Prosecution history estoppel bars interim relief when a party asserts deceptive similarity contrary to previous Registry representations.

The Appellant (Original Plaintiff) filed a suit for copyright infringement and passing off regarding its safety razor trademark and trade dress "SETMAX"

The Appellant applied for the "SETMAX" word mark on September 1, 2023, one day after a foreign entity, Galactic Conquistadors FZE ("Galactic"), applied for the mark "SetMax"

When the Trademark Registry cited Galactic’s mark as a conflicting entry, the Appellant replied on December 1, 2023, asserting that its mark was "visually and structurally completely different" and "overall dissimilar" to Galactic’s mark to secure registration

However, in the present suit against the Respondents (Galactic's licensees), the Appellant alleged the marks were "identical/deceptively similar"

The Appellant did not disclose its Registry response or the "Cease and Desist" notice from Galactic in its plaint

The Single Judge dismissed the interim application for injunction on grounds of suppression and estoppel

1. Whether the non-disclosure of the Appellant’s contradictory stand before the Trademark Registry constitutes suppression of material facts disentitling the party to discretionary relief

2. Whether the doctrine of "prosecution history estoppel" prevents a party from asserting deceptive similarity in an infringement suit after claiming dissimilarity during registration proceedings

3. Whether the Appellate Court should interfere with the discretionary refusal of an interlocutory injunction by the court of first instance

The court applied Order XI Rule 3 of the CPC (Commercial Courts Act amendment), which mandates the disclosure of all documents in the plaintiff's power/possession regardless of whether they support or prejudice the plaintiff's case

It relied on S.P. Chengalvaraya Naidu v. Jagannath regarding the principle that fraud and suppression vitiate judicial acts

The court followed the doctrine of "prosecution history estoppel" as articulated in Shantapa alias Shantesh S. Kalasgond v. M/s. Anna, holding that representations made to the Registry bind the party in subsequent litigation

Finally, it applied the standard from Wander Ltd. v. Antox India (P) Ltd., which limits appellate interference in discretionary orders unless they are arbitrary, capricious, or perverse

The court found that the Appellant willfully suppressed its December 1, 2023, representation to the Registry

By claiming dissimilarity to avoid a Section 11(1) objection at the Registry and then claiming deceptive similarity in the suit, the Appellant attempted to "approbate and reprobate"

The court rejected the argument that the Appellant was unaware of the link between Galactic and the Respondents, stating it is the litigant's duty to disclose all facts and leave the determination of "materiality" to the court

The court held that the integrity of the judicial process requires "clean hands," and the Appellant’s tactical omission of Galactic as a party further evidenced a lack of bona fides

Under the doctrine of prosecution history estoppel, the Appellant’s prior statement that no confusion would arise "haunts" its current claim for passing off

The court held that the Appellant was disentitled to discretionary relief due to the suppression of material facts and the contradictory stands taken before different authorities

The court found no perversity in the lower court's refusal of the injunction, confirming that the Respondents (as licensees) were entitled to rely on the Appellant’s own prior assertions of dissimilarity

All pending interim applications were disposed of