Suppression of Facts and Abuse of Process in Trademark Litigation
Facts: The plaintiff, Chaitanya Arora, was the proprietor of the mark “DOCTOR EXTRA SOFT”, used for footwear products under Class 25 of the Trade Marks Act, 1999. The plaintiff claimed ownership of the trademark and alleged that the defendants—led by Shoban Salim Thakur, who owned Family Footwear—were using a deceptively similar mark and selling identical goods, thereby infringing the plaintiff’s rights.
On 30th June 2025, the Court had granted an ex parte ad interim injunction, restraining the defendants from using the impugned trademark. Later, the defendants challenged this order under Order XXXIX Rule 4 of the Code of Civil Procedure, seeking to vacate the injunction on the ground that it had been obtained through suppression of material facts.
Procedural Background: The plaintiff initially approached the Bombay High Court seeking urgent interim relief against the defendants without giving them prior notice. The Court, relying on the plaintiff’s representation and supporting documents, issued an ex parte injunction.
However, the defendants subsequently filed an application under Order XXXIX Rule 4 CPC, asserting that the plaintiff had misled the Court by hiding crucial information—especially a territorial limitation/disclaimer attached to the plaintiff’s trademark registration in Class 25, which confined its protection only to the State of Maharashtra.
The defendants also produced material showing that their business was significantly harmed due to the injunction and that the plaintiff’s conduct amounted to misleading the Court.
Core Dispute: The central question before the Court was whether the plaintiff had suppressed material facts in obtaining the ex parte injunction and whether such suppression justified setting aside the order and dismissing the entire suit.
Specifically, the dispute revolved around: Whether the plaintiff’s Class 25 registration, limited to Maharashtra, could form the basis for pan-India relief? Whether failure to disclose this limitation amounted to deliberate suppression. Whether suppression of this nature vitiated the plaintiff’s entire case and warranted exemplary costs.
Detailed Reasoning and Judicial Analysis: Court examined the record in detail and noted several serious inconsistencies in the plaintiff’s conduct.
First, it was undisputed that the plaintiff’s registration in Class 25 for footwear contained a specific territorial limitation restricting the mark’s validity to Maharashtra. Despite this, the plaintiff had filed a pan-India suit seeking to restrain the defendants in Delhi and other states. This, the Court held, was a deliberate act of suppression.
The Judge found that the plaintiff’s omission was not “inadvertent.” The plaint had lengthy paragraphs discussing various registrations, oppositions, and proceedings in Class 25, yet the most crucial element—the territorial restriction—was missing. The Court concluded that no genuine mistake could explain the omission of such a vital fact.
The Court emphasized that any party seeking ex parte ad interim relief must make full and fair disclosure of all relevant facts. This duty is higher when the opposing party is not present. Justice Doctor relied on the principle that a litigant must “come to court with clean hands” and cited several leading precedents to reinforce this duty:
Prestige Lights Ltd. v. State Bank of India (2007) 8 SCC 449 — Held that suppression of material facts is sufficient to reject relief.
Bhaskar Laxman Jadhav v. Karamveer Kakasaheb Wagh Education Society (2013) 11 SCC 531 — Reiterated that full disclosure is a mandatory obligation.
Ramjas Foundation v. Union of India (2010 SCC OnLine SC 1254) — Stated that courts must protect themselves from unscrupulous litigants who pollute the stream of justice.
Kewal Ashokbhai Vasoya v. Surabhakti Goods Pvt. Ltd. (2022 SCC OnLine Bom 3335) — Clarified that ex parte injunctions require complete and fair disclosure of all material information.
PhonePe Pvt. Ltd. v. Resilient Innovations Pvt. Ltd. (2023 SCC OnLine Bom 764) — Established that statements made during trade mark registration can be relevant in later proceedings.
Om Prakash Gupta v. Praveen Kumar (Delhi High Court, 2025) — Held that disclaimers are material facts which must be disclosed when seeking injunctions.
Applying these precedents, Justice Doctor concluded that the plaintiff had taken an inconsistent and dishonest stand. Before the Trade Marks Registry, the plaintiff had expressly stated that it did not claim exclusivity over the words “DOCTOR” or “SOFT”, but in the present suit, it claimed infringement based on those very words. This contradiction was seen as an attempt to mislead the Court.
The Judge held that it was not for the plaintiff to decide what was “material” and what was not. The duty of candor required full transparency, especially when the plaintiff sought relief without notice to the other side.
Court also noted that the plaintiff’s act of filing a rejoinder later—claiming the omission was “inadvertent”—only made matters worse. Such an afterthought, the Court said, was “an affront to the Court” and amounted to putting a premium on dishonesty.
On Costs and Judicial Duty:The Court referred to Section 35 of the Code of Civil Procedure, as amended by Section 16 of the Commercial Courts Act, 2015, which authorizes courts to impose costs, including legal fees, based on the conduct of the parties.
Relying on Sai Trading Co. v. KRBL Ltd. and Dashrath B. Rathod v. Fox Star Studios India Pvt. Ltd., Justice Doctor emphasized that unscrupulous litigants who misuse the judicial process waste valuable court time and must face exemplary costs to deter such practices.
The Court quoted from Dnyandeo Sabaji Naik v. Pradnya Prakash Khadekar (2017) 5 SCC 496, where the Supreme Court directed that litigants abusing court procedures should be penalized heavily to prevent a culture of evasion and dishonesty in litigation.
Final Decision: After detailed analysis, Justice Arif S. Doctor held that the plaintiff had:
Deliberately suppressed material facts regarding the territorial limitation of its trademark.
Misled the Court by seeking ex parte relief on false premises.
Abused the process of law by not acting with clean hands.
Accordingly, the Court dismissed the entire suit and imposed exemplary costs of ₹25,00,000 each on Defendants 2 and 3, payable by the plaintiff. The Court Receiver was discharged, and all seized goods were ordered to be returned to the defendants. All interim applications and reports were disposed of.
Conclusion: This judgment serves as a strong reminder that intellectual property rights are not absolute, and equitable conduct is paramount. Even a registered proprietor cannot claim relief if it approaches the Court dishonestly or conceals material facts. The judgment reinforces that truth and transparency are the foundation of justice, and litigants who attempt to manipulate the system will face severe consequences.
Case Title: Chaitanya Arora Vs. Shoban Salim Thakur
Order Date: 15th October, 2025
Case Number: Interim Application (L) No. 18278 of 2025 in Commercial Suit (L) No. 18197 of 2025 with Leave Petition (L) No. 18257 of 2025
Neutral Citation: 2025:BHC-OS:19616
Court: High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction, Commercial Division)
Judge: Hon’ble Justice Arif S. Doctor
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
