**Head Note of the Case**
Bombay High Court (Commercial Division) vacated the *ex parte* ad-interim injunction granted on 23 September 2025 in favour of Asian Paints Limited, which had restrained Apex Metchem Private Limited from using the mark “APEX” (or any identical or deceptively similar mark) in relation to paints, thinners, lacquers and allied goods and had appointed a Court Receiver. Court held that the plaintiff suppressed material facts regarding the defendant’s long-standing prior use of the mark “APEX” as part of its trade name and business since 1966 (family business of the Bhatia group) and its incorporation as a private limited company in 1995. The plaintiff itself had annexed extracts of the defendant’s website to the plaint showing the 1995 incorporation and use, yet failed to bring this prior user/corporate existence to the notice of the Court while seeking *ex parte* relief. Applying the stringent duty of full and fair disclosure in *ex parte* applications under Order XXXIX Rule 4 CPC (as explained in *Kewal Ashokbhai Vasoya v. Suarabhakti Goods (P) Ltd.*, 2022 SCC OnLine Bom 3335), the Court held that the suppression vitiated the injunction. The seized goods were ordered to be released forthwith. A four-week stay was granted to enable the plaintiff to approach a higher forum. The order underscores that prior user is a complete defence to infringement and that suppression of such prior user defeats an *ex parte* injunction.
**Introduction**
This is a landmark order passed by Justice Sharmila U. Deshmukh of the Bombay High Court (Ordinary Original Civil Jurisdiction, Commercial Division) on 30 March 2026 in Interim Application No. 7417 of 2025 arising out of Commercial IP Suit (L) No. 28791 of 2025 (*Asian Paints Limited v. Apex Metchem Private Limited*). The application was filed by the defendant under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 seeking vacation of an *ex parte* ad-interim injunction and Court Receiver order obtained by Asian Paints Limited on 23 September 2025. The core issue was whether the plaintiff had made full and fair disclosure of all material facts while seeking *ex parte* relief in a trade mark infringement action. The judgment reaffirms the high standard of candour expected from a party seeking *ex parte* relief in intellectual property matters, particularly when the defendant’s prior user and corporate existence are evident from documents already on record. The Court ultimately vacated the injunction, released the seized goods, and granted a short stay, emphasising that suppression of prior user vitiates equitable relief.
**Factual Background**
Asian Paints Limited (plaintiff) is a well-known manufacturer of paints and allied products. It claims to have adopted and used the mark “APEX” since 1995 and holds several registrations, including device marks and word marks in various classes. It alleged that Apex Metchem Private Limited (defendant) was infringing its registered mark by using “APEX” as a trade mark and trade name for industrial paints, thinners, solvents, lacquers and similar goods.
The defendant is part of a large Bhatia family business conglomerate. Its patriarch started M/s Apex Sales Corporation in 1966 as a sole proprietorship dealing in paints and allied products. The business continued as a partnership and was later incorporated as Apex Metchem Private Limited on 2 March 1995. The defendant and its predecessors have used the mark “APEX” continuously since 1966 across cognate industrial segments. The defendant’s website (annexed by the plaintiff itself to the plaint) explicitly states that the company was started in 1995 for manufacturing industrial paints, solvents and thinners. The defendant claimed prior adoption and honest concurrent use, long predating the plaintiff’s commercial launch of “APEX Textured Exterior Emulsion” around 2003-2004.
On 23 September 2025, the plaintiff obtained an *ex parte* ad-interim injunction and appointment of Court Receiver. The Receiver executed the commission and seized infringing goods. The defendant then filed the present application under Order XXXIX Rule 4 CPC alleging material suppression.
**Procedural Background**
The plaintiff filed the suit and moved for *ex parte* ad-interim relief on 23 September 2025. The Court granted the injunction and appointed the Court Receiver without notice to the defendant. The Receiver’s report confirming seizure was placed on record. The defendant filed Interim Application No. 7417 of 2025 on or about October/November 2025 seeking vacation of the order under Order XXXIX Rule 4 CPC. The matter was heard on 16 February 2026 and reserved. The order was pronounced on 30 March 2026.
**Dispute in Question**
Whether the *ex parte* ad-interim injunction and Court Receiver order dated 23 September 2025 should be vacated under Order XXXIX Rule 4 CPC on the ground that the plaintiff knowingly suppressed material facts regarding the defendant’s prior adoption, continuous use and corporate existence of the mark “APEX” since 1966/1995, thereby disentitling the plaintiff from equitable relief.
**Arguments of Parties**
**Defendant-Applicant’s Arguments (Apex Metchem):**
- The plaintiff suppressed the defendant’s long prior use since 1966 and incorporation in 1995. The defendant’s website (annexed by the plaintiff at page 262 of the plaint) explicitly mentions the 1995 start and use of “APEX” for industrial paints.
- The plaintiff sought injunction not only against the trade mark but also against use of the mark as part of the corporate/trade name, making the defendant’s corporate history a material fact that ought to have been disclosed.
- Plaintiff’s own documents show user of “APEX” only from 1997/2007 onwards; earlier invoices are illegible or post-2015. The Chartered Accountant’s certificate is the only document claiming 1994-95 user, which is insufficient.
- Prior user is a complete defence to infringement. The plaintiff failed in its duty of full disclosure under Order 39 Rule 4 CPC.
- The defendant is a legitimate, established business with ₹80+ crore turnover, not a fly-by-night operator. The injunction has crippled its business.
- Reliance placed on *Kewal Ashokbhai Vasoya v. Suarabhakti Goods (P) Ltd.* (2022 SCC OnLine Bom 3335) and multiple other decisions on duty of disclosure and prior user defence.
**Plaintiff’s Arguments (Asian Paints):**
- Sufficient disclosure was made in paragraph 18 of the plaint. The plaintiff annexed the defendant’s website extract and third-party pages mentioning 1995 incorporation.
- The plaintiff did not press for injunction against the corporate name/domain name.
- The plaintiff never came across the infringing goods until August 2025 despite market inquiries.
- The plaintiff’s mark has been declared well-known by this Court (orders annexed). Sales and advertisement figures from 1995 onwards are on record.
- No suppression; the defendant’s prior user is not pleaded as a defence and is not established by any document showing devolution of rights from predecessors.
**Reasoning of the Judge (including different provisions of law and their context)**
Justice Sharmila U. Deshmukh first reproduced Order XXXIX Rule 4 CPC verbatim. The provision empowers the Court to discharge, vary or set aside an injunction if the applicant has knowingly made a false or misleading statement in relation to a material particular in the application or supporting affidavit. Even where such suppression exists, the Court retains discretion not to vacate the injunction if, for reasons recorded, it is not necessary in the interests of justice.
The Judge held that the plaintiff failed to discharge the heightened duty of full and fair disclosure required when seeking *ex parte* relief. Key reasoning:
- **Material fact suppressed**: The defendant’s website (annexed by the plaintiff) explicitly states incorporation in 1995 and use of “APEX” for industrial paints/thinners. This was a clear indicator of prior user and corporate existence. Yet the plaintiff made only a bald assertion that “despite conducting inquiries” it could not find information about the period of use. No details of inquiries were pleaded.
- **Greater duty in trade mark cases**: In IPR matters, the plaintiff must disclose the date of adoption/use/registration of the rival mark and market information about how long the defendant has been using the mark. The plaintiff’s own documents (invoices) showed user only from 2007/2015 onwards; the CA certificate was the sole document for 1995. The Court was not invited to scrutinise these documents against the defendant’s 1995 incorporation.
- **Consequence of suppression**: The *ex parte* order crippled a legitimate business with decades of use. Prior user is a complete defence to infringement. Had the Court been informed of the defendant’s long user evident from the plaintiff’s own annexures, notice might have been issued instead of granting *ex parte* relief.
- **No distinction between trade mark and trade name**: The plaintiff sought restraint against use of “APEX” both as trade mark and as part of the trade name. Corporate existence since 1995 was therefore material.
The Judge relied heavily on the Division Bench decision in *Kewal Ashokbhai Vasoya v. Suarabhakti Goods (P) Ltd.* (2022 SCC OnLine Bom 3335) for the proposition that an applicant seeking *ex parte* injunction must make full and reasonably accurate disclosure of material facts, including matters discoverable by reasonable inquiry. The Court also referred to several other judgments on prior user and suppression (listed in the defendant’s submissions).
**Judgements relied upon by the Judge and their context**
The Judge primarily relied upon and quoted extensively from:
- **Kewal Ashokbhai Vasoya v. Suarabhakti Goods (P) Ltd., 2022 SCC OnLine Bom 3335 (Division Bench)**: The leading authority on the duty of disclosure under Order 39 Rule 4 in trade mark cases. The DB held that the plaintiff must disclose rival adoption, use, registration, market presence and must draw the Court’s attention to all material facts that may show the defendant has a defence. Suppression of prior user vitiates *ex parte* relief.
Other judgments cited by the defendant and considered by the Court (contextual support for prior user defence and suppression):
- *Neon Laboratories Ltd. v. Medical Technologies Ltd.*, (2016) 2 SCC 672
- *S. Syed Mohideen v. P. Sulochana Bai*, (2016) 2 SCC 683
- *Century Traders v. Roshan Lal Duggar & Co.*, 1977 SCC OnLine Del 50
- Various Bombay and Delhi High Court orders on vacation of injunctions due to suppression.
**Final Decision**
The Interim Application was allowed. The *ex parte* ad-interim order dated 23 September 2025 was not continued and stands vacated. The defendant’s products seized and sealed by the Court Receiver were directed to be released forthwith. The order was stayed for four weeks at the plaintiff’s request.
**Concluding Note**
This order is a strong reaffirmation of the principles of equity and fair disclosure in *ex parte* intellectual property proceedings. The Bombay High Court has sent a clear message that a plaintiff seeking drastic relief without notice to the defendant must come with clean hands and full candour. Suppression of the defendant’s long prior user and corporate existence — facts already known to the plaintiff through documents it itself placed on record — was fatal to the injunction. The judgment protects legitimate prior users from being crippled by suppression-based *ex parte* orders and reinforces that prior use remains a complete defence to trade mark infringement claims.
**Legal Point Settled in this Case (with clear explanation of legal concepts)**
1. **Duty of Full and Fair Disclosure under Order XXXIX Rule 4 CPC in *ex parte* IP Applications**
A party seeking an *ex parte* injunction must make a full, accurate and complete disclosure of all material facts, including facts that may show the defendant has a defence (e.g., prior user). The duty includes matters that would have been discovered by reasonable inquiry. Suppression or misleading statement on a material particular mandates vacation of the injunction unless the Court, for recorded reasons, finds it unnecessary in the interests of justice.
2. **Prior User as Complete Defence to Infringement**
Long and continuous prior use of a mark/trade name by the defendant (even unregistered) is a valid defence to a suit for infringement of a registered mark. The plaintiff cannot obtain *ex parte* relief by suppressing such prior user.
3. **No Monopoly over Trade Name merely because it contains the Registered Mark**
When the plaintiff seeks restraint against use of a mark both as a trade mark and as part of the defendant’s corporate/trade name, the defendant’s long-standing corporate existence becomes a material fact that must be disclosed.
4. **Distinction between Registered Mark and Actual User**
Registration does not automatically prove user from the claimed date. The plaintiff must produce clear evidence of user; mere Chartered Accountant certificates or illegible invoices are insufficient when the defendant demonstrates earlier incorporation and use.
These principles provide clear guidance to litigants and courts that *ex parte* relief in trade mark matters is an extraordinary remedy that demands utmost transparency, failing which the injunction is liable to be vacated under Order XXXIX Rule 4 CPC.
Case Title: Asian Paints Limited Vs Apex Metchem Private Limited
Date of Order: 30 March 2026
Case Number: Commercial IP Suit (L) No. 28791 of 2025
Neutral Citation: 2026:BHC:OS:7627
Name of Court: High Court of Judicature at Bombay
Name of Hon’ble Judge: Hon’ble Ms. Justice Sharmila U. Deshmukh
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