Suppression of Material Fact and vacation of stay
Introduction:This case involves a dispute between Pidilite Industries Limited (Plaintiff) and Astra Chemtech Private Limited & Ors. (Defendants) concerning allegations of trademark infringement. The plaintiff obtained an ex-parte ad-interim injunction on October 24, 2024, restricting the defendants from using certain marks. The defendants filed an application under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 (CPC), seeking vacation of the injunction on the grounds that it was obtained through misrepresentation and suppression of material facts.
Plaintiff's Claims:The plaintiff, Pidilite Industries Ltd., owns a registered trademark consisting of two elephants pulling in opposite directions.The plaintiff alleged that the defendants' trademark featuring rhinos in a similar pose was deceptively similar to its own mark and amounted to trademark infringement.Based on these claims, the plaintiff obtained an ex-parte ad-interim injunction on October 24, 2024 from the Bombay High Court.
Defendants' Contentions:The defendants argued that the plaintiff misrepresented their trademark before the Court. While the defendants’ actual registered trademark consists of six rhinos (three on each side facing each other), the plaintiff misrepresented it as containing only two rhinos to show deceptive similarity.The defendants also alleged that the plaintiff quoted a partial and misleading excerpt from their reply to a cease-and-desist notice, creating a false impression that the defendants had admitted to the likelihood of confusion.The defendants contended that the ex-parte injunction was obtained by suppressing material facts and misleading the Court, thereby violating legal principles governing injunctions.
Defendants’ Arguments (Applicants for Vacation of Injunction):Misrepresentation of the Defendants’ Trademark: The plaintiff knowingly misrepresented the defendants’ registered trademark, depicting it as having only two rhinos, rather than six rhinos facing each other in three pairs. This misrepresentation was repeated in the plaintiff’s pleadings, exhibits, and comparative analysis, misleading the Court into granting the injunction. Suppression of Material Facts: The registration certificate of the defendants' trademark was buried in voluminous exhibits without being highlighted in an objective manner.bThe plaintiff did not disclose that the defendants’ full trademark looked different from what was presented in the comparative table before the Court. Selective Quotation from the Defendants' Reply to Cease-and-Desist Notice: The plaintiff quoted only part of a sentence from the defendants’ reply, creating the impression that the defendants admitted the possibility of confusion.The full sentence actually refuted any likelihood of confusion.
Legal Precedents Cited by the Defendants:S.P. Chengalvaraya Naidu vs. Jagannath (1994) 1 SCC 1 – Fraud vitiates everything. If an order is obtained by misleading the Court, it must be vacated. Ramrameshwari Devi & Ors. vs. Nirmala Devi & Ors. (2011) 8 SCC 249 – Courts should exercise caution before granting ex-parte injunctions, and they should issue short notices wherever possible. Kewal Ashokbhai Vasoya & Anr. vs. Surabhakti Goods Pvt. Ltd. (2022 SCC OnLine Bom 3335) – Courts must assess whether the plaintiff made full and fair disclosures before granting ex-parte relief.
Plaintiff’s Arguments (Opposing Vacation of Injunction):No False Representation:;The plaintiff did not mislead the Court regarding the defendants’ trademark.;The plaintiff’s depiction of the defendants’ mark with only two rhinos was based on the defendants' own statements in their reply to the cease-and-desist notice. Material Facts Were Disclosed: The defendants’ full registered trademark was disclosed in paragraph 46 of the plaint. The registration certificate was attached to the exhibits, proving no suppression.Use of "SH" Mark by the Defendants: The defendants had earlier agreed in their reply to the cease-and-desist notice to stop using "SH", which proves they had no right to continue using it.
Legal Precedents Cited by the Plaintiff: K.L.F. Nirmal Industries Pvt. Ltd. vs. Marico Limited (2023 Bom HC) – Even if there is a minor incorrect statement, ex-parte injunction should not be vacated unless it causes injustice. Farooq Usman Batliwala vs. Hindustan Unilever Limited (2022 Bom HC) – Courts can uphold ex-parte injunctions in the interest of justice even if some details were inadvertently omitted.
Court’s Discussion on the Judgments and Citations:The Court agreed with the defendants' contention that the plaintiff’s misrepresentation of the defendants’ trademark as having only two rhinos instead of six rhinos was misleading.The Court held that the plaintiff should have fairly presented the entire registered trademark of the defendants and not depicted it in a truncated form. The Court also found that quoting only a part of the defendants' reply to the cease-and-desist notice was misleading and created an incorrect impression. However, regarding the use of "SH" by the defendants, the Court found that the defendants had earlier agreed to stop using the mark. Therefore, the injunction related to "SH" was justified.
Court’s Decision and Reasoning:The ex-parte ad-interim injunction concerning the defendants’ trademark (six rhinos) was vacated as the plaintiff obtained it through misleading representations. The injunction concerning the "SH" mark was upheld, as the defendants had already agreed to stop using it in their prior communications. The goods bearing the six-rhino trademark were ordered to be de-sealed and returned to the defendants. However, goods bearing the "SH" mark would remain seized until further orders.
Conclusion:The Bombay High Court partly allowed the defendants' application, emphasizing the importance of full and honest disclosure while seeking ex-parte relief. The ruling reinforces the principle that any attempt to mislead the Court, even through selective representation of facts, can lead to vacation of reliefs granted.
Case Title: Pidilite Industries Limited Vs. Astra Chemtech Private Limited & Ors.
Date of Order: February 6, 2025
Case No.: Interim Application (Lodging) No. 37828 of 2024 in Commercial IP Suit (Lodging) No. 32867 of 2024
Neutral Citation: 2025:BHC-OS:1821
Court: High Court of Judicature at Bombay
Judge: Hon'ble Justice Manish Pitale
Advocate Ajay Amitabh Suman
[Patent and Trademark Attorney]
High Court of Delhi
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