeal filed by the Plaintiff.

The above case reinforces the importance of disclosing accurate information in a trademark infringement suit and maintaining consistency in statements given before different authorities. The trademark owners cannot change their stand with respect to similarity in the marks depending on the situation, which can negatively impact their enforcement efforts.

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