- Case
- Laser Shaving India Private Limited v. RKRM International Products Private Limited (Bombay High Court, 06-04-2026)
- Law
- Trade Marks Act, Copyright Act, Code of Civil Procedure, Commercial Courts Act, Indian Evidence Act.
Facts: The Appellant, Laser Shaving India Pvt Ltd, filed a commercial suit for copyright infringement and passing off against the Respondents regarding the trademark 'SETMAX' and its artistic trade dress used for shaving blades. The Appellant claimed to be a prior user since September 2023. However, during the trademark registration process, the Trade Marks Registry cited a conflicting application by Galactic Conquistadors FZE (Galactic), filed one day prior to the Appellant’s application. In response to the Registry's Examination Report, the Appellant categorically stated that its mark was "visually and structurally different" from Galactic's mark to secure registration. Subsequently, the Appellant filed the present suit and obtained an ex-parte ad-interim injunction against the Respondents (licensees of Galactic) by claiming the marks were "deceptively similar", while suppressing the contradictory stand it took before the Registry. Upon discovery of this suppression, the learned Single Judge vacated the ad-interim relief and later dismissed the interim application for injunction.
Procedural Posture: The Appellant challenged the order of the learned Single Judge dated 25/06/2025, which dismissed the interim application for injunction, before the Division Bench of the Bombay High Court via a Commercial Appeal.
Issue: Whether a Plaintiff is entitled to discretionary interim relief when it has suppressed material facts and adopted a diametrically opposite stand regarding the similarity of marks in previous proceedings before the Trade Marks Registry?
Holding: No, the Appellant is not entitled to interim relief due to the suppression of material facts, 'unclean hands', and the application of the doctrine of 'prosecution history estoppel'.
Reasoning: The Court reasoned that a party seeking discretionary relief under Order XXXIX Rules 1 and 2 of the CPC must approach the Court with "clean hands". The Appellant failed to disclose its response to the Registry’s Examination Report and the Cease and Desist notice from Galactic, which were vital for adjudicating the claim of deceptive similarity. The Court applied the doctrine of "prosecution history estoppel", holding that a stand taken during trademark registration continues to "haunt" the litigant in subsequent infringement or passing off actions. Since the Appellant represented to the Registry that the marks were different to obtain a benefit, it cannot now "approbate and reprobate" by claiming they are similar for the purpose of an injunction. Furthermore, the Court noted that Galactic was a necessary party but was deliberately omitted to facilitate an ex-parte order. Following the principle in Wander Ltd. v. Antox India, the Appellate Court declined to interfere with the trial court's exercise of discretion as it was neither arbitrary nor perverse.
