In Biswanath Hosiery Mills Limited v. Anila Kedia, the Intellectual Property Rights Appellate Division of the High Court at Calcutta on 15 May 2026 in FMAT-IPD/2/2026 dismissed the appeal filed by Biswanath Hosiery Mills Limited against the order of the Commercial Court at Rajarhat dated 23 December 2025 refusing interim injunction under Order XXXIX Rules 1 & 2 CPC.
The appellant, holder of registered word and label mark ‘ONN’ for hosiery products, alleged infringement and passing off by the respondent’s use of ‘ON & ON’. The respondent contended that the appellant was estopped from claiming similarity, as in its 2011 reply to the Trademark Registry’s objection, the appellant had described ‘ONN’ as a coined, meaningless expression visually, structurally, and conceptually different from similar marks like ‘ON-N-ON’.
The Division Bench comprising Justice Debangsu Basak and Justice Md. Shabbar Rashidi held that the appellant failed to make out a prima facie case for injunction. On the parity of its own stand before the Registrar, ‘ONN’ could not be treated as deceptively similar to ‘ON & ON’ at the interim stage. The Court declined to interfere with the impugned order refusing injunction.
Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors. Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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Introduction
In a notable decision on trademark disputes involving prior statements made before the Registrar, the Calcutta High Court has highlighted the principle of estoppel in interim injunction matters. The Court refused to restrain the use of a similar mark when the plaintiff had previously taken a contradictory stand before the Trademark Registry that its own mark was distinct from cited marks.
Factual and Procedural Background
Biswanath Hosiery Mills Limited, a manufacturer and seller of hosiery products, holds registrations for the word and label mark "ONN". The company filed a commercial suit seeking injunction against Anila Kedia for using the mark "ON & ON" on similar goods, alleging infringement and passing off. The plaintiff claimed exclusive rights under Section 28 of the Trade Marks Act, 1999 due to its registration.
The Commercial Court at Rajarhat, by order dated 23 December 2025, dismissed the plaintiff’s application for interim injunction under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure. Aggrieved by this, Biswanath Hosiery Mills filed an appeal before the Intellectual Property Rights Appellate Division of the Calcutta High Court.
Dispute
The central dispute was whether the plaintiff was entitled to an interim injunction restraining the defendant from using "ON & ON". The plaintiff argued that its registered mark "ONN" gave it exclusive rights and the defendant’s mark was deceptively similar. The defendant contended that the plaintiff had suppressed material facts and was estopped from claiming similarity because, in 2011, while responding to objections from the Trademark Registrar, the plaintiff had described "ONN" as a coined, meaningless expression visually and structurally different from marks like "ON-N-ON".
Reasoning and Analysis of the Judge
The Division Bench comprising Justice Debangsu Basak and Justice Md. Shabbar Rashidi examined the matter on 15 May 2026. Justice Basak, writing for the Bench, noted that for granting an interim injunction, the Court must assess prima facie case, balance of convenience, and irreparable injury.
The Court found that when the plaintiff applied for registration of "ONN" in 2011, the Registrar raised objections under Section 11 citing similar marks including "ON-N-ON". In reply dated 30 September 2011, the plaintiff’s advocates asserted that "ONN" is a coined and meaningless expression, visually, structurally, and conceptually different from the cited marks. They provided a comparative table and relied on case law to argue dissimilarity.
The Bench observed that the defendant is using "ON & ON". Applying the same logic the plaintiff had used before the Registrar, there appeared to be no similarity sufficient for granting injunction at the prima facie stage. The Court held that the plaintiff’s earlier stand created estoppel, preventing it from now claiming deceptive similarity.
The judges emphasized that while considering an interim injunction application, the Court looks at the overall equities. Given the plaintiff’s previous representation that its mark is distinct, it could not demonstrate a strong prima facie case of infringement or passing off at this stage.
Final Decision of the Court
The Calcutta High Court dismissed the appeal (FMAT-IPD/2/2026) along with connected applications on 15 May 2026. The order of the Commercial Court refusing interim injunction was upheld. No order as to costs was passed.
Point of Law Settled in the Case
The judgment reinforces that a party seeking injunction in a trademark matter cannot take contradictory stands at different forums. Statements made before the Trademark Registry regarding distinctiveness of one’s mark can operate as estoppel in subsequent civil proceedings when claiming similarity against another mark. It also reiterates the standard principles for granting interim injunctions – prima facie case, balance of convenience, and irreparable harm – must be satisfied convincingly, especially when prior conduct of the plaintiff weakens its case.
Case Details Title: Biswanath Hosiery Mills Limited vs Anila Kedia Date of Order: 15 May 2026 Case Number: FMAT-IPD/2/2026 Neutral Citation: 2026:CHC-AS:749-DB (as per document) Name of Court: High Court at Calcutta (Civil Appellate Jurisdiction, Intellectual Property Rights Appellate Division) Name of Hon’ble Judges: Justice Debangsu Basak and Justice Md. Shabbar Rashidi
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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AdvocateAjayAmitabhSuman, IPAdjutor
Headnote: Calcutta High Court dismisses appeal against refusal of interim injunction in trademark suit holding that plaintiff’s earlier stand before Registrar describing its mark ‘ONN’ as coined and dissimilar creates estoppel against claiming similarity with defendant’s mark ‘ON & ON’. No prima facie case made out for injunction.
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