Prosecution History Estoppel applies to trademark cases, confirms the Bombay High Court.

In a case relating to the trademark, Anna Idli Gruha, the Bombay High Court stated that prosecution history estoppel doctrine that is normally applied in patent cases is applicable in trademark cases as well. The Court made this statement in the context of the plaintiff’s pleadings which contradicted with the stand taken by him during trademark prosecution. During prosecution, the plaintiff had stated that the defendant’s mark, Anna, was different from its mark, Anna Idli Gruha, to overcome the objection of the Registrar. As the plaintiff had taken the stand that ‘Anna’ was dissimilar from its trademark, the Court stated that the plaintiff cannot claim that his rights extend to the word ‘Anna’ in the suit, and that it is deceptively similar to his trademark.

Relevant Paragraphs

The relevant para of the Court’s Judgment reads as follows:

“55. After having analyzed the judgments on the issue of a”pplicability of principle of estoppel in actions for infringement of trademark and/or passing off, I am of the view that the stand taken by a party in proceedings for registration of a Mark cannot be ignored in each and every proceeding filed for infringement or passing off. In the present case, the doctrine of prosecution history estoppel would fully apply where Plaintiff has twice made a representation before the Trademark Registry that there is no resemblance between his and the Defendant’s Marks. He took that stand with full knowledge that Defendant was intending to use the Mark ‘ANNA’ for same class of goods and services. He thus led Defendant to believe that the Defendant was free to commence and operate business of selling same class of goods and services by using the Mark ‘ANNA’. Plaintiff cannot now be permitted to take a volte face and contend that the two marks are deceptively similar.”

Disclosure of Prosecution History

While dealing with the question of whether  prosecution history has to be disclosed by a party to a trademark suit, the Court stated as follows:

“58. Temporary injunction is a discretionary relief. The learned District Judge, in the present case, has refused to grant temporary injunction in favour of the Plaintiff by considering his conduct in suppressing the replies filed before the Trademark Registry. Plaintiff has been registering various trademarks over the period of years. His last application in respect of the Mark being still pending. Despite facing objections from the Trademark Registry about registration of several trademarks with the name ‘Anna’, particularly that of Defendant, the Plaintiff has repeatedly represented before the Trademark Registry that his mark does not resemble with that of the Defendant though both the marks are in respect of the same Class of goods and services. The District Judge has rightly considered this conduct of the Plaintiff in not disclosing repeated stands taken before the Trademark Registry for refusing the discretionary relief of injunction.”

It was obligatory for Plaintiff to disclose all the relevant material in the Plaint. He could not have suppressed the contradictory stand taken in his replies dated 5 February 2013 and 15 April 2016 on a specious plea that the same is in public domain. In this regard, reliance of Mr. Soni on the judgment of the Apex Court in Bhaskar Laxman Jadhav (supra) appears to be apposite wherein it is held that it is not for a litigant to decide what is to be disclosed and what not. The Apex Court has held in para 44 as under:

“44. It is not for a litigant to decide what fact is material for adjudicating a case and what is not material. It is the obligation of a litigant to disclose all the facts of a case and leave the decision-making to the court. True, there is a mention of the order dated 2-5-2003 in the order dated 24-7-2006 passed by the JCC, but that is not enough disclosure. The petitioners have not clearly disclosed the facts and circumstances in which the order dated 2-5- 2003 was passed or that it has attained finality.” “

As per the Court, all material relevant  to a proceeding including the prosecution  history and related documents have to be placed before the Court. Else, the said non-disclosure may be treated as suppression of material information.

Citation: Shantapa alias Shantesh S. Kalasgond vs M/s Anna, Bombay High Court, 30th November, 2023, APPEAL FROM ORDER NO. 915 OF 2023 WITH INTERIM APPLICATION NO. 17040 OF 2023


The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

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