Registrar's Finding On Non-Bona Fide Adoption Prevails Over Subsequently Filed Invoices: Delhi High Court Upholds Injunction Against Using DYNAFRESH Mark
The Bench rejected the suppression plea as registrar's unchallenged order would not have been displaced by withheld invoices.
The Delhi High Court has held that where a trademark applicant's earlier application has been refused by the Registrar of Trade Marks on the specific finding that its claimed prior use was unproved and its adoption of the mark not bona fide, that unchallenged finding "eclipses" subsequently filed invoices relied upon to assert an even earlier date of use, and such invoices cannot revive a user claim already rejected on merits by a quasi-judicial authority.
The Court further held that a plaintiff's failure to place such invoices before the court while seeking an ex-parte ad-interim injunction does not amount to suppression of a material fact warranting vacation of the injunction, where the invoices, even if disclosed, would not have altered the court's prima facie conclusion in light of the Registrar's binding and unchallenged order.
The ruling came in an appeal filed by Jagdish Dahyalal Patel against an ex-parte ad-interim injunction restraining him from using the mark "DYNAFRESH" for air fresheners, on the ground that it was deceptively similar to Anchor Consumer Products Pvt. Ltd.'s registered mark "DYNA," used for soaps and personal care products since 1999.
A Division Bench comprising Justice V. Kameswar Rao and Justice Manmeet Pritam Singh Arora observed, “In our considered opinion, the order of the Registrar dated 29.07.2024 refusing the Appellant’s first trademark application, which records that the Appellant failed to produce documents to support its user claim since 29.02.2020, despite ample opportunities, leading to a conclusive finding that the user claim and adoption of the impugned mark by the Appellant was not bona fide, is an order of the quasi-judicial authority. The findings in this order dated 29.07.2024, at prima facie stage eclipses the 45 GST paid tax invoices relied upon by the Appellant with its second trademark application no. 6978521 to setup a plea of user since 05.06.2021”.
Advocate Sachin Gupta appeared for the appellant and Senior Advocate Swathi Sukumar appeared for the respondent.
The respondent had instituted a commercial suit alleging that the appellant's mark "DYNAFRESH" was deceptively similar to its registered mark "DYNA," securing an ex-parte ad-interim injunction and appointment of a Local Commissioner.
On appeal, the appellant's sole ground was that the respondent had suppressed 45 GST-paid tax invoices, filed by the appellant along with its second trademark application before the Registrar, which purportedly evidenced use of "DYNAFRESH" since June 2021, thereby misleading the Single Judge into believing the appellant's adoption of the mark was recent.
The respondent countered that it had disclosed the appellant's first trademark application for "DYNAFRESH," which had been refused by the Registrar on July 29, 2024 on the twin grounds that the mark was phonetically and visually similar to "DYNA" and that the appellant's claimed user since February 29, 2020 was unproved despite opportunities, rendering the adoption not bona fide. This order, never challenged by the appellant, had attained finality. The respondent argued it was not obliged to place the appellant's subsequently filed invoices before the Registrar or the court, particularly since the second trademark application itself failed to disclose the earlier rejection order.
The Division Bench held that the Registrar's unchallenged order, being that of a quasi-judicial authority, bound the appellant and eclipsed the subsequently relied-upon invoices, since the core finding, that the mark was in conflict with "DYNA" and likely to cause confusion, remained unaffected by any claim of earlier use.
“…The said invoices would not have justified the adoption and continued use of the impugned mark ‘DYNAFRESH’, by the Appellant, given the findings on deceptive similarity with the Respondent’s mark ‘DYNA’, by both the Registrar in its order dated 29.07.2024 and the learned Single Judge in the impugned order. We also take note that the Respondent had by way of its additional documents filed under the cover of 26.05.2026 disclosed to the learned Single Judge the listings of the products of the Appellant on the e-commerce website of Amazon, since 2021. Thus, the learned Single Judge was aware about the attempted use of the impugned mark since 2021”, the Bench noted.
“In our considered opinion, the detailed reasons recorded by the learned Single Judge in the impugned order justifies grant of the ex-parte ad interim injunction in favour of the Respondent and requires no interference”, the Bench further observed.
The appeal was accordingly dismissed, along with the appellant's pending recall application, which was recorded as withdrawn.
Cause Title: Jagdish Dahyalal Patel v. Anchor Consumer Products Private Limited (Neutral Citation: 2026:DHC:5952-DB)
Appearances:
Appellant: Sachin Gupta, Prashansa Singh, Rajat Jain, Rohit Pradhan and Mahima Chanchalani, Advocates.
Respondent: Swathi Sukumar, Senior Advocate, Sudeep Chatterjee, Kunal Vats, Rajit Ghosh, Sreejan Pankaj, Aastha Verma, Ritik Raghuwanshi and Rishika Aggarwal, Advocates. appeared for the respondent.