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refuses on 'DFI' mark used by Dr Ajay Dubey
The has declined to grant an against a former employee's use of the acronym 'DFI' for his hair transplant clinic, emphasizing that when a defendant has already entered the market with a mark, they deserve a hearing before any temporary restraint is imposed. This reasoning, rooted in the 's and a recent Division Bench order in , marks a significant check on the routine grant of in intellectual property suits.
Justice C. Hari Shankar, while issuing summons in the suit filed by and its affiliates, confronted a familiar tension in trademark litigation: the plaintiff's demand for immediate protection versus the defendant's right to be heard. The court ultimately charted a middle course—refusing to ban the 'DFI' mark outright but imposing a raft of interim protections on disparagement, data misuse, and client solicitation.
A Dispute Over Hair Transplantation Techniques
The case revolves around Direct Hair Implantation (DHI), a hair restoration technique that Silvermaple claims as its proprietary method. The plaintiffs, including Silvermaple Healthcare Services (Plaintiff 1) and its affiliates, own several registered trademarks for 'DHI' in classes 10, 42, 44, and others. They license these marks to their clinics across India.
Dr Ajay Dubey, a dermatologist, joined Silvermaple in 2011 under a Non-Competition and Confidentiality Agreement (NCCA). His employment contract bound him to secrecy regarding the plaintiffs'
"DHI Know-how & DHI Methods"
and prohibited competition for five years after termination. A Severance Agreement executed in
reduced the
period to one year for all of India, followed by four years restricted to Delhi.
After resigning in
, Dr Dubey opened his own clinic in Gurgaon under the name '
' and began marketing his technique as 'Direct Follicle Insertion' (DFI). His website described DFI as
"a complete care system founded after amalgamating the best practices of Follicle Unit Extraction method (FUE) and DHI"
. The plaintiffs saw this as a direct infringement of their DHI trademark, along with a litany of other grievances: Dr Dubey had allegedly solicited Silvermaple's employees and clients, posted disparaging comments on social media, morphed before-and-after photos from the plaintiffs' website, and retained confidential data.
Arguments: Trademark Infringement vs.
Appearing for the plaintiffs, counsel argued that DFI was deceptively similar to DHI both visually and phonetically, and that Dr Dubey's use of the acronym as a trademark on his website, rather than merely as a descriptive term, infringed the plaintiffs' registrations. He pointed to a coordinate bench's order in Lt. Overseas N. America Inc. v. K.R.B.L. Ltd , which allowed of a similar mark but prohibited its use as a trademark.
Dr Dubey's senior counsel, , countered that DFI merely stood for 'Direct Follicle Insertion' and was used descriptively. He noted that his client's primary trademark was 'Evolved Hair India', not 'DFI'. On the broader allegations, Makhija submitted that Dr Dubey had already removed all disparaging posts and would remove any morphed photographs from the plaintiffs' website. He denied soliciting employees or clients, and argued that the clauses were unenforceable under read with .
Why the Court Refused
Justice Shankar's analysis began with a crucial procedural point. He noted that Dr Dubey had been using the DFI mark since around —before the suit was filed in . Relying on the Division Bench's order in
, delivered just days earlier on
, the court held that
"where the impugned mark has been used by the defendant for any length of time, that sole factor would entitle the defendant to an opportunity to respond"
.
The court then reproduced the Division Bench's reasoning:
"Undisputedly, the suit upon being presented on or about
came up for consideration for the first time on
. The ad interim injunction came to be granted merely two days thereafter on
. Admittedly, and as per the plaintiffs/respondents own case, the product of the appellant/defendant had been introduced somewhere around
. In our considered opinion, this fact alone warranted the appellants/defendants being accorded at least a rudimentary opportunity to oppose the application."
The court further invoked the 's guidance in , which distinguishes between defendants who have yet to begin their enterprise and those already in the market. For the latter, the court must weigh different considerations—including the defendant's investment and the risk of disrupting an ongoing business—before granting an ex parte order.
Interim Protections Imposed
Although no injunction was granted on the DFI mark, the court issued several interim directions to preserve the pending the defendants' written response:
-
Restraint on disparagement: The defendants were barred from making any comments—online or offline—about the plaintiffs or the DHI technique. All previously posted disparaging content had already been removed, and the defendants undertook not to post new material.
-
No use of plaintiffs' images or videos: The court directed that no photographs, videos, or other content from the plaintiffs' website be used by the defendants, whether in original, altered, or morphed form.
-
Limits on client communication: While the defendants could continue to treat former Silvermaple clients who came to them voluntarily, any communication with such clients must not refer to the plaintiffs or comment on the DHI technique.
-
Protection of confidential data: Defendant 1 was directed to file an affidavit within three days listing all confidential information obtained during his employment, and to deposit electronic copies in a sealed cover with the court registry within ten days.
-
No solicitation of employees: Though the court found no evidence of solicitation, it held that the defection of several employees to Dr Dubey's clinic warranted the protective direction, particularly given the "false pretexts" cited by one employee for leaving Silvermaple.
Key Observations on Factual Allegations
The court made several
findings that shaped its interim orders. On the disparagement issue, it noted that Dr Dubey's Instagram posts—including one calling a Silvermaple procedure "fraud" and another alleging the plaintiffs were
"being investigated by the crime branch for causing folliculitis"
—were clearly actionable. The defendants' concession that all such posts had been removed helped avoid further interim directions.
However, the court declined to find a breach of the or confidentiality covenants at this stage. It observed that Gurgaon, where Dr Dubey set up his clinic, is not within Delhi, and the Severance Agreement only restricted competition within Delhi after the one-year period. On the solicitation of clients, the court noted that a single WhatsApp message informing a former patient of Dr Dubey's new clinic did not, by itself, amount to solicitation.
The Problem of Prolonged Interim Orders
The court's refusal to grant an also reflects a growing judicial awareness about the dangers of interim orders that effectively become permanent. The additional source on interim orders highlights how such orders can strangle a business before it has a chance to defend itself. By requiring the defendants to be heard, Justice Shankar avoided the risk of creating a final order without a full trial—a scenario that the has repeatedly warned against.
The court set as the next date for hearing the application, with a direction that no extensions of time for filing replies or rejoinders would be granted.
Decision
For now, the plaintiffs have secured an interim shield against disparagement, misuse of their data, and copyright infringement, but they have not obtained the broad injunction they sought against the DFI mark. Dr Ajay Dubey can continue using the acronym as a descriptor of his technique, but he must do so without crossing the line into trademark use—an issue that remains to be adjudicated after the defendants file their response.
The case will be keenly watched as it tests the boundaries of post-employment restraints and the of a competitor's trademark. But the more immediate lesson lies in the court's insistence on due process: even in an era of rapid commercial litigation, a defendant who has already invested time and resources in a mark is entitled to be heard before the sword of an interim injunction falls.
