The recent judgment by the Calcutta High Court in the MAZDOOR BIDI case sheds
light on the consequences of suppressing a disclaimer condition on a registered
trademark. In this case, the plaintiff, who initially secured an ex-parte
injunction against the defendant for alleged trademark infringement, faced
challenges as the defendant brought forth compelling arguments. This analysis
delves into the legal implications and considerations made by the court in
vacating the interim injunction.
Suppression of Disclaimer Condition:
The pivotal issue revolved around the plaintiff's alleged suppression of a
disclaimer condition related to their registered trademark "MAZDOOR BIDI." The
court noted that the plaintiff failed to disclose a crucial fact � the existence
of a restriction on the exclusive rights over the descriptive matter appearing
on the label. Specifically, the plaintiff was granted the right to sell its
product exclusively within the State of West Bengal.
The Calcutta High Court, in its observations, highlighted that the plaintiff
obtained the injunction order by suppressing material facts. The court
emphasized that the disclaimer condition, which limited the plaintiff's
exclusive rights, was vital information that should have been disclosed during
the legal proceedings. This failure to provide complete and accurate information
influenced the court's decision to vacate the interim injunction.
Defendant's Counter Arguments:
The defendant strategically presented three key arguments challenging the
plaintiff's case. Firstly, they contended that the plaintiff's activity was
limited to West Bengal, while the defendant operated in the states of Uttar
Pradesh and Uttarakhand. Secondly, the defendant claimed to be the prior user of
the trademark. Lastly, the defendant submitted an affidavit asserting that their
products were not sold, directly or indirectly, in the State of West Bengal.
The court, after careful consideration of the defendant's arguments, sided with
the defendant and vacated the interim injunction by observing that Plaintiff has
obtained the ex parte Injunction after suppressing the disclaimer condition on
its registered Trademark. The judgment further highlighted the defendant's
establishment as the prior user and their documented evidence showing that their
products were not being sold in West Bengal. The failure of the plaintiff to
provide any evidence to the contrary further weakened their case.
The concluding Note:
This case underscores the importance of transparency in legal proceedings,
particularly in matters related to trademark registrations. Suppressing
essential information, such as disclaimer conditions, can have severe
consequences for the party seeking legal remedies. The MAZDOOR BIDI case serves
as a cautionary tale, emphasizing the need for full and accurate disclosure to
ensure a fair and just legal process in trademark disputes.
The Case Law Discussed:
Case Title: Amir Biri Factory & Ors Vs Mohd. Aslam
Date of Judgement/Order:16.01.2024
Case No. CS No 211 of 2012
Neutral Citation: NA
Name of Hon'ble Court: Calcutta High Court
Name of Hon'ble Judge: Krishna Rao, H.J.
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539