The Bombay High Court has reaffirmed that ex parte interim injunctions in trade mark disputes are voidable if the applicant suppresses material facts regarding the defendant’s prior use of the contested mark. This judgment underscores the non-negotiable duty of candour in intellectual property litigation, particularly where the defendant’s longstanding commercial presence predates the plaintiff’s claimed adoption.
Background & Facts
The Dispute
The Plaintiff, Asian Paints Limited, filed Commercial IP Suit (L) No. 28791 of 2025 seeking injunctive relief against the Defendant, Apex Metchem Private Limited, alleging infringement of its registered trade mark "APEX" in relation to industrial paints, solvents, and thinners. The Plaintiff obtained an ex parte ad interim injunction on 23.09.2025, restraining the Defendant from using the mark "APEX" and appointing a Court Receiver to seize infringing goods.
Key Facts
- The Defendant, Apex Metchem Private Limited, was incorporated on 02.03.1995.
- The Defendant’s corporate predecessor, M/s Apex Sales Corporation, was established as a sole proprietorship in 1966 and later converted into a partnership firm.
- The Defendant’s website, accessible since at least 2015, states: "APEX Metchem Pvt Ltd is a private limited company started in the year 1995 for the manufacturing of Industrial Paints, Solvents & Thinner used in various segments of Industries."
- The Plaintiff claims adoption of the mark "APEX" since 1995, with registration applications filed in 1999 and 2017.
- The earliest legible sales invoice produced by the Plaintiff showing use of the mark "APEX" is dated 2017.
- The Plaintiff annexed the Defendant’s website extract to its plaint, acknowledging the Defendant’s existence.
- The Plaintiff’s trade mark "APEX" is not listed as a "well-known trade mark" in the Trade Mark Registry’s published list.
- The Plaintiff’s registered trade marks include device marks (Reg. Nos. 857108, 2130509) and marks in Class 19 (Reg. Nos. 2723456, 2723457), none of which cover the Defendant’s goods.
Procedural History
- 02.03.1995: Defendant incorporated as Apex Metchem Private Limited.
- 1995 - 2003: Defendant continuously uses the mark "APEX" in trade for industrial paints and solvents.
- 1997: Plaintiff begins advertising under the mark "APEX" (evidenced by annexed news clippings).
- 2007: First legible sales invoice by Plaintiff showing use of "APEX".
- 2017: Plaintiff’s first documented invoice using the mark "APEX".
- 2025: Plaintiff files suit on 15.08.2025, alleging infringement.
- 23.09.2025: Ex parte ad interim injunction granted by the Court, restraining use of "APEX" and appointing Court Receiver.
- 29.10.2025: Court Receiver seizes Defendant’s goods.
- 16.02.2026: Interim Application No. 7417 of 2025 heard and reserved.
- 30.03.2026: Judgment pronounced.
The Parties' Positions
The Plaintiff contended that it was unaware of the Defendant’s use of the mark until August 2025, despite conducting market inquiries. It asserted that the Defendant’s use was infringing and that its own mark had acquired distinctiveness.
The Defendant argued that it had been using the mark "APEX" since 1966, with continuous commercial presence since incorporation in 1995. It submitted that the Plaintiff deliberately omitted disclosure of the Defendant’s corporate existence and prior use, despite having annexed the Defendant’s website to the plaint.
Relief Sought
The Defendant sought vacation of the ex parte ad interim order dated 23.09.2025, release of seized goods, and costs. It also sought a declaration that its prior use of the mark "APEX" as a trade name and mark is lawful and not infringing.
The Legal Issue
The central question was whether the Plaintiff’s failure to disclose the Defendant’s prior and continuous use of the mark "APEX" since 1995 - despite having access to public domain corporate records and the Defendant’s website - constitutes a "knowingly made false or misleading statement in relation to a material particular" under Order 39 Rule 4 of the Code of Civil Procedure, 1908, warranting vacation of the ex parte injunction.
Arguments Presented
For the Appellant/Petitioner
Mr. G.D. Bansal, counsel for the Defendant, submitted that the Plaintiff suppressed material facts by omitting to inform the Court that the Defendant had been incorporated in 1995 and had been using the mark "APEX" in trade for decades. He relied on Kewal Ashokbhai Vasoya v. Suarabhakti Goods (P) Ltd. to argue that applicants for ex parte injunctions must make full and reasonable disclosures, including the defendant’s corporate history, market presence, and prior registration. He emphasized that the Defendant’s website, annexed to the plaint, clearly stated its founding year and business activity, making the omission deliberate. He further contended that the Plaintiff’s own invoices did not establish use prior to 2017, and its claim of a "well-known mark" was unsupported by the Trade Mark Registry.
For the Respondent/State
Mr. Amey Nargolkar, counsel for the Plaintiff, argued that the plaint contained sufficient disclosure, citing paragraph 18 which referenced the Defendant’s website. He claimed the Plaintiff did not seek injunction against the corporate name or domain, only the trade mark use on goods. He submitted that the Plaintiff’s use since 1995 was supported by Chartered Accountant’s certificate and advertisements from 1997. He contended that the Defendant’s use was not proven by documents and that the Plaintiff’s lack of awareness was genuine.
The Court's Analysis
The Court undertook a rigorous analysis of Order 39 Rule 4 CPC, which mandates vacation of an ex parte injunction if a party knowingly made a false or misleading statement regarding a material fact. The Court held that the duty of disclosure in intellectual property matters is heightened, particularly when the applicant seeks to restrain a defendant’s long-standing commercial identity.
"The Plaintiff must be shown to have made necessary and proper enquiries, which if made, would have resulted in the Plaintiff knowing about the adoption, use and registration of the rival mark by the Defendant."
The Court observed that the Defendant’s corporate existence since 1995 was not merely a technical detail but a material fact directly relevant to the defence of prior use - a well-established legal principle under the Trade Marks Act, 1999. The website extract annexed to the plaint was not a mere footnote; it was a public, verifiable record of the Defendant’s commercial history. By omitting to draw the Court’s attention to this, the Plaintiff created a false impression that the Defendant was a recent entrant.
The Court rejected the Plaintiff’s argument that it "could not come across" information about the Defendant’s use. In the digital age, corporate records are publicly accessible via the Ministry of Corporate Affairs portal and company websites. The Court noted:
"It is not sufficient to make a bald assertion that despite conducting enquiries, the Plaintiff could not come across any information about Defendant's period of use of the trademark."
The Court further held that the Plaintiff’s own evidence - invoices dated 2017 and later - failed to substantiate its claim of use since 1995. The Chartered Accountant’s certificate was insufficient without supporting transactional records. The registration of device marks and marks in Class 19 did not confer monopoly over the word "APEX" for goods in Class 1 or 2.
The Court emphasized that prior user is a complete defence to infringement. The failure to disclose this defence before granting an injunction that crippled a legitimate business with an annual turnover of over Rs. 80 crores was a grave procedural failure.
The Verdict
The Defendant succeeded. The Court vacated the ex parte ad interim order dated 23.09.2025. The Court Receiver was directed to release all seized goods forthwith. The Court stayed its order for four weeks to allow the Plaintiff to file a regular application with full disclosure. No costs were awarded.
What This Means For Similar Cases
Full Disclosure Is Non-Negotiable in Ex Parte IP Applications
- Practitioners must proactively disclose the defendant’s corporate history, website content, and prior use - even if the defendant’s mark is not registered.
- Annexing documents is not enough; the court must be explicitly directed to them.
- Failure to disclose public domain information constitutes suppression under Order 39 Rule 4 CPC.
Prior Use Trumps Registration in Injunction Proceedings
- A defendant’s continuous use since before the plaintiff’s registration or adoption is a valid defence, regardless of registration status.
- Courts will not grant ex parte injunctions where prior use is evident from public records.
- Trade mark registration on proposed-to-use basis cannot override actual prior use.
Digital Evidence Cannot Be Ignored
- Websites, MCA records, and public databases are now part of the due diligence standard.
- Claims of "lack of awareness" will be rejected if the information was readily accessible.
- Plaintiffs must document and disclose the nature and scope of their market inquiries.
