The Bombay High Court has asserted that a party who is itself an infringer of a third party’s registered trademark cannot maintain a suit for infringement or passing off against another party. Referring to the decision of Capital Plastic Industries vs. Kappv Plastic Industries [1998 (8) PTC 182 (Del)], the Court reiterated that a pirator cannot sue another pirator for infringement.
The Court noted that the Plaintiff’s act of applying for and securing ex-parte ad-interim injunction by deliberately withholding the relevant material from Court has undoubtedly led to immense inconvenience and losses for the Defendant. Since ‘ELDER’ is the proprietary mark of Elder Pharmaceutical Ltd. (EPL), and the siblings have adopted different versions thereof, the High Court awarded a moderate amount of Rs. 1 Lakh to the Defendant, more towards token costs, for Plaintiff’s misuse of Court’s exceptional power of grant of ex-parte injunction by indulging in acts of deliberate nondisclosure.
The High Court clarified that a party seeking an equitable relief like an injunction, especially an ex-parte one, must approach the court with clean hands and is under a high duty to make a full, fair, and accurate disclosure of all material facts. A fact is material if it has the potential to significantly influence the court’s decision-making process. Thus, where an ex-parte injunction is obtained by deliberately suppressing material facts, the court is empowered under Order 39 Rule 4 of the CPC to vacate the injunction on the ground of suppression alone, as a penalty and to deter such abuse of the court process, without delving into the merits of the case.
A Single Judge Bench of Justice Sandeep V. Marne identified four major areas of suppression by the Plaintiff, i.e., (i) the prior registration and use of the ‘ELDER’ mark by EPL since 1983; (ii) the familial relationship between the directors of the Plaintiff and Defendant and their past association with EPL; (iii) four adverse orders from the Delhi High Court where the Plaintiff’s claims over the ‘ELDER’ mark were repeatedly rejected; and (iv) proceedings initiated by the Official Liquidator of EPL against the Plaintiff for unauthorized use of the mark.
The Bench observed that the Plaintiff approached the court with a plain story of being the originator of the mark since 1992, completely concealing that EPL was the originator and registered owner of the ‘ELDER’ mark and that the Plaintiff was merely a contract manufacturer for EPL.
The Bench found the suppression of the Delhi High Court orders to be ‘more disturbing’, as in those proceedings, the Plaintiff’s director had admitted on oath that the Plaintiff claimed no right in the trademark ‘ELDER’ and was only a job worker for EPL. In its previous order, the Delhi High Court had also held that the Plaintiff was an infringer of EPL’s mark and could not claim any shared or independent reputation.
Further, the Bench observed that the Plaintiff itself appears to be an infringer of EPL’s trademark, having taken advantage of EPL’s liquidation to secure a registration for a similar mark. The Bench held that it can go behind a trademark registration at the interim stage if there are doubts about its validity, and in this case, there was substantial material creating such doubts.
Since the Plaintiff’s claim of prior use since 1992-93 was found to be prima facie fallacious in light of its own admissions that it was a contract manufacturer for EPL until March 2016, and in contrast, the Defendant had established prima facie use of its mark since 2015, the Bench concluded that the Plaintiff failed to satisfy the classic trinity test for passing off, and that the balance of convenience was tilted in favour of the Defendant.
Briefly, the Plaintiff, Elder Prroject Limited, filed a suit for trademark infringement and passing off against the Defendant, Elder Neutraciticals Private Limited. The Plaintiff claimed to be the originator and exclusive user of the device mark since 1992-93 for its pharmaceutical products, which it registered on 12 June 2024, after applying on 31 August 2018. The Plaintiff alleged that in May 2025, it discovered the Defendant using an identical or deceptively similar mark for identical goods. Resultantly, on 26 September 2025, the Plaintiff obtained an ex-parte ad-interim injunction restraining the Defendant from using the mark and also secured the appointment of a Court Receiver for the seizure of goods.
Later, the Defendant filed an application to vacate the injunction, arguing that the Plaintiff had suppressed material facts. The Defendant revealed that a company named Elder Pharmaceutical Ltd. (EPL), incorporated in 1983, was the first adopter and registered proprietor of the word mark ‘ELDER’. Further, the directors of the Plaintiff and Defendant companies are siblings (Dr. Anuj Saxena and Shalini Kumar, respectively), and their late father, Jagdish Saxena, was the Managing Director of EPL.
The Defendant contended that the Plaintiff had suppressed several adverse orders passed by the Delhi High Court, where Dr. Anuj Saxena had admitted that the Plaintiff was merely a job worker for EPL, claimed no rights in the ‘ELDER’ trademark, and that its independent use began only after EPL’s liquidation in 2017. Furthermore, they alleged that the Plaintiff suppressed ongoing proceedings initiated by the Official Liquidator (OL) of EPL, where the Plaintiff had stated it was not concerned with EPL’s trademarks and was only a contract manufacturer for EPL from 1994 to March 2016.
Case Relied On:
Capital Plastic Industries vs. Kappv Plastic Industries [1998 (8) PTC 182 (Del)]
Appearances:
Advocates Karl Tamboly, Bhupesh Dhumatkar, Rohit Pandey, Bhavin Shah, and Dinesh Dubey, for the Plaintiff
Advocates Hiren Kamod, Nihit Nagpal, Nisha Kaba, Abhijit Singh, Anees Patel, and Areen Shaikh, for the Defendant
