Bombay High Court Dismisses IP Suit at Interim Stage; Imposes Costs of INR 50 Lakhs
by Mr. Shwetank Tripathi (Partner Designate)
INTRODUCTION
The Learned Single Judge of the Bombay High Court in the matter of Shoban Salim Thakur v Chaitanya Arora & Anr, IA(L) 18278/2025 in COMIP(L) 18197/2025, passed a judgment and order dated 15 October 2025 (“Decision”) dismissing the suit at the interim stage itself, on the ground of willful suppression of material documents.
The Plaintiff had filed a suit for trade mark infringement in relation to its registered trade mark ‘DOCTOR EXTRA SOFT’ for footwear products falling in class 25, against Defendants’ use of the marks ‘DOCTOR HEALTH SUPER SOFT / DOCTOR SUPER SOFT / DOCTOR EXTRA SOFT’ in relation to identical products.
The Learned Single Judge passed an ex-parte ad-interim injunction order against the Defendants. The Defendants filed an application under Order 39, Rule 4 CPC for vacation of the ad-interim injunction order on the ground of suppression of material documents.
RIVAL CONTENTIONS:
The Defendants contended that the Plaintiff suppressed following material documents in the plaint –
- Plaintiff’s sole registration in class 25 had a disclaimer to the effect that the registration was only valid for State of Maharashtra;
- Defendants had filed user documents evincing use of the impugned mark since 2022 in the opposition filed by the Plaintiff against the Defendants’ mark which the Plaintiff deliberately not placed on record with the suit; and
- During the prosecution of the Plaintiff’s mark in class 25 when third party marks were cited, the Plaintiff had taken a diametrically opposite stand before the Trade Marks Registry in its reply to examination report, which have not been placed on record with the suit.
In light of above, the Defendants prayed for vacation of the ex-parte injunction order, dismissal of the interim application / suit and imposition of costs upon the Plaintiff.
In response, the Plaintiff contended in respect of each of the documents as follows –
- Regarding disclaimer, the Plaintiff contended that it was inadvertently not disclosed;
- Regarding Defendants’ user documents, the Plaintiff contended that these documents were not credible. In any case, each instance of use of infringing mark amounts to a separate cause of action. The Plaintiff filed the suit as soon as it got aware of use of the impugned mark; and
- Regarding the stand taken before Trade Marks Registry, the Plaintiff contended that the same was irrelevant as the same related to third party marks and not of the Defendants.
In view of the above, the Plaintiff contended that the ex-parte order ought to be continued.
DECISION:
The Hon’ble Court, after considering the rival contentions and documents placed on record, observed that the Plaintiff engaged in gross suppression of material facts and documents. Regarding disclaimer on the Plaintiff’s registration being valid in ‘State of Maharashtra, the Court observed that the same was a material fact as the injunction order operated pan India. Regarding nondisclosure of Defendants’ user documents from 2022, the Court observed that while the Plaintiff had made a passing reference in the plaint, it did not file the documents along with the suit. Regarding non-disclosure of reply to examination report, the Court relying upon its judgment in PhonePe Private Limited v Resilient Innovations Private Limited, observed that the stand taken before the Trade Marks Registry was a material fact which was required to have been disclosed by the Plaintiff more so when the Plaintiff was moving ex parte.
In light of the above, the Hon’ble Court not only vacated the injunction order but also dismissed the suit. Further, considering the fraudulent conduct of the Plaintiff, the Court also imposed an exemplary cost of INR 50 Lakhs upon the Plaintiff.
KEY TAKEAWAYS:
The Decision reinforces the importance of honesty and candid disclosure of all relevant documents to an IP suit. The Plaintiff should not pick and choose documents. In case of adverse documents, it is all the more necessary to disclose the same and make necessary averments. Further, the Plaintiff must do a thorough diligence upon the Defendant and disclose the anticipated stand that may be taken by the Defendant and deal with it in the plaint itself.
The Decision is also important from the perspective of meticulous trade mark prosecution strategy. It must be kept in mind that the stand taken before the Trade Marks Registry will continue to be relevant till the life of the particular trade mark. In enforcement action, it is critical to examine all documents filed during trade mark prosecution and disclose the same before the court.
