Big Brother Knows All: The Doctrine of Prosecution History Estoppel

LexOrbis India

The submissions made by a proprietor during the process of registration form part of the prosecution history. In a claim for passing off before the Bombay High Court, the Bench considered the relevance of prosecution history post-registration and decided on the ability of these submissions to bind the proprietor from instituting future claims.



The Appellant-Plaintiff, being the registered proprietor of the marks ANNA IDLI GRUHA,    and  claimed that the defendant, being the registered proprietor of the mark   was infringing on their mark and sought an injunction before the District Judge, Pune. The injunction was not granted to the Appellant, and hence, the order was challenged before the Bombay High Court.


Submissions of the Appellant-Plaintiff

The plaintiff made a case that they have been using the mark since 2011, much before the defendant began his venture, and are, therefore, the prior user. They also contended that "ANNA" was the dominant feature of their mark and that usage by the defendant would create a non-existent nexus between the businesses. They argued that the representations made by the plaintiffs' attorneys in the prosecution phase would not preclude them from seeking an order for injunction and that the doctrine of prosecution history estoppel cannot be applied to the present case since one must consider the elements of passing off and not the defences taken at the time of registration in the current proceedings. They contended that the defences taken at the time of registration are limited to prosecution proceedings and cannot bind them in a claim for passing off.


Submissions of the Respondent-Defendant

The Respondent-Defendant claimed that the plaintiff had suppressed information and had not approached the Court with clean hands. They submitted that the plaintiff cannot make an assumption with regard to the relevance of the information and must submit all connected information. They contended that the plaintiff received Examination Reports citing the defendant's mark and had submitted replies to the Examination Reports claiming that there was no similarity between the marks and, therefore, cannot maintain a claim for passing off since it is contrary to their initial submission. The defendant submitted that the prosecution history cannot be ignored while considering the possibility of passing off.



The Court noted that the search reports issued for the plaintiff's marks contained the defendant's mark. The plaintiff disputed this claim by stating that there are no similarities between the marks and, therefore, there can be no deception. The Court noted that by filing these replies, the plaintiff had willfully allowed other parties to carry on their businesses containing the term ANNA since they believed their customers were not likely to be confused between their business and other businesses using ANNA in their mark.

The Court reasoned that the plaintiff had represented twice at the prosecution stage that his mark was not similar to the defendant's mark, knowing that the defendant intended to use the mark for the same class of goods, leading him to believe that he was free to use his mark and therefore cannot maintain a claim for passing off.



The Court held that the representation made by the plaintiff in the prosecution stage and its suppression disentitles the plaintiff from maintaining a claim for passing off. This decision states that deliberate representations made by a proprietor lulling one into a false sense of security or making claims of dissimilarity between the marks are intentional waivers and amount to acquiescence. This decision establishes that submissions of dissimilarity between marks are not cyclostyled replies but are conscious assertions that do not allow the maker to take shelter under the plea of prosecution history estoppel.



About the Firm


Address709-710 Tolstoy House, 15-17 Tolstoy Marg, New Delhi – 110001
Tel91-11-2371 6565
Fax91-11-2371 6556
Contact PersonManisha Singh

Related Articles