The recent decision by the Bombay High Court to reject a temporary injunction against a Pune restaurant using the 'ANNA' trademark sheds light on a trademark infringement suit. The plaintiff, Shantapa alias Shantesh S Kalasgond, filed the suit against M/s. Anna, alleging the unauthorized use of the tradename 'ANNA' for eateries specializing in South Indian delicacies.
The court's ruling hinged on the plaintiff's earlier representation during the trademark registration stage. The plaintiff had initially told the Trademarks Registry that there was no similarity between his mark 'ANNA IDLI GRUHA' and the defendant's mark 'ANNA.' This stance during registration became a pivotal factor in the court's decision.
Justice Sandeep V Marne, presiding over a single bench, applied the principle of 'prosecution history estoppel.' While traditionally associated with patent infringement cases, this doctrine is increasingly being applied in trademark infringement disputes. It prevents a party from claiming advantages associated with a right consciously waived in previous proceedings.
The court emphasized the significance of a party's stance during the registration of a trademark, asserting that it cannot be disregarded in subsequent infringement or passing-off proceedings. The doctrine of prosecution history estoppel was deemed applicable, considering the plaintiff's twice-made representation before the Trademark Registry that there was no resemblance between his and the defendant's marks.
The case originated when the plaintiff observed the defendant's intent to start a similar business in Pune under the mark 'ANNA.' Claiming prior use of the mark, the plaintiff sought an injunction against the defendant, arguing that the latter's mark was deceptively similar to his registered trademarks, 'ANNA IDLI GRUHA' and 'ANNA IDLI.'
However, the District Judge had earlier rejected the plaintiff's interim application for failing to disclose his stance during the trademark registration stage. This rejection was rooted in the principle of estoppel, as the plaintiff had previously represented dissimilarity between the marks during registration.
The plaintiff contested the applicability of the doctrine of prosecution history estoppel during the appeal, arguing that defenses taken during trademark registration should not be the sole basis for determining the merit of a passing-off claim. The court, referencing relevant cases, including Raman Kwatra v. KEI Industries Limited, PhonePe Private Limited v. Resilient Innovations Private Limited, and Mankind Pharma Ltd. v. Chandra Mani Tiwari, maintained that a party's stand during registration proceedings continues to influence subsequent legal actions.
The court further noted the District Judge's refusal of a temporary injunction due to the plaintiff's willful suppression of material facts and misrepresentation during registration. Even if the concept of prosecution history estoppel were set aside, the court found that the plaintiff failed to establish a prima facie case based on factors such as low business turnover and minimal advertising expenditure.
Ultimately, the court concluded that the plaintiff's conduct, marked by the suppression of material facts and the inability to prove the triple tests of a prima facie case, irreparable loss, and the balance of convenience, warranted the dismissal of the appeal for a temporary injunction. The decision underscores the importance of consistency in a party's representations during trademark proceedings and its impact on subsequent legal actions. Advocates Hiren Kamod, Anees Patel, Prem Khular, Harsh Joshi i/by. Ajinkya Jaibhave represented the Appellant-Plaintiff throughout the proceedings.
TAGS: Bombay High Court ' ANNA' trademark Infringement suit Temporary injunction Trademark registration Prosecution history estoppel Patent infringement Passing-off claim
