Shoban Salim Thakur v. Chaitanya Arora

12. Additionally, Mr. Kamod pointed out that the Plaintiff had, before the Trade Marks Registry responded to the Counter Statement and Affidavit of Evidence filed by Defendant No. 1, and was thus undoubtedly aware that the Defendants were asserting user of the impugned trade mark since the year

2022. He submitted that the Plaintiff was also cognisant of the fact that the opposition proceedings and the evidence filed by the Defendant No. 1 therein were relevant for the consideration of this Court and therefore had referred to the same in the plaint without, however, producing the same. Mr. Kamod submitted that despite the substantial documentary evidence produced by Defendant No. 1 to show its use of the impugned trade mark since April 2022, the Plaintiff had in paragraph 30 of the Plaint knowingly falsely asserted that Defendant No. 1 had failed to establish any credible evidence or bona fide use of the impugned trade mark.

13. Mr. Kamod then pointed out that the Plaintiff had, in paragraph 4(m) of the Affidavit in Rejoinder, in fact admitted that the documentary evidence produced by Defendant No. 1 established the Defendants’ use of the impugned trade mark. He submitted that in view thereof, the averments made in the Plaint in paragraph 30 were ex facie false to the knowledge of the Plaintiff and had been made solely to mislead this Court. Mr. Kamod took pains to point out that the Plaintiff had offered no explanation/justification for not producing the evidence of Defendant No. 1, which was filed before the Trade Marks Registry.

SUPPRESSION OF THE CONTRARY STAND TAKEN BY THE Plaintiff IN THE

COURSE OF THE REGISTRATION IN CLASS 25.

14. Mr. Kamod then, in addition to the suppression as detailed in (I) and (II) above submitted that the Plaintiff was also guilty of suppressing the fact that at the stage of examination of the Plaintiff’s trade mark Application in Class 25, the Registrar of Trade Marks had issued a Preliminary Examination Report dated 27th April 2016, wherein the Registrar had cited earlier thirdparty conflicting marks, namely, “DOCTOR PLUS” and “DOCTOR SOFT” which contained “DOCTOR”, “PLUS” and “SOFT” as one of their leading and essential features and on this basis raised objections under Section 11 of the Trade Marks Act, 1999 to the registrability of the Plaintiff’s trade mark. Mr. Kamod pointed out that the Plaintiff, in the Reply to the Preliminary Examination Report, had specifically stated that both phonetically and in pronunciation, its trade mark was dissimilar to the cited trade marks i.e., “DOCTOR PLUS” and “DOCTOR SOFT”. Mr. Kamod submitted that it was on the basis of this specific stand that the Plaintiff was granted the registration in Class 25.

15. Mr. Kamod further pointed out that, given the above stand taken by the Plaintiff before the Trade Mark Registry the Plaintiff had admitted to the fact that the presence of the words “DOCTOR” and “SOFT” was not at all determinative of the similarity between the Plaintiff’s trade mark and the earlier cited marks. He submitted that the Plaintiff in the stand taken before Trade Marks Registry, had made it clear that the Plaintiff was not claiming any exclusive right in the words “DOCTOR” or “SOFT” but only in the specific composite label “DOCTOR EXTRA SOFT”. Mr. Kamod then pointed out that the Plaintiff had, in the present Suit, taken the diametrically opposite stand to the one taken before the Trade Mark Registry in the year 2018 without disclosing the previous stand in the present Suit.

16. Mr. Kamod submitted that the Plaintiff, having received registration in Class 25 on the basis of the stand taken before the Registrar of Trade Marks, could not now contend that the Plaintiff’s mark and the Defendants’ mark were similar because of the presence of the common words “DOCTOR” and “SOFT” in respect of which the Plaintiff had not claimed exclusivity. He submitted that the Plaintiff could not approbate and reprobate by now seeking to enforce exclusivity over the very same elements the Plaintiff had disclaimed before the Trade Marks Registry as being non-confusing and non-exclusive. He submitted that the Plaintiff was therefore estopped from asserting any monopolistic or exclusive rights over the generic and commonly used terms “DOCTOR” or “SOFT”. He submitted that it was in this context that the stand taken by the Plaintiff before the Registrar of Trade Marks was absolutely relevant for the purpose of the grant of any interim injunction, particularly the grant of an ex parte ad interim injunction.

17. Mr. Kamod pointed out that the most important factor which had in fact weighed with the Learned Judge while passing the ex parte ad interim Order was that the Learned Judge had prima facie found that the words “DOCTOR” and “SOFT” were the essential features of the Plaintiff’s mark which was diametrically opposite to the stand taken by the Plaintiff before the Trade Mark Registry. He submitted that had notice been given to the Defendants, the Defendants would have pointed out this contrary and inconsistent stand of the Plaintiff. In support of his contention that the stand taken by the Plaintiff before the Trade Mark Registry during the course of the Plaintiff’s Class 25 registration proceedings was a relevant factor he placed reliance upon the decision of this Court in the case of PhonePe Private Limited v. He submitted that whether or not the representation made by the Plaintiff to the Trade Marks Registry would amount to an estoppel or not was a secondary factor; however, it was the duty of the Plaintiff to have placed the same before the Court and more so when the Plaintiff was moving for ex parte ad interim relief.

18. Mr. Kamod additionally submitted that it was well settled that it was not for a litigant to decide what was to be disclosed and what not. He submitted that the Hon’ble Supreme Court had time and again held that a litigant is not entitled to pick and choose what facts are to be placed before the Court but is required to place all the material facts before the Court and then leave it for the Court to decide. In support of his contention, he placed reliance upon the decision of the Hon’ble Supreme Court in the case of Bhaskar Laxman Jadhav v. Karamweer Kakasaheb Wagh Education

He also placed reliance upon the decision of the Hon’ble Supreme Court in the case of Prestige Lights Ltd. v. State Bank of India 4 which inter alia held that where there is suppression of material facts, the Court may refuse to entertain such a case without entering into the merits.

19. Mr. Kamod then placed reliance upon the decision of the Division Bench of this Court in the Case of Kewal Ashokbhai Vasoya v. Surabhakti Goods Pvt Ltd.[5] to point out that since the Plaintiff had moved for ex parte ad interim relief, it was incumbent upon the Plaintiff to have, inter alia (i) fairly and evenly made all the necessary disclosures and statements on the basis of any anticipatory defences or arguments likely to be made by the opposite party,

(ii) placed all the material within the knowledge of the Plaintiff before the

Court (iii) presented the case neutrally and objectively and (iv) crucially, since the present Suit was a trade mark Suit, to have disclosed whether the Plaintiff’s registration was with or without any disclaimer.

20. Basis the above, Mr. Kamod submitted that the conduct of the Plaintiff in deliberately suppressing material facts and then moving for ex parte ad interim reliefs plainly amounted to playing a fraud upon this Court. He submitted that the Plaintiff had thus clearly polluted the pure stream of

4 (2007) 8 Supreme Court Cases 449 justice and was an unscrupulous litigant. He then placed reliance upon the decision of the Hon’ble Supreme Court in the case of Ramjas Foundation and Another v. Union of India and Others[6], from which he pointed out that the Hon’ble Supreme Court had, in the context of unscrupulous litigants, inter alia, held as follows:

21. Mr. Kamod then submitted that, given the facts of the present case, there could be no doubt that the Plaintiff had suppressed material facts from this Court, the Suit itself was required to be dismissed. He pointed out that both, this Court in the case of Nagina Ramsagar Choube & Ors. v. Ajay Mohan & Ors.[7] and the Delhi High Court in the case of Om Prakash Gupta had dismissed Suits at the interlocutory stage on finding that the Plaintiff in both cases had suppressed material facts from the Court. Alternatively, Mr. Kamod submitted that in the event the Court was not inclined to dismiss the Suit itself, then the Interim Application ought to be dismissed on the ground

7 Order dated 24th June 2025 in Interim Application No.2143 of 2025 in Suit No.130 of 2025 of suppression of material facts. In support of his contention, he placed reliance upon the decision of this Court in the case of Rochem Separation Systems (India) Ltd. v. Nirtech Private Limited & Ors.[8] from which he pointed out that this Court had dismissed the Interim Application on the ground that the Plaintiff had obtained an ex parte ad interim by withholding material information from the Court. He also placed reliance upon the decisions of this Court in the case of Laser Shaving (India) Private Ltd. v. RKRM and Atyati Technologies Private Limited v. Cognizant Technologies Solutions US Corporation & Anr.10 to point out that when there has been material suppression of facts, the Court, on that ground alone, vacated the ex parte ad interim Order without going into the merits of the matter.

22. Mr. Kamod then submitted that the present Suit, being a Commercial Suit, was governed by the provisions of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (“Commercial Courts Act”) Section 35 of the CPC, as amended by Section 16 of the Commercial Courts Act, would apply, entitling the Defendants to an order of costs. He pointed out that under the scheme of the Commercial Courts Act, this Court had the power to award costs at any stage of the proceedings. He pointed out from Section 35 of the amended CPC that the costs contemplated thereunder would include legal fees and all other

8 Order dated 30th March 2023 in Interim Application (l) No.29924 of 2022 in Commercial IP Suit (L) No.29923 of 2022. expenses incurred in connection with the proceedings. He pointed out that Section 35(3) of the amended CPC provides that while awarding costs, due regard was also required to be had to the conduct of the parties. Mr. Kamod then placed reliance upon the decisions of the Delhi High Court in Sai Trading Co. v. KRBL Limited 11 and of this Court in Dashrath B. Rathod v. Fox Star Studios India Pvt. Ltd.12 and pointed out that both these decisions reiterated the principle that litigants who approach the Court by suppressing material facts not only abuse the process of law but also waste the valuable time of the Court. He thus submitted that, given the conduct of the Plaintiff, not only were the Defendants entitled to an order of costs, but they were also entitled to an order of exemplary costs. He submitted that such an order was required to be passed to curb the menace of unscrupulous litigants abusing the process of this Court and of law.

23. Mr. Kamod in support of his contention that exemplary costs in this case must be awarded, highlighted that (i) the Plaintiff had made a calculated attempt to deceive and defraud this Court in passing the ex parte ad interim order dated 30th June 2025 (ii) the Defendants’ business had been crippled after the ex parte Order had been passed (iii) the Defendant Nos. 1 and 3 had placed on Affidavit along with a Chartered Accountant’s Certificate certifying the sales figures of the Defendant Nos.[1] and 3 were 3,65,16,676/- and 2,46,65,198/-, respectively, totalling up to ₹ ₹ 6,11,81,874/- (Rupees Six Crores Eleven Lakhs Eighty-One Thousand ₹

Eight Hundred and Seventy-Four only), (iv) in addition to monetary loss, the Defendants had also suffered embarrassment/irreparable injury to their goodwill and reputation in the market due to the abrupt halt in the Defendants’ business and the Impugned ex parte Order being brought to the knowledge of their distributors, dealers, partners and other persons connected with them in course of trade (v) the Plaintiff had deliberately derailed the hearing of the Defendants’ Order XXXIX Rule 4 Application by vexatiously agitating its Order XXXIX Rule 2A Application on frivolous grounds to be heard on first priority (vi) the Plaintiff had during oral submissions, admitted that the order of infringement could not have been passed against the Defendants for the entire country in view of the disclaimer on its registration (vii) that the Plaintiff had not, despite accepting that the Plaintiff was not entitled to an injunction for infringement beyond the State of Maharashtra never pointed this out to the Court and had the Order varied.

24. Mr. Kamod then pointed out that the Plaintiff had, in paragraph 61 of the Interim Application given an undertaking in terms of Rule 126(IX)A13 of the Bombay High Court Rules by which the Plaintiff had thus specifically undertaken to pay, by way of damages or costs, as the Court may award on account of the prejudice caused by the ex parte ad interim Order. 13 126 IX-A. Signed undertaking required – Every Interim Application shall, in addition to the above, contain, in the body of the Interim Application, a signed statement of the party making such Application undertaking to pay such sum by way of damages or costs as the Court may award as compensation in the event of a party affected sustaining prejudice by any order that might be made on such Interim Application. The Court may, in its discretion, while making the order on the Interim Application dispense with undertaking.

25. Mr. Kamod pointed out that in addition to the costs as contemplated under the Commercial Courts Act, this Court also had the inherent power under Section 151 of CPC to grant exemplary costs against the Plaintiff in order to curb the menace of parties attempting to play a fraud upon the Court and filing false affidavits/pleadings. He then placed reliance upon the decision of the Hon’ble Supreme Court in Dnyandeo Sabaji Naik v. Mrs. Pradnya Prakash Khadekar and Ors.14 which had been followed by this Court in Dashrath B. Rathod, from which he pointed out that in matters of fraud and gross suppression such as the present case, this Court ought to exercise its power under Section 151 to impose exemplary costs against the erring party.

26. Basis above, Mr. Kamod submitted that given that the Plaintiff had wilfully suppressed material facts from this Court as detailed in (I), (II) and (III) above and had on that basis obtained an ex parte ad interim order by playing a fraud on this Court, the Suit was required to be dismissed with exemplary costs. Submissions of Mr. Dwarkadas on behalf of the Plaintiff

27. Per contra, Mr. Dwarkadas, Learned Senior Counsel appearing on behalf of the Plaintiff, at the outset, submitted that the Plaintiff had at all times acted with full transparency and had neither wilfully nor deliberately concealed 14 2017 MhLJ OnLine (S.C.) 4 any material fact from this Court.

28. Conversely, Mr. Dwarkadas submitted that it was, in fact, the Defendants who were in clear violation of Sections 28 and 29 of the Trade Marks Act, 1999 (“TMA”), since the Defendants had infringed the Plaintiff’s statutory rights. He pointed out that Section 28 of the TMA conferred upon the registered proprietor of a trade mark the exclusive right to use the mark in relation to the goods or services for which it is registered and correspondingly entitled such registered proprietor to seek relief in the event such right was infringed. He submitted that the Plaintiff, having been granted registration in Class 25, was therefore exclusively entitled to use the said trade mark. He submitted that despite this statutory protection, the Defendants had sold products bearing the impugned trade mark within Mumbai and elsewhere in Maharashtra and were therefore guilty of infringement of the Plaintiff’s registered trade mark under Section 29 of the TMA. He submitted that it was well settled that a party who was guilty of a breach of statute could not seek any equitable relief from this Court.

29. Mr. Dwarkadas then submitted that the disclaimer/limitation was wholly irrelevant since the Plaintiff had filed the present Suit within the territorial jurisdiction of this Court within which the infringement had admittedly taken place. At this stage, I enquired of Mr. Dwarkadas as to where this admission of infringement by the Defendants was to be found. Mr. Dwarkadas clarified that there was no such admission in the pleadings.

30. Mr. Dwarkadas then pointed out that the Defendants had not denied knowledge of the Plaintiff’s registered trade mark and had, in the present Interim Application, proceeded entirely on the basis of a demurrer. Mr. Dwarkadas then drew my attention to the ex parte order and pointed out that the same had conclusively found the Defendants guilty of infringement and that the Defendants had not preferred any appeal against the ex parte order. He submitted that this clearly demonstrated acquiescence on the part of the Defendants and reinforced the validity of the Plaintiff’s claim.

31. Mr. Dwarkadas then, without prejudice to the aforesaid, submitted that the suppression alleged was neither wilful nor deliberate. He pointed out that Plaintiff had in the Affidavit in Rejoinder specifically stated that the Plaintiff had inadvertently missed specifically mentioning the disclaimer in the Plaint. He submitted that it was well settled that inadvertent errors do not amount to suppression of material facts sufficient to warrant vacation of an ex parte order. In support of his contention, he placed reliance upon the decision of this Court in the case of K.L.F. Nirmal Industries Pvt. Ltd. v. and pointed out that this Court had in the said case categorically held that an incorrect or inadvertent statement, which was not knowingly or wilfully made, cannot constitute a ground for vacating an injunction under Order XXXIX Rule 4. He submitted that the said ratio would squarely apply to the facts of the present case, as the suppression alleged on the part of the Plaintiff was neither wilful nor deliberate.

32. Mr. Dwarkadas then submitted that the Plaintiff had in the Plaint fully disclosed all relevant facts, registrations, oppositions, rectifications, and ancillary proceedings relating to its registration in Class 25, including (i) details in respect of all registered marks in Class 25 that could be relevant to the present proceedings, (ii) all the oppositions filed by or against the Plaintiff in respect of Class 25 trade marks applications along with annexures, and (iii) rectifications, corrections, or disclaimers in respect of Class 25 marks were accurately described. He thus submitted that the omission to mention the said disclaimer/limitation in the Plaint was purely inadvertent, and thus the judgements in the case of Ramjas Foundation, Bhaskar Laxman Jadhav, Kewal Ashokbhai Vasoya, Laser Shaving (India) Private Ltd., Om Prakash Gupta, Atyati Technologies Private Limited, Rochem Separation Systems (India) Ltd. and Nagina Ramsagar Choube & Ors. upon which reliance was placed by the Defendants would not apply. Mr. Dwarkadas submitted that, in any event, the said omission had been immediately clarified by the Plaintiff and hence the same could not be said to have been wilful or deliberate. I asked Mr. Dwarkadas when this immediate clarification was issued and where it was to be found. Mr. Dwarkadas pointed out that the same was to be found in the Affidavit in Rejoinder dated 13th August 2025.

33. Mr. Dwarkadas then submitted that even if this Court found that there was suppression on the part of the Plaintiff, the Court had the discretion to continue the ex parte order if the interest of justice so demanded, as specifically held in the case of Kewal Ashokbhai Vasoya. He pointed out that in the present case the interest of justice would require the injunction to continue since (i) the Plaintiff is the registered proprietor of the mark “DOCTOR EXTRA SOFT” in Class 25, albeit with exclusive rights in the State of Maharashtra (ii) by virtue of Section 28 of the Trade Marks 1999, the Plaintiff has the exclusive right to use the registered mark and to seek relief against infringement (iii) the registration operates not only in favour of the proprietor but also in the public interest; (iv) vacating the ad interim order would cause grave prejudice to the Plaintiff and would also result in deception and confusion amongst unsuspecting consumers, and (v) setting aside the injunction would, in effect, nullify the statutory exclusivity conferred upon the Plaintiff as registered proprietor and would give a licence to the Defendants to continue infringement even within Maharashtra.

34. Mr. Dwarkadas then also placed reliance upon the decision of this Court in the case of Asma Farid Noorani v. Haji Ali Fresh Fruit Juices16 and pointed out that this Court had in the said case not vacated the ex parte ad interim order in the interest of justice even though there had been some suppression on the part of the Plaintiff. He then, without prejudice to his submission that the ex parte ad interim order ought not to be set aside, submitted that this

Court always had the power to mould the reliefs and thus could vary the ex parte ad interim order so as to make it applicable to the State of Maharashtra if the Court felt that the suppression of the limitation/disclaimer was a material factor. He submitted that this would safeguard the Plaintiff’s statutory rights and also be equitable.

35. Mr. Dwarkadas then placed reliance upon the decision of this Court in the case of K.L.F. Nirmal Industries Pvt. Ltd. and pointed out that this Court had emphasised that the purpose of granting a temporary injunction in a suit for infringement of trade mark was not confined to safeguarding the rights of a Plaintiff alone but extended equally to protecting the interest of the general public. He pointed out from the said judgement that the Court held that denial of a temporary injunction merely because the Plaintiff had made an incorrect statement in the plaint would not be in the interest of justice. Mr. Dwarkadas then also pointed out that the Plaintiff was also the registered proprietor in Class 35, which registration did not have any territorial disclaimer. He thus submitted that the injunction cannot and ought not to be vacated since the Plaintiff would also be entitled to assert its right under

36. Mr Dwarkadas, then, in dealing with the contention that the Plaintiff was aware that the Defendants were using the impugned mark since 2022 and had suppressed this fact from the Plaint, submitted that such contention was plainly false. In support of his contention, he invited my attention to paragraph 28 of the Interim Application and paragraph 30 of the Plaint to point out that the Plaintiff had specifically adverted to the Defendants’ filings before the Trade Mark Registry. He thus submitted that there was no suppression of these facts.

37. Mr. Dwarkadas, then, pointed out that the Defendant Nos. 1 and 2 had filed the following three trade mark applications: Sr No. Applicatio n No. Cla ss Mark Filing Date Claimed User Date Status

1. 4988169 25 29.05.[2] Proposed to be used Pending

2. 5288145 25 17.01.[2] used Published on 11.03.2024; Opposed by Plaintiff on 07.05.2024 which is pending

3. 6653161 35 03.10.[2] used Pending From the above, Mr. Dwarkadas pointed out that though the Defendant No.1 had filed the application for registration of in Class 25 on a proposed to be used basis on 17th January 2022, it was only on 24th December 2024 that Defendant No. 1 filed the Affidavit of Evidence claiming alleged user of the trade mark since April 2022. He then submitted that the evidence produced by the Defendants to support user of the trade mark was entirely lacking in credibility since

(i) the GST certificates produced by the Defendants had an address different from the address mentioned in the original Trade Mark Application NO. 5288145, as also in the invoices produced to prove user (ii) the journal copy cited by the Defendants did not show the actual sale, distribution or branding of goods under the trade mark “Doctor Health Super Soft” since 2022 (iii) only 17 purchase orders bore the trade mark “Doctor Health Super Soft”; (iv) the balance purchase orders related to other marks and were thus wholly irrelevant; (v) the entries were non-certified, computergenerated Excel sheets that could be easily manipulated; (v) no complete information about CGST/SGST for Delhi and IGST for interstate sales was furnished; (vi) no evidence of actual transactions of use was furnished; and (vii) that only Flipkart portal listings do not constitute user.

38. He then pointed out that in the Affidavit in Reply Defendant Nos. 1 and 2 had falsely asserted that the trade mark was in use since April 2022, even when the documents appended to the Affidavit of Evidence and the Counter Statement filed by the Defendants in the opposition proceedings before the Registry pertained only to the trade mark. Mr. Dwarkadas then pointed out that it was the label, which was actually affixed and used on the Defendant’s goods, giving rise to the filing of the present Suit and not the mark. He submitted that by claiming that evidence pertaining to substantiated use of since 2022, the Defendants have deliberately misrepresented material facts and suppressed the true chronology and nature of commercial use.

39. Mr. Dwarkadas then submitted that although both marks contained the words “Doctor Health Super Soft”, they differed in creative expression, visual presentation, and overall commercial impression. He submitted that the mark cannot legally or factually be treated as proof of prior use of, which is the mark actually affixed to and used on goods in the market. He submitted that attempting to equate the two marks distorted the record, undermined the opposition proceedings, and amounted to misleading the Court.

40. He submitted that it was because the evidence produced by Defendant No. 1 was lacking in credibility that the Plaintiff had, both in the Interim Application (paragraph 28) and in the Plaint (paragraph 30), highlighted the Defendants failure to establish credible use since 2022. He thus submitted that there had been no suppression or concealment in this regard and that the Plaintiff had acted with full transparency before this Court. He reiterated that by equating evidence with use, it was the Defendants who had misled this Court and attempted to distort the factual record.

41. He then also pointed out that the application filed by the Defendants was on a “proposed to be used” basis, which itself made evident that there was no prior commercial adoption. It was for this reason that he submitted that the evidence produced by the Defendants would never have met the standard for bona fide use. Mr. Dwarkadas pointed out that the Plaintiff had made a full and transparent disclosure of these facts and that there had been no suppression, concealment, or misrepresentation of material facts before this Court.

42. He then submitted that the Plaintiff had discovered the infringing goods in the market only in March 2025, and thus the cause of action to file the present suit arose only then and was distinct from any prior registration proceedings. He submitted that it was well settled that trade mark infringement and passing off were recurring violations, and each sale of the infringing goods constituted a separate wrongful act. He submitted that therefore, far from acquiescing, the Plaintiff had actively protected its rights by filing oppositions against conflicting applications and had in fact obtained an interim injunction in the year 2024.

43. Mr. Dwarkadas then dealing with the third contention, namely failure to disclose the prior stand taken by the Plaintiff during the course of the Plaintiff Class-25 registration, submitted that this stand was wholly unrelated to the present suit. He submitted that the question of the Plaintiff having to make reference to the said stand did not arise since that was in the context of proceedings to which the Defendants were admittedly not a party. He, therefore, submitted that the question of prosecution history estoppel applying therefore did not arise in the present case. He submitted that even in the judgement relied upon by the Defendants namely PhonePe Private Limited, the question of prosecution history estoppel arose since it was between the same parties. He submitted that this was not so in the present case, and hence, there was no question of the Plaintiff having to disclose the stand taken during its registration in Class 25 proceedings when the Plaintiff applied for ex parte ad interim relief.

44. He then reiterated that the Plaintiff was the registered proprietor of the device mark DOCTOR EXTRA SOFT, and, by virtue of Section 28 of the Trade Marks Act, 1999, the Plaintiff had a statutory right to the exclusive right to use of the trade mark and to seek relief for its infringement. Mr. Dwarkadas submitted that it was well settled that there can be no estoppel against statute, and ultimately, the question of deceptive similarity lies within the exclusive domain of this Court. It was in this context that he submitted that isolated submissions made in unrelated proceedings cannot divest the Plaintiff of its rights granted under statute and that the invocation of the doctrine of estoppel in the present case was thus wholly misconceived.

45. He pointed out that for the doctrine of estoppel under Section 115 of the Evidence Act to apply, the Defendants must necessarily show (i) a representation by the Plaintiff, (ii) reliance by the Defendants upon the representation made, and (iii) that the Defendants had altered its position or had occasioned prejudice by such representation. Mr. Dwarkadas reiterated that the Defendants were not a party to the Plaintiff's registration in Class 25 proceedings and additionally had not shown what reliance the Defendants had placed upon the representation made by the Plaintiff in those proceedings or what prejudice had been caused to the Defendants on account of such representation. He submitted that due to the absence of these three mandatory requirements, the question of there being any estoppel did not arise.

46. Mr. Dwarkadas then submitted that even the doctrine of approbation and reprobation, which was only a species of estoppel, was also similarly confined to the parties inter se who had acted and/or altered their position to their detriment. He submitted that it was not open for a third party to allege approbation and/or reprobation on the part of the Plaintiff, let alone to whittle down statutory rights flowing from registration under the Trade Marks Act.

47. Mr. Dwarkadas then submitted that it was well settled that while a litigant may take different stands at different times, a party cannot take contradictory positions in the course of the same proceeding. He submitted that a party cannot therefore be permitted to approbate and reprobate and adopt inconsistent shifting stands in the course of the same proceeding. In support of his contention, he placed reliance upon the decision of the Hon’ble Supreme Court in the case of Suzuki Parasrampuria Suitings (P) Ltd. v. Official Liquidator17, from which he pointed out that the Hon’ble Supreme Court had laid down that the doctrine of approbation and reprobation applied to contradictions made in the course of the same proceeding.

48. Mr. Dwarkadas reiterated that in the present case, the Plaintiff had not taken any inconsistent stand, and thus the Defendants’ reliance on submissions made in unrelated proceedings could never constitute prosecution history and were thus misplaced and legally untenable. He also pointed out that the Plaintiff’s prior submissions regarding unrelated thirdparty marks were context-specific and procedural and cannot legally or factually operate as estoppel against the Defendants in the present case.

49. Mr. Dwarkadas pointed out that Defendants’ mark was distinct in visual, phonetic, and commercial impression from those conflicting third-party marks. He thus submitted that the Plaintiff had therefore not taken any contradictory stand in relation to the Defendants’ Marks. He submitted that the Defendants’ contention of approbation and reprobation was unsustainable, and the Plaintiff’s action was bona fide and aimed solely at protecting the Plaintiff’s trade mark and preventing consumer confusion.

50. Mr. Dwarkadas then finally submitted that this Court was also, when considering an application under the Order XXXIX Rule 4 of the CPC, required to take into consideration the conduct of the Defendants. He then pointed out from the Court Receiver’s Report that the Defendants had engaged in deliberate and wilful obstruction of the Court’s process by obstructing the Court Receiver in the discharge of his duties in executing the ex parte ad interim order. He submitted that such conduct on the part of the Defendants clearly amounted to interference in the administration of justice and infact constituted criminal contempt. In support of his contention, he placed reliance on the decision of this Court in the case of Kilachand Devchand & Co. Ltd. v. Ajudhia Prasad Sukhanand & Co.18 Mr. Dwarkadas also placed reliance upon the decision of the Hon’ble Supreme Court in the case of Gujarat Bottling Co. Ltd. v. Coca Cola Co.,19 from which he pointed out that the Hon’ble Supreme Court had held that a party invoking or

19 (1995) 5 Supreme Court Cases 545 resisting an injunction must show that its conduct is fair, honest and free from blame. He submitted that in the present case, given the conduct of the Defendants in obstructing the Court Receiver, the Defendants had neither acted in a manner that was fair, honest or free from blame. He thus submitted that the ex parte ad interim order ought not to be vacated. Submissions in Rejoinder

51. Mr. Kamod submitted that the Plaintiff’s contention that the Defendants had infringed the Plaintiff’s statutory rights under Sections 28 and 29 of the Trade Marks Act, 1999, and were therefore disentitled to relief under the provisions of Order XXXIX Rule 4 of the CPC, was entirely untenable and, in fact, absurd. He submitted that the question of whether any infringement had occurred was yet to be adjudicated upon, and though it was orally argued that the Defendants had admittedly infringed the Plaintiff’s trade mark, there was, in fact, no such admission. He submitted that if the Plaintiff’s interpretation of Sections 28 and 29 of the TMA was to be accepted, then in every suit for infringement, the Defendants would automatically be deemed guilty of infringement merely because a registered proprietor had filed a suit for infringement. He submitted that this would not only open a Pandora’s box, allowing parties like the present Plaintiff to make knowingly false statements and on that basis obtain ex parte relief, but would also effectively render the provisions of Order XXXIX Rule 4 of the CPC otiose. It was thus that he submitted that the Plaintiff’s interpretation of Sections 28 and 29 of the TMA is entirely untenable.

52. Mr. Kamod then, in dealing with the submission that this Court, in the facts of the present case, ought to mould the ex parte ad interim order by restricting its operation to the State of Maharashtra, submitted that such a contention was also misconceived and untenable. He submitted that the Plaintiff had miserably failed to offer any credible or tenable explanation for its suppression of any of the suppressed facts as set out in (I) to (III) above. He submitted that the Defendants had adequately established that the suppression by the Plaintiff was not only wilful and deliberate but also calculated, and hence the Plaintiff was disentitled to any equitable relief from this Court. He then submitted that there was no question of moulding the reliefs in favour of a party who had played a fraud on this Court. He additionally submitted that the Plaintiff, in the Affidavit in Rejoinder, failed to furnish any particulars explaining how or why the alleged inadvertent error occurred. He submitted that had there been the slightest bona fides on the part of the Plaintiff, then the Plaintiff ought to have brought the disclaimer/limitation to the attention of the Court and moved to have the ex parte order modified if not set aside. He pointed out that the Plaintiff did neither and, when caught out, simply pleaded inadvertence without so much as even attempting an explanation, let alone giving a cogent explanation for the same.

53. He then, in dealing with the judgements in the case of K.L.F. Nirmal Industries Pvt. Ltd. and Asma Farid Noorani submitted that there was no quarrel with what had been held by the Court in both cases but submitted that neither would apply to the facts of the present case since in the present case the suppression of material facts was wilful and deliberate unlike in both the cases relied upon. He then pointed out that in the case of K.L.F. Nirmal Industries Pvt. Ltd., the Plaintiff had produced documentary evidence demonstrating that its interactions with the Defendant were limited in nature and were governed by a specific confidentiality arrangement. Moreover, the employee alleged to have knowledge of the Defendant’s activities had already left the Plaintiff’s employment by the time the suit in that case was filed and it was in those circumstances that the Court held that the Plaintiff’s non-disclosure of its past dealings was inadvertent and not deliberate. Similarly, from the judgement in the case of Asma Farid Noorani, he pointed out that although the Defendant had alleged suppression on the ground that the Plaintiff had failed to disclose a prior suit, the Court observed that the earlier action had been instituted against a party under a different name, and hence Plaintiff could not have known that the Defendant in the earlier suit and the subject suit were the same and hence it was held that there was no deliberate non disclosure on the part of the Plaintiff after also noting that the Plaintiff was pursuing independent actions against distinct infringers using identical marks. Mr. Kamod then pointed out that both K.L.F. Nirmal Industries and Asma Farid Noorani had been considered and distinguished in later decisions of this Court in the case of Atyati Technologies Private Limited and Laser Shaving (India) Private Limited, where the Court had vacated ex parte ad interim injunctions solely on the ground of suppression of material facts.

54. In response to the Plaintiff’s contention that the stand taken before the Trade Marks Registry in 2018 was wholly unrelated to the present proceedings, Mr. Kamod submitted that the Plaintiff had completely misconstrued the Defendants’ contention on this aspect. He submitted that whether or not the prior stand of the Plaintiff would constitute estoppel was not the issue and would ultimately be decided in the course of trial. He however, submitted that the stand taken by the Plaintiff in the course of obtaining registration in Class 25 was a relevant fact which was required to have been disclosed as held by this Court in the case of PhonePe Private Limited more so when the Plaintiff was moving ex parte. Mr. Kamod took pains to point out that the Plaintiff had sought to distinguish the decision in the case of PhonePe Private Limited by submitting that in the case of PhonePe the parties to the Suit and before the Trade Mark Registry were the same. However in the present case, the Defendants were not a party before the Trade Mark Registry during the course of the Plaintiff’s Class 25 registration proceedings and hence the question of prosecution history applying did not arise. Mr. Kamod then pointed out that this distinction was factually incorrect since in the case of PhonePe Private Limited the concerned trade marks also belonged to third parties who were not parties to the Suit, as was clear from paragraph 27 of the said decision.

55. Mr. Kamod thus submitted that the Plaintiff by suppressing the stand taken before the Trade Mark Registry in obtaining its registration in Class 25 had effectively misled this Court into granting the ex parte order since what had weighed with the Learned Judge while granting such relief was that the words “DOCTOR” and “SOFT” were essential and distinctive features of the Plaintiff’s mark, which was diametrically opposite to the stand taken by the Plaintiff in the course of obtaining its registration in Class 25.

56. Mr. Kamod submitted that the contention of the Plaintiff that the Defendants had for the first time in the Affidavit of Evidence dated 24th December 2024 asserted its user of the impugned trade mark since April 2022 was false on the face of the record. He pointed out that a bare perusal of the Counter Statement filed by Defendant No. 1 on 19th July 2024 clearly showed that Defendant No. 1 had asserted the use of the impugned trade mark since April 2022.

57. Mr. Kamod then, in dealing with the contention that the evidence produced by Defendant No. 1 before the Trade Mark Registry failed to show user of the impugned trade mark by the Defendants since the year 2022, submitted that inherent in such contention of the Plaintiff was an admission of the fact that Defendant No. 1 had in fact produced documents on record to show use of the trade mark DOCTOR HEALTH SUPER SOFT by the Defendants since April 2022. He submitted that the Plaintiff was attempting to trivialise the evidence of user produced by the Defendant No. 1 by stating that there were only 17 orders shown in the purchase order, thus accepting that such orders infact did exist, and the Plaintiff was aware of the same. Mr. Kamod submitted that even one instance of use was enough to show that the Defendants were using the impugned trade mark since April 2022, and hence the assertion that the Plaintiff became aware only in March 2025 was a patently false statement.

58. He further reiterated that what was relevant when moving for ex parte ad interim reliefs was the fact that this evidence ought to have been both annexed and pointed out to the Court at the time when the Plaintiff applied for the ex parte ad interim order, which was admittedly not done. He submitted that the evidentiary value of the Defendant’s evidence was something that would be adjudicated and would be adjudicated upon in the proceedings before the Trade Mark Registry.

59. Mr. Kamod submitted that the contention of the Plaintiff that Flipkart portal listings do not constitute use was not only unsubstantiated but plainly dishonest since the Interim Application (L) No. 26177 of 2025 filed by the Plaintiff under the provisions of Order XXXIX Rule 2A of the CPC specifically relied upon the Flipkart portal listings of the Defendants to allege that the Defendants continue to use the impugned trade mark after the impugned ex parte Order.

60. Mr. Kamod then, in dealing with the contention that the Plaintiff had before the Trade Mark Registry produced evidence of user in respect of and not pointed out that a bare perusal of the Plaint and Interim Application, especially the prayers, showed that the grievance of the Plaintiff against the Defendants pertained to the use of the trade mark DOCTOR HEALTH SUPER SOFT by the Defendants. He pointed out that even prayer clause (a) of the Interim Application, in terms of which the ex parte ad interim injunction had been granted, was in respect of the mark DOCTOR HEALTH SUPER SOFT. He submitted that there could be no quarrel with the fact that the leading and essential feature of both and was the trade mark DOCTOR HEALTH SUPER SOFT. He thus submitted that the Plaintiff was only attempting to create an artificial distinction between the Defendants’ label marks only to suit its case. He submitted that the evidence produced by the Defendants to show use of either of the two label marks established use of the trade mark DOCTOR HEALTH SUPER SOFT by the Defendants. Mr. Kamod then, as and by way of illustration, submitted that if an injunction was granted against the use of the trade mark “McDonald”, the fact that the Defendant against whom such injunction has been granted uses a yellow or red or any other colour label to display the trade mark “McDonald” would make no difference, and the injunction will operate against the use of any label which comprises the trade mark “McDonald’ word per se. He thus submitted that the attempt of the Plaintiff to distinguish between the Defendants’ use of the and labels was plainly absurd and really a red herring.

61. Mr. Kamod also submitted that it was relevant to note that the trade mark application filed by the Defendants for on a proposed to be used basis under No. 6653161 was in Class 35, which is a separate and distinct Class as compared to Class 25, in which Class Defendant No. 1 had filed its trade mark application under No. 5288145 for, along with evidence to show user since April of the year 2022.

62. Mr. Kamod then, in dealing with the contention that the Defendants were not entitled to any reliefs in view of the conduct of the Defendants submitted that these contentions were not only meritless but also plainly outside the scope of the present application under Order XXXIX Rule 4 of CPC. He thus submitted that the same was not being dealt with in this application.

63. Mr. Kamod reiterated that in the facts of the present case, this Court should dismiss the Suit itself however, if the Court was not so inclined, then the Interim Application ought to be dismissed on the ground of material suppression alone without going into the merits of the case. Reasons and Conclusion

64. After having heard Learned Counsel for the parties and having considered the material and case law relied upon, my findings are as follows:

20 Paragraph 15(d) of Kewal Vasoya were prior to the filing of the Suit. This material, which the Plaintiff was admittedly aware of, directly contradicts the Plaintiff’s assertion that the Plaintiff first became aware of the Defendant’s use of the impugned mark only in March 2025. In these circumstances, it is impossible to accept that the Counter Statement and Affidavit of Evidence filed before the Trade Marks Registry were not material facts requiring disclosure in the Plaint. iv. Prior Stand: It is not in dispute that the Plaintiff, during the course of obtaining registration in Class 25, had specifically taken the stand that the Plaintiff was not claiming any exclusive right in the words “DOCTOR” or “SOFT”, and on the basis of which, the Plaintiff had secured registration under Class 25. As held by this Court in PhonePe Pvt. Ltd., the stand taken by a Plaintiff before the Registrar of Trade Marks during prosecution of its own trade mark application is a relevant factor. The Plaintiff’s contention that the decision in PhonePe Pvt. Ltd. is inapplicable on the ground that the Plaintiff had not made any representation to the Defendants and that any representation made by the Plaintiff to a third party in the course of the registration proceeding would be wholly inapplicable and accordingly irrelevant to the present case. This contention has, however, been answered by this Court in the case of PhonePe Pvt. Ltd. in which this Court has noted that “The Plaintiff is not justified in contending that once it has obtained registration for its trade mark, the stand taken on its behalf in the proceeding leading upto grant of such registration cannot haunt the Plaintiff in subsequent legal proceedings.”21 Thus, clearly, the stand taken by the Plaintiff in the course of obtaining its Class 25 registration was a relevant material fact which was required to have been disclosed by the Plaintiff more so since the Plaintiff was moving for ex parte ad interim relief. Hence, the decision of the Hon’ble Supreme Court in the case of Suzuki Parasrampuria Suitings (P) Ltd., upon which reliance was placed by the Plaintiff, would not apply since the question which presently falls for consideration is not whether the Plaintiff would be bound by such a stand qua the Defendant, but whether the stand taken by the Plaintiff was a relevant factor which the Plaintiff was required to disclose.

21 Paragraph 28 of PhonePe Pvt. Ltd suggest this would, in my view, is an affront to the Court and to condone such “inadvertence” would amount to putting a premium on dishonesty since it would embolden other dishonest litigants to obtain ex parte orders by suppressing material facts and then simply plead “inadvertence”. Also, it is not in dispute that the Plaintiff has only one registration in Class 25 and not multiple registrations. Had the Plaintiff had multiple registrations in the same Class, and had the Plaintiff omitted to produce the status in respect of only one, such contention might have been plausible, however, not so when the Plaintiff admittedly has only one registration and has kept back three material facts in respect of that one registration. Thus, I have no hesitation in holding that the Plaintiff has deliberately suppressed material facts from this Court.

Plaintiff seeking to move ex parte is under a strict obligation to act with the utmost good faith and to make a full, fair, and frank disclosure of all material facts, including those that may be adverse to its own case. In the present matter, given that the Suit is a Commercial IP Suit, and that the Plaintiff was moving for ex parte ad interim relief, it was incumbent upon the Plaintiff to have disclosed whether the Plaintiff’s registration in Class 25 was subject to any disclaimer. Crucially, the Plaintiff has at no point denied knowledge of the said limitation/disclaimer or that the same applied only to the State of Maharashtra but has simply stated that the non-disclosure of the same was ‘inadvertent’. Thus there is no explanation even offered by the Plaintiff as to why, despite being fully aware of the fact that the Plaintiff’s Class 25 registration would apply only to the State of Maharashtra, this was not even pleaded. The Plaintiff has not only failed to make such disclosure but has relied upon a registration certificate that was not intended for use in legal proceedings without annexing the status page of the Plaintiff's registration in Class 25, which would have all the relevant details pertaining to the said registration. It was on the strength of this defective and incomplete disclosure that the Plaintiff applied for an ex parte ad interim injunction, which admittedly operated beyond the State of Maharashtra, a relief that, as conceded by the Plaintiff during oral submissions, the Plaintiff would never have been entitled to on the strength of the Plaintiff's registration in

(iii) the Plaintiff then after the suppression of the disclaimer was pointed out alleged contempt on the part of the Defendants and filed an application under the provisions of Order XXXIX Rule 2A of the CPC on 18th August 2025 (iv) in the contempt proceedings, the Plaintiff filed multiple affidavits (on 2nd, 12th, and 24th September 2025) alleging aggravated contempt on the part of the Defendants clearly only to delay the matter. This conduct clearly shows that even after the limitation/disclaimer was brought on record by the Defendants, the Plaintiff did everything possible to ensure that the ex parte ad interim order continued. Crucially, during the oral arguments, the Plaintiff contended that the limitation/disclaimer was “wholly immaterial” since the Suit was filed with the State of Maharashtra, initially overlooking but then conceding to the fact that the injunction operated pan India and was not confined in its operation to only the State of Maharashtra. Hence, the Plaintiff not only obtained the ex parte ad interim injunction by playing a fraud upon this Court but has also, thereafter, when the same was brought on record, brazenly sought to ensure that the same continued.

I. Ninth, the Hon’ble Supreme Court, in the case of Ramjas Foundation v.

Union of India, has held that every Court is not only entitled but is duty bound to protect itself from unscrupulous litigants who do not have any respect for truth and who try to pollute the stream of justice by resorting to falsehood or by making misstatements or by suppressing facts which have a bearing on the adjudication of the issues arising in the case. The Hon’ble Supreme Court has also, in the case of Prestige Lights Ltd., held that suppression of material facts by a litigant justifies outright dismissal of proceedings. Both this Court in the case of Nagina Ramsagar Choube and the Delhi High Court in the case of Om Prakash Gupta have, at the interlocutory stage itself, dismissed suits on finding that the Plaintiff had suppressed material facts.

Hon’ble Supreme Court in the case of Dnyandeo Sabaji Naik, in which the Hon’ble Supreme Court has, inter alia, held as follows:

65. In the aforesaid circumstances, I pass the following order: ORDER i. The suit is dismissed. ii. The Plaintiff shall pay a sum of Rs. 25,00,000/- each to Defendant Nos. 2 and 3, as and by way of cost. iii. The Court Receiver is discharged without passing account, subject to payments of all costs, charges and expenses by the Plaintiff. iv. The goods which have been seized by the Court Receiver pursuant to the ex parte ad interim Order shall be returned to the Defendants forthwith with prior notice to the Plaintiff. v. In view of the dismissal of the suit, Interim Application (L) No.18278 of 2025 and Interim Application No.5889 of 2025, Leave Petition (L) No.18257 of 2025 and Court Receiver Report No.327 of 2025 do not survive and stand disposed of. (ARIF S. DOCTOR,J.)