[Cites 15, Cited by 0]
Bombay High Court
Apex Metchem Private Limited vs Asian Paints Limited on 30 March, 2026
2026:BHC-OS:7627
29 IA 7417-2025.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO. 7417 OF 2025
IN
COMMERCIAL IP SUIT (L) NO. 28791 OF 2025
Apex Metchem Private Limited ... Applicant/
In the matter between: Orig.Defendant.
Asian Paints Limited ... Plaintiff.
Versus
Apex Metchem Private Limited ... Defendant.
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Mr G. D. Bansal, Mr. Rishabh Bansal, Mr. Arnav Goyal, Mr. Dharmendra Gupta
i/by Mr. Hrutik Chavan for the Applicant in IA/7417/2025.
Mr. Amey Nargolkar, Ms. Parveen Anand i/by Khaitanand Co. for the original
Plaintiff.
Ms. E.S. D'Souza, Section officer, Office of Court Receiver, present.
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Coram : Sharmila U. Deshmukh, J.
Reserved on : February 16, 2026.
Pronounced on : March 30, 2026.
ORDER :
1. The Interim Application has been preferred under Order 39 Rule
4 of the Code of Civil Procedure, 1908 (for short, "CPC") seeking
vacation of the ex parte ad interim order dated 23rd September, 2025
passed by this Court in Interim Application (L) No.28995 of 2025.
2. By the ex parte ad interim order of 23rd September, 2025, this
Court restrained the Defendant from using the impugned mark
"APEX" or any mark identical or similar to the said trade mark so as to
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infringe the Plaintiff's registered trade mark "APEX" and Court
Receiver came to be appointed. The commission came to be executed
and the infringing goods were seized by the Court Receiver. The Court
Receiver's Report is placed on record.
3. The Interim Application pleads that the Defendant-Applicant is
constituent part of a large, well-established family business
conglomerate established by the members of Bhatia Family. The
adoption of the mark "APEX", predates the Plaintiff's claimed
adoption by decades. In 1966, the patriarch of the business group
commenced business under name and style of M/s Apex Sales
Corporation as sole proprietor and the adoption of the trade mark
and trading name Apex has been continued since then. The sole
proprietorship firm was converted into partnership firm retaining the
original name of M/s. Apex Sales Corporation and thereafter, the
present Defendant-Applicant company came to be incorporated. The
Defendant's prior use of "Apex" mark is evidenced by the activities of
M/s Apex Paints which was proprietorship firm established in or
around the year 1980.
4. The earliest pre incorporation step for availability of the name
is dated 4th June, 1993 and the company came to be incorporated on
2nd March, 1995. The Defendant and its predecessors have diversified
their business operation under the Apex mark across various cognate
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and allied industrial segments since the year 1966.
5. It is stated that the Plaintiff claims to have adopted the mark
APEX in the year 1995, however the website history of the Plaintiff
records that the 'APEX Textured Exterior Emulsion', was commercially
launched around 2003-2004 and therefore the actual use of the Apex
mark in the market postdates the Defendants continuous and
documented use since 1966. The Plaintiff has suppressed the
Defendant' prior long standing and open use of the mark Apex and
wrongfully obtained and executed the ex parte ad-interim order. The
Plaintiff's sudden discovery of the Defendant in August, 2025 is
falsehood, as the Plaintiff was acquainted with the particulars
detailing the prior existence of the Defendant annexed by the
Plaintiff with the plaint. The Plaintiff's assertion that its claim trade
mark Apex has achieved the status of well-known mark is factually
incorrect as the list of trade mark published by the Trade Mark
Registry does not include the Plaintiff's trade mark Apex.
6. Mr. Bansal, Learned counsel appearing for the Defendant-
Applicant submits that it is well settled that the party seeking ex parte
ad interim injunction must disclose all material facts to the Court. He
submits that the Defendant has established prior adoption and
continuous use of the trade name "Apex" since the year 1995. He
submits that the Plaintiff has suppressed the prior user by the
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Defendant of the Apex mark despite the incorporation date and
extensive statutory records pertaining to the Defendant being
available in public domain. He submits that one of the relief sought
was to injunct the Defendant from using the mark as its trade name
and therefore the prior corporate existence of the Defendant was
material fact to be brought to the notice of the Court. He submits
that the Plaintiff was aware of the Defendant's incorporation in the
year 1995 as it had annexed the Defendant's website extract to the
plaint. He submits that the use of the mark since the year 1995 was
not brought to the notice of the Court and there is no pleading about
the Defendant' incorporation in the year 1995.He submits that despite
being aware of Defendant's existence through the website, the
Plaintiff has falsely pleaded that it could not come across any
information regarding the Defendant's period of use.
7. He points out to the pleadings in paragraph 18 of the plaint
that the search was conducted of the Defendant' website and points
out page No.262 of the plaint which shows that the company was
started in the year 1995 for manufacturing of industrial paints,
solvents and thinner used in various segments of industries. He
submits that the infringement, which is being claimed, is by use of the
domain name and there is no document to show the Plaintiff's user
since the year 1995. He points out to the specimen invoices annexed
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to the plaint to contend that the invoices do not demonstrate the use
of the mark Apex. He submits that the sales invoice at page 131 shows
the use of the mark Apex for the first time in the year 2017 and no
prior user is shown.
8. He would further point out the pleading in paragraph 14 of the
plaint and the submission recorded in paragraph 8 of the ex-parte ad-
interim order dated 23rd September, 2025 to contend that in the list
published by the Trade Mark Registry the Plaintiff's mark is not
declared as a well-known mark. He submits that under Section 47 of
the Trade Marks Act non user of the trade mark for five years will
entail removal from the register and imposition of limitation and that
no exclusive use can be granted in respect of such trade mark. He
submits that the sales invoices, if any, is shown only till the year 2020
and there is nothing further till the filing of the suit which was in the
year 2025.
9. He submits that the registration of device mark of Apex under
Registration No.857108 and 2130509 does not grant an exclusive
monopoly over the word Apex. The trade mark registered under
Registration No.2723456 and 2723457 are on proposed to be used
basis which cannot override actual long standing prior user. He
submits that the Registrations Nos.2130514 and 2130524 are
registration in Class 19 which do not cover the relevant goods. He
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submits that the Defendant is an established entity with turnover of
over Rs.80 Crores and not fly by night operator. He submits that the ex
parte order obtained by suppression has crippled a legitimate
business. In support, he relies upon the following decisions:
(i) Kewal Ashokbhai Vasoya v. Suarabhakti Goods (P) Ltd.
[2022 SCC OnLine Bom 3335]
(ii) M/s. Wheels India vs. S.Nirmal Singh and Anr. [2009 SCC
OnLine Del 3251]
(iii) Neon Laboratories Ltd. v. Medical Technologies Ltd.,
[(2016) 2 SCC 672]
(iv) S. Syed Mohideen v. P. Sulochana Bai, [(2016) 2 SCC 683]
(v) State Bank of Travancore v. Kingston Computers (I) (P)
Ltd., [(2011) 11 SCC 524]
(vi) Kewal Ashokbhai Vasoya v. Suarabhakti Goods (P) Ltd.,
[2022 SCC OnLine Bom 3335]
(vii) Shoban Salim Thakur v. Chaitanya Arora, [Bombay High
Court] Order dated 15th October 2025 in IA (L) No. 18278
of 2025 in Comm. Suit. (L) No. 18197 of 2025
(viii) HAB Pharmaceutical and Research Limited v Sunrise
Remidies Private Limited, [Bombay High Court] Order
dated 11.11.2022 in Interim Application (L) No. 26835 of
2022 in Commericial IP Suit (L) No. 26827 of 2022
(ix) Mittal Electronics v. Sujata Home Applicances (P) Ltd.,
[2020 SCC Online Del 2658]
(x) Century Traders v. Roshan Lal Duggar & Co., [1977 SCC
OnLine Del 50]
(xi) VGN Projects Estate Private Limited v. M/s. VGK Builders
Pvt. Ltd. And others, [2025 NCMHC 705]
(xii) Jindal Industries (P) Ltd. v. Jindal Sanitaryware (P) Ltd.,
[(2024) 3 HCC (Del) 742]
(xiii) Campus Activiewear Ltd. v. Rama Shankar Garg, [2023
SCC OnLine Del 1384]
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(xiv) Vasundhara Jewellers (P) Ltd. v. Kirat Vinodbhai Jadvani,
[2022 SCC OnLine Del 3370]
(xv) Sanjha Chulha v. Sanjha Chulha, [2022 SCC OnLine Del
3616]
(xvi) Sabu Trade Private Limited v. Rajkumar Sabu, [2019 (2)
CTC 672]
(xvii) Hastsun Agro Product v. Sri Ganapathy Dairy,Madras High
Court Order dated 14.09.2021, in CS. No. 748 of 2018
(xviii) Crayons Advertising Ltd. v. Crayon Advertising, [2014 SCC
OnLine Del 218]
(xix) Wheels India v. S. Nirmal Singh, [2009 SCC OnLine Del
3251]
(xx) Narendra Kumar and Co. v. Everest Beverages and Food,
[2008 SCC Online Del 1759]
(xxi) C. Krishniah Chetty v. Deepali Co. (P) Ltd., [2021 SCC
OnLine Kar 12513]
10. Per contra, Mr. Nargolkar, learned counsel appearing for the
Plaintiff/Respondent submits that there are sufficient disclosures in
the plaint and points out paragraph 18 of the plaint. He submits that
the Plaintiff has annexed printout from the Defendant's website and
third party website which clearly mentions that the Defendant
Company was started in the year 1995 and hence there is no
suppression. He submits that the Plaintiff did not press for relief of
ad interim injunction against use of the corporate name and domain
name of the Defendant. He would submit that in paragraph 18, it is
specifically pleaded that it never came across the impugned goods
until it got information from its investigating agency and despite
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conducting inquiries about the Defendant in the market, the Plaintiff
could not come across any information regarding the period since
when the Defendant have commenced the infringing activities in
relation to the impugned goods. He would submit that there is
nothing on the Defendant' website to indicate the use of the word
mark Apex as trade mark for its product.
11. He submits that the Plaintiff has not pleaded that it has been
declared a well-known trade mark by the Trade Mark Registry and it is
specifically pleaded that the trade mark is declared well-known by this
Court in the orders annexed at Exhibit "F" of the plaint.
12. He would further point out the news articles and the
advertisement annexed at page No.86 to 88 of the plaint, showing the
use of the mark Apex by the Plaintiff in the year 1997. He submits that
in the trade mark application the user is claimed since 24 th February,
1995. He points out that the sales and advertisement figures have
been furnished from 1995 till 2020.
13. He would further submit that the contention of non-user is not
the pleaded case of Defendant. He submits that there has been
continuous and uninterrupted use of the trademark by the Plaintiff,
and there are new variants of the trade mark launched.
14. He submits that the Defendant was incorporated in the year
1995 and there is no document to establish devolution of rights in
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respect of the impugned mark from the concerns relied upon the
interim application and there is not a single document produced
showing use of the impugned mark in course of the trade since the
year 1995.
15. I have considered the submissions and perused the record.
16. The present application has been filed under Order 39 Rule 4 of
the CPC, which reads as under:
"ORDER XXXIX - Temporary Injunctions and Interlocutory
Orders. Temporary injunctions -
4. Order for injunction may be discharged, varied or set aside.
--Any order for an injunction may be discharged, or varied, or set
aside by the Court, on application made thereto by any party
dissatisfied with such order:
Provided that if in an application for temporary injunction or
in any affidavit supporting such application, a party has knowingly
made a false or misleading statement in relation to a material
particular and the injunction was granted without giving notice to
the opposite party, the Court shall vacate the injunction unless, for
reasons to be recorded, it considers that it is not necessary so to do
in the interests of justice:
Provided further that where an order for injunction has been
passed after giving to a party an opportunity of being heard, the
order shall not be discharged, varied or set aside on the application
of that party except where such discharge, variation or setting
aside has been necessitated by a change in the circumstances, or
unless the Court is satisfied that the order has caused undue
hardship to that party."
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17. Plain reading of Order 39 Rule 4 of CPC makes it evident that
the eventuality contemplated therein is existence of an intentional
false or misleading statement in relation to material fact which would
lead to vacation of the ad interim order. Despite existence of such
circumstances, the Court has the discretion not to vacate the
injunction in interest of justice upon recording reasons for the same.
18. In the case of Kewal Ashokbhai Vasoya vs Suarabhakti Goods
Pvt Ltd (supra), the Hon'ble Division Bench of this Court considered
the provisions of Order 39 Rule 4 of CPC in respect of the trade mark
infringement and summarized the duties that fall on the applicant
while applying for injunction without notice as set out in paragraph
No.15 and 16 of the plaint. The Hon'ble Division Bench held that the
applicant seeking ad-interim relief without notice must make a full
and reasonably accurate disclosure of material facts and must invite
the Court's attention to factual, legal and procedural issues. It held
the duty of disclosure includes matter of which the applicant would
have been aware had he made reasonable inquiries. In context of
trade mark infringement the disclosure was as to whether the
defendant had sought registration and when and with what effective
date, with or without disclaimer. There must be market information
too as to how long has the defendant been in the market with the
rival product and mark and in what area and in what manner. It held
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that the phrase "knowingly made a false or misleading statement in
relation to a material particular" occurring in Order 39 Rule 4 as being
the requirement of fair disclosure.
19. There is a greater duty imposed on the Plaintiff who seeks to
move without notice to the Defendant, which is an exception to the
rule of hearing both the parties. The Plaintiff must be shown to have
made necessary and proper enquiries, which if made, would have
resulted in the Plaintiff knowing about the adoption, use and
registration of the rival mark by the Defendant. The Plaintiff coming
with a case of trade mark infringement and seeking to move without
notice must make necessary reasonable enquiries and must not only
place all material facts before the Court, but also draw attention of
the Court to all material facts, which would prima facie show that the
Defendant would have no defence to the claim of infringement. The
passing of an ad interim injunction without notice has the ability to
cripple the Defendant's business and therefore all facts must be
placed before the Court to satisfy that the injunction is prima facie
necessary to prevent violation of the Plaintiff's statutory and
common law rights. As held in Kewal Ashokbhai Vasoya (supra), in IPR
matters, the reasonable inquiry and disclosure would contemplate a
complete disclosure as to the date of adoption, use and registration, if
any, of the rival mark. It is well settled that prior user of the trade
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mark/trade name constitute a valid defence to infringement action.
20. The submissions of the Plaintiff as recorded in the order of 23 rd
September, 2025 is that the trade mark Apex is in use by the Plaintiff
since the year 1995. The registration certificates, specimen
advertisement, promotional material, specimen tax invoices, sales
figure from 1994-1995 were stated to be appended to the plaint. It
was submitted that the Apex trade mark has been declared as well
known trade mark by the Bombay High Court.
21. The disclosure about the Defendant was that the Defendant
apart from using the mark Apex in respect of paints, thinners, lacquers
etc was also using the mark as part of its trading name. It was
submitted that there is no application for registration of the
infringing mark and that the Defendant's details are available on its
website as well as third party websites. It was submitted that the
Plaintiff never came across the impugned goods until it got
information from its investigation agency. The pleading in paragraph
17 of the plaint is that the knowledge of the impugned goods was
acquired in the third week of August, 2025, that the Defendant had
not filed any application for trade mark registration and that the
details of the Defendant are available on its website. It is specifically
pleaded in paragraph 18 that despite conducting inquiries about the
Defendant in the market, the Plaintiff could not come across any
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information regarding the period when the Defendant have
commenced the infringing activities in relation to its impugned goods.
22. There is no pleading about the nature of inquiries conducted by
the Plaintiff as in today's era of advanced technology, information is
available at a click of the button. The Defendant is incorporated as
private limited company and the details about the business,
incorporation etc would be available within public domain and the
information would be easily accessible. The Defendant's Corporate
existence since the year 1995 in paint industry would impose a greater
obligation on Plaintiff to take all efforts to trace the period of use of
trademark by Defendant. Considering the long standing existence of
Defendants, it is not sufficient to make a bald assertion that despite
conducting enquiries, the Plaintiff could not come across any
information about Defendant's period of use of the trademark. There
is no pleading in the plaint as to the enquiries carried out by Plaintiff
as it is difficult to accept that the Defendant has been incorporated
since the year 1995 and no information is available in public domain.
The importance of disclosure cannot be undermined when considered
in the context of consequences which entail upon injunctive relief
being granted.
23. The Plaintiff seeks an order restraining the Defendant from
using the impugned mark Apex in respect of the impugned goods
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which are paints, thinners and lacquers, etc. To the plaint are annexed
the colour photographs/representation of the impugned goods at
Exhibit 'G' and Exhibit 'H' is an extract of the Defendant' website. The
products depicted on the Defendant's website are the same products
which are set out at Exhibit 'G'. The website of Defendant clearly
mentions the Defendant's corporate name and introduces itself as
under:
"APEX Metchem Pvt Ltd is a private limited company started
in the year 1995 for the manufacturing of Industrial Paints,
Solvents & Thinner used in various segment of Industries."
24. The website was therefore a clear indicator about the existence
of the Defendant company since the year 1995, and the marketing of
identical/similar products of paints, thinners etc. There is not a single
averment in the Plaint as regards the incorporation of the Defendant
in the year 1995 and this fact was not specifically brought to the
notice of the Court while obtaining ex parte ad interim relief. It is the
Plaintiff's case in paragraph 8 of the Plaint that in or around 1995, the
trade mark "APEX" was conceived and adopted for use in relation to
the Plaintiff's product. The use of the impugned trade name, at least
from the Defendant's website, appears to be in proximity with the
Plaintiff's adoption and use. The website specifically mentions that
the Defendant commenced its operations in the year 1995 for the
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manufacturing of Industrial Paints, Solvents & Thinner used in various
segments of Industries. The submissions canvassed conveyed an
impression that it is only in 3 rd week of August, 2025 that the
infringing products were found, leading to an impression about the
Defendant being a late entrant in the market.
25. In event, the attention of the Court would have been drawn to
the Defendant's website and the Court would have been made aware
of the Defendant's existence since the year 1995, it could have been
possible that notice would have been issued to the Defendant. The
Plaintiff not only seeks injunctive relief against the use of the trade
mark but also against use of the trade name. It was the duty of the
Plaintiff to point out to the Court that the Defendant has been
incorporated with the registered mark being part of its trade name
since the year 1995, which has not been disclosed.
26. A prior user of the trade mark interdicts the Plaintiff's statutory
right to claim exclusive use of its mark and was a material fact to be
brought to the notice of the Court and be adjudicated upon before
injunctive relief could be granted. The advertisement placed on record
is of the year 1997 and subsequent thereto. The invoice annexed at
page 85 is of the year 2007. The invoice annexed at Exhibit "D" from
pages 113 are illegible and it is difficult to ascertain the year of the
invoices and whether the invoices are in respect of Apex trademark.
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The legible invoices are post the year 2015. The only document
certifying the sale under the trade mark Apex since 1994-1995 is the
Chartered Accountant's certificate. The registration of the device
mark of Apex was applied on 20th May, 1999 with user detail since 24th
February, 1995. The sales turnover could be certified for the year
1995-1996 and not for year 1994. Perusal of the order dated 23 rd
September, 2025 does not reflect that the attention of the Court was
specifically drawn to invoices raised in the year 1995 to show adoption
and use, which was material in light of Defendant's incorporation in
the year 1995. The rival user have to be weighed carefully before
injunctive relief could be granted. As the Plaintiff failed to bring the
necessary material facts to notice of the Court, no such exercise could
be carried out by the Court.
27. It is no answer to say that no ex parte ad-interim relief was
granted restraining the Defendant from use of the domain name. The
mark "Apex" is an essential feature of the Defendant's trade name
and would be indistinguishable from the trade mark. If the attention
of the Court would have been drawn to the longstanding use of the
trade name, it was possible that relief without notice to the
Defendant could have been declined. There is substance in contention
of the Defendant that the Plaintiff has suppressed material facts from
this Court while obtaining the ad interim relief without notice to the
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Defendant.
28. The Plaintiff has failed to bring to the notice of the Court, the
relevant material facts evident from the Defendant's website that the
Defendant was incorporated in the year 1995 and was using the mark
as part of its trade name dealing in identical/similar goods. The
Plaintiff has failed to discharge its duty to take reasonable steps to
make necessary inquiries about the period of use of the mark by
Defendant despite being aware of the Defendant's incorporation in
the year 1995. The Court's attention was not specifically drawn to
Plaintiff's documents to show user since 1995.
29. In light of the above, the Interim Application is allowed. The
order dated 23rd September, 2025 is not continued and stands
vacated. The Defendant's product which are seized and sealed by the
Court Receiver shall stand released forthwith.
[Sharmila U. Deshmukh, J.]
30. At this stage, a request is made for stay of the present order.
The order is stayed for a period of four weeks.
[Sharmila U. Deshmukh, J.]
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Signed by: Sanjay A. Mandawgad
Designation: PA To Honourable Judge
Date: 30/03/2026 17:01:34
