The Bombay High Court has delivered a stern rebuke to a plaintiff who secured an ex-parte injunction by deliberately concealing critical facts about its relationship with a prior trademark owner and its own history of litigation. The judgment underscores that equitable relief in intellectual property disputes is contingent upon full candor, and suppression of material facts renders any injunction unsustainable.
Background & Facts
The Dispute
Elder Prroject Limited (Plaintiff) sued Elder Neutraciticals Private Limited (Defendant) for trademark infringement and passing off, alleging that the Defendant’s use of the mark "ELDER NEUTRACITICALS" was deceptively similar to its registered device mark featuring the word "ELDER" in a stylized blue font with three leaves. The Plaintiff claimed exclusive use of the mark since 1992-93 and asserted prior user rights and goodwill in the pharmaceutical sector.
Procedural History
- August 2018: Plaintiff applied for registration of its device mark in Class 5 under the Trade Marks Act, 1999.
- June 2024: Registration granted (Certificate No. 3603833).
- May 2025: Plaintiff discovered Defendant’s products bearing a similar mark.
- June 27, 2025: Plaintiff issued a cease-and-desist notice.
- September 26, 2025: Without notice to Defendant, Plaintiff obtained an ex-parte ad-interim injunction restraining use of the mark and appointing a Court Receiver to seize goods.
- October 2025: Defendant filed IAL No. 35091 of 2025 seeking vacation of the injunction under Order 39 Rule 4 CPC.
- March 9, 2026: Court heard both IAL No. 35091 of 2025 (vacation) and IAL No. 27598 of 2025 (temporary injunction) together.
Relief Sought
The Plaintiff sought a temporary and perpetual injunction restraining the Defendant from using any mark deceptively similar to its registered device mark, including the word "ELDER" in any stylized form. The Defendant sought vacation of the ex-parte injunction and dismissal of the Plaintiff’s application on grounds of suppression of material facts and lack of clean hands.
The Legal Issue
The central question was whether an ex-parte ad-interim injunction can be sustained when the plaintiff has deliberately suppressed material facts regarding prior use of the same trademark by a related entity, its own role as a contract manufacturer, and multiple adverse judicial findings against it in prior litigation.
Arguments Presented
For the Appellant/Petitioner
The Defendant argued that the Plaintiff concealed four critical facts: (1) Elder Pharmaceuticals Ltd. (EPL) was the first user and registered proprietor of the word mark "ELDER" since 1983; (2) the Plaintiff’s director and Defendant’s director are siblings, both children of EPL’s former Managing Director; (3) four Delhi High Court orders had previously rejected the Plaintiff’s claims to the "ELDER" mark, finding it an infringer and a "senior infringer" suing a "junior infringer"; and (4) the Plaintiff had admitted before the Official Liquidator of EPL that it was merely a contract manufacturer for EPL until 2016 and had no rights in the "ELDER" mark. The Defendant relied on Abdul Cadur Allibhoy v. Mahomedally Hyderally, Ramjas Foundation v. Union of India, and Bhaskar Laxman Jadhav v. Karamveer Kakasaheb Wagh Education Society to argue that suppression of material facts disentitles a party to equitable relief.
For the Respondent/State
The Plaintiff contended that the present suit concerned only its registered device mark, not the word "ELDER" per se, and that the Delhi High Court proceedings involved entirely different marks. It claimed the registration was valid, obtained after due process, and that the Defendant’s use was infringing. It argued that the relationship between directors was irrelevant as the parties were separate corporate entities, and that the OL proceedings were unrelated to the current dispute. It relied on Marico Limited v. Zee Hygiene Products and Eurobond Industries v. Euro Panel Products to assert that registration creates a presumption of validity and that similarity in essential features constitutes infringement.
The Court's Analysis
The Court conducted a meticulous review of the Plaintiff’s pleadings, prior litigation, and conduct before the Official Liquidator. It found that the Plaintiff’s claim of being the originator of the mark since 1992-93 was directly contradicted by its own admissions in Delhi High Court proceedings and to the Official Liquidator.
"The Plaintiff has completely suppressed the factum of EPL's use and ownership in respect of registered mark 'ELDER'."
The Court emphasized that the Plaintiff’s assertion of exclusive use since 1992 was false, as it had admitted to being a contract manufacturer for EPL until 2016. The Court further noted that the Plaintiff’s attempt to reframe its claim during oral arguments - that it was only enforcing the device mark and not the word "ELDER" - was inconsistent with its pleadings, which repeatedly sought to restrain use of the word "ELDER" in combination with other terms.
The Court held that the four Delhi High Court orders were not merely collateral but directly relevant, as they established the Plaintiff’s lack of entitlement to the mark and its history of misrepresentation. The Court cited Ramjas Foundation and Bhaskar Laxman Jadhav to affirm that it is not for a litigant to decide what facts are material; the duty is to disclose all.
"It is the obligation of a litigant to disclose all the facts of a case and leave the decision-making to the court."
The Court also rejected the Plaintiff’s reliance on International Association of Lions Club, distinguishing it on grounds that the suppressed facts in that case were not material to the outcome, whereas here, suppression directly affected the Court’s assessment of the Plaintiff’s clean hands and prima facie case.
The Court further found the Plaintiff’s claim of urgency to be fabricated, as the Defendant had been using the mark since 2015, evidenced by documents produced by the Defendant. The Court concluded that the Plaintiff’s conduct amounted to approbation and reprobation, violating the doctrine of election.
The Verdict
The Defendant won. The Court held that the Plaintiff’s gross suppression of material facts, inconsistent pleadings, and conduct as an infringer of EPL’s registered trademark disentitled it to equitable relief. The ex-parte ad-interim injunction was vacated, the application for temporary injunction was dismissed, and the Plaintiff was ordered to pay Rs. 1,00,000 as token costs for misusing the Court’s extraordinary powers.
What This Means For Similar Cases
Suppression of Material Facts Vitiates Injunction
- Practitioners must disclose all prior litigation, corporate relationships, and admissions made before regulatory bodies when seeking ex-parte injunctions.
- Concealing adverse judgments from other courts - even if seemingly unrelated - will be treated as material suppression.
- Courts will not entertain claims of "different marks" if the underlying trademark identity and ownership history are deliberately obscured.
Clean Hands Doctrine Is Non-Negotiable in IP
- A plaintiff who has previously been found to be an infringer or who has misrepresented its rights in prior proceedings cannot claim equitable relief.
- Registration alone does not cure a tainted claim; courts may look behind registration at the interim stage if fraud or suppression is evident.
- The burden on the defendant to rebut registration is lowered when the plaintiff’s conduct is found to be dishonest.
Prior Use Claims Must Be Consistent Across Forums
- A claim of prior use must align with statements made before trademark registries, liquidators, and courts.
- Contradictory statements - such as claiming ownership in one forum and admitting to mere contract manufacturing in another - will destroy the credibility of the entire claim.
- Courts will treat such conduct as bad faith, disqualifying the plaintiff from any injunctive relief.
