Suppression of Facts and Abuse of Process in Trademark Litigation

Facts: Trademark Case: Chaitanya Arora Vs. Shoban Salim Thakur – Suppression of Material 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, owner of 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 prior notice. The Court, relying on the plaintiff’s representation and supporting documents, issued an ex parte injunction.

However, the defendants 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.

Specific Issues Considered

• 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 such suppression vitiated the plaintiff’s entire case and warranted exemplary costs.

Detailed Reasoning and Judicial Analysis

The 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. The Court held this as a deliberate act of suppression.

The Judge found that the plaintiff’s omission was not “inadvertent.” The plaint contained lengthy paragraphs discussing various registrations and proceedings in Class 25, yet the crucial territorial restriction was omitted. The Court concluded that this could not be a genuine mistake.

The Court emphasized the principle that a party seeking ex parte ad interim relief must make full and fair disclosure of all relevant facts. This duty becomes more stringent when the opposing party is not present.

Precedents Relied Upon

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 “DOCTOR” or “SOFT,” but in this suit, it claimed infringement based on those very words.

The Judge emphasized that it was not for the plaintiff to decide what facts were material. The duty of candor required full transparency, especially in ex parte matters.

The plaintiff’s later attempt to justify the omission as “inadvertent” was rejected as an afterthought, which the Court described as “an affront to the Court.”

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, allowing imposition of costs based on party conduct.

Relying on Sai Trading Co. v. KRBL Ltd. and Dashrath B. Rathod v. Fox Star Studios India Pvt. Ltd., the Court held that unscrupulous litigants who misuse judicial processes must face exemplary costs.

The Court also quoted Dnyandeo Sabaji Naik v. Pradnya Prakash Khadekar (2017) 5 SCC 496, emphasizing that litigants abusing court procedures should be penalized to discourage 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 underscores 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 ruling reinforces that truth and transparency are foundational to justice, and litigants attempting to manipulate the system will face severe consequences.

Case Details

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