Suppression of contradictory statements to trademark registry asserting marks dissimilar disentitles interim injunction in passing off and copyright suit; clean hands and prosecution history estoppel bar relief despite prima facie case.

JUDGMENT :

BHARATI DANGRE, J.

1. The present Commercial Appeal is filed by the Original Plaintiff, Laser Shaving (India) Pvt Ltd (hereinafter referred to as Laser Shaving) being aggrieved by the impugned order passed by the learned Single Judge on 25/06/2025, thereby dismissing the application by recording that applicant has failed to establish prima facie case and also that the applicants iniquitous conduct disentitle it for any relief.

2. We have heard learned counsel, Mr. Rohan Kadam, for the Appellant and learned counsel Mr. Carl Patel for the Respondents. Since a consensus is expressed by the respective counsel to take up the Commercial Appeal for hearing, instead of adjudicating on the Interim Application, seeking stay of the impugned order dated 25/06/2025, we have taken up the Appeal for hearing.

3. Before we pronounce upon the legality and justiciability of the impugned order, in the wake of the arguments advanced by Mr. Kadam, countered by Mr. Carl Patel, we deem it appropriate to refer to the background facts leading to the filing of the Suit and subsequently refusal of the injunction as claimed by the Plaintiff through the Interim Application No.110 of 2025, filed in the Suit.

4. It is the case of the Plaintiff, that it is a company incorporated under the Companies Act, 1956 and is engaged in the business of manufacturing and selling inter-alia safety razors, safety razor blades, shaving systems and like goods.

As per the plaint, it is an old, established and reputed manufacturer and seller of safety razor blades which are sold world wide and the company vouches for its quality. According to the plaint, the goods belonging to the Plaintiff are available across the world including U.S.A, Europe, the Middle East, amongst others and the goods are popular in Men’s personal care and grooming industry. As per the plaint, the Plaintiff secured ISO certification for its product and also bagged several prestigious international awards, which stand testimony to the superior quality of its goods.

It is the claim of the Plaintiff that with constant innovation and highest decree of precision the product manufactured by the Plaintiff has enhanced the shaving experience and the Plaintiff expanded its business activity to cover deodorants, after shave skin conditioners, shave gel, after shave splashes and bath gels etc.

In the course of its business activity, the Plaintiff adopted various distinctive trade marks to be used upon and in relation to its goods/ business and it coined and conceived mark “SETMAX” by commissioning one Mr. Palala Dwarka Nath, a graphic designer, to design and create the artistic work ‘SetMax Platinum Blades’. The packaging / trade dress designed, according to the Plaintiff is original and unique artistic work created by a graphic designer, for valuable consideration and the creation of it required a substantial investment of labour, time and capital. The Plaintiff therefore claimed that it is the owner of the copyright subsisting in the said artistic packaging/trade dress reflected