Introduction

The Calcutta High Court has highlighted the principle of estoppel in interim injunction matters. The Court refused to restrain the use of a similar mark when the plaintiff had previously taken a contradictory stand before the Trademark Registry that its own mark was distinct from cited marks.

Factual And Procedural Background

Biswanath Hosiery Mills Limited, a manufacturer and seller of hosiery products, holds registrations for the word and label mark “ONN”. The company filed a commercial suit seeking an injunction against Anila Kedia for using the mark “ON & ON” on similar goods, alleging infringement and passing off. The plaintiff claimed exclusive rights under Section 28 of the Trade Marks Act, 1999, due to its registration.

The Commercial Court at Rajarhat, by order dated 23 December 2025, dismissed the plaintiff’s application for an interim injunction under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure. Aggrieved by this, Biswanath Hosiery Mills filed an appeal before the Intellectual Property Rights Appellate Division of the Calcutta High Court.

Dispute

The central dispute was whether the plaintiff was entitled to an interim injunction restraining the defendant from using “ON & ON”. The plaintiff argued that its registered mark “ONN” gave it exclusive rights and the defendant’s mark was deceptively similar.

The defendant contended that the plaintiff had suppressed material facts and was estopped from claiming similarity because, in 2011, while responding to objections from the Trademark Registrar, the plaintiff had described “ONN” as a coined, meaningless expression visually and structurally different from marks like “ON-N-ON”.

Reasoning And Analysis Of The Judge

The Division Bench found that when the plaintiff applied for registration of “ONN” in 2011, the Registrar raised objections under Section 11, citing similar marks, including “ON-N-ON”. In reply dated 30 September 2011, the plaintiff’s advocates asserted that “ONN” is a coined and meaningless expression, visually, structurally, and conceptually different from the cited marks. They provided a comparative table and relied on case law to argue dissimilarity.

The bench observed that the defendant is using “ON & ON”. Applying the same logic the plaintiff had used before the Calcutta High Court denies trademark injunction, holding prior Trademark Registry statements created estoppel against similarity claims.registrar, there appeared to be no similarity sufficient for granting an injunction at the prima facie stage. The Court held that the plaintiff’s earlier stand created estoppel, preventing it from now claiming deceptive similarity.

The judges emphasised that while considering an interim injunction application, the court looks at the overall equities. Given the plaintiff’s previous representation that its mark is distinct, it could not demonstrate a strong prima facie case of infringement or passing off at this stage.

Key Findings Of The Court

• The plaintiff had earlier argued before the Trademark Registry that “ONN” was distinct from similar cited marks.
• The defendant was using the mark “ON & ON” on similar goods.
• The plaintiff’s previous stand operated as estoppel.
• No strong prima facie case was established for the grant of an interim injunction.
• The balance of equities did not favour the plaintiff at the interim stage.

Final Decision Of The Court

The Calcutta High Court dismissed the appeal (FMAT-IPD/2/2026) along with connected applications on 15 May 2026. The order of the Commercial Court refusing the interim injunction was upheld. No order as to costs was passed.

Point Of Law Settled In The Case

The judgement reinforces that a party seeking an injunction in a trademark matter cannot take contradictory stands at different forums. Statements made before the Trademark Registry regarding the distinctiveness of one’s mark can operate as estoppel in subsequent civil proceedings when claiming similarity against another mark.

It also reiterates the standard principles for granting interim injunctions:

• Prima facie case
• Balance of convenience
• Irreparable harm

These requirements must be satisfied convincingly, especially when prior conduct of the plaintiff weakens its case.

Case Details

Legal Principles Highlighted

• Doctrine of estoppel in trademark litigation.
• Effect of representations made before the Trademark Registry.
• Assessment of deceptive similarity at the interim stage.
• Requirements for grant of interim injunction in trademark disputes.
• Importance of consistency in legal pleadings and submissions.

Disclaimer: Readers are advised not to treat this as a substitute for legal advice, as it may contain errors in perception, interpretation, and presentation.