Safiya Malik

A division bench of the Delhi High Court, comprising Justice Yashwant Varma and Justice Prateek Jalan, has granted an injunction restraining the respondents from using the trademark "DISPOSAFE" in relation to medical disposable devices. The order follows a review petition seeking reconsideration of the court’s previous judgment dated May 3, 2019, in an appeal concerning the rejection of an interim injunction application. The court stated, "Review Petition No. 221/2019 is allowed," and granted the injunction until the final disposal of the suit.

The dispute originated from two commercial suits—one filed by the appellants asserting ownership over the "DISPOSAFE" trademark and seeking to restrain the respondents from using it, and the other filed by the respondents claiming rights over similar trademarks, including "DISPOCANN" and "DISPOVAN." The appellants contended that they had been using "DISPOSAFE" since at least 2011 for their medical devices. The respondents, in turn, claimed prior use of "DISPO"-formative marks and sought to prevent the appellants from using those terms.

The matter was initially heard by a Single Judge of the Delhi High Court, who dismissed the appellants’ injunction application and granted relief in favor of the respondents. The Division Bench, in the appeal proceedings, partially vacated the injunction imposed against the appellants but did not pass an explicit injunction order in favor of the appellants regarding their trademark "DISPOSAFE." The review petition challenged this omission, arguing that the court had made findings favorable to the appellants but had failed to issue a corresponding injunction order.

In their submissions, the appellants contended that the Division Bench’s previous judgment did not contain an operative order regarding the grant or refusal of an injunction concerning "DISPOSAFE." Senior counsel for the appellants referred to several paragraphs of the judgment, asserting that judicial findings had recognized the legitimacy of their claim but had omitted the necessary injunctive relief. The appellants further argued that their mark had been in continuous use, referring to financial records, invoices, and marketing expenditures as evidence.

The respondents opposed the review petition, asserting that no error apparent on the face of the record justified reconsideration. They contended that the judgment had dealt with the issue of trademark protection for descriptive or portmanteau words and had upheld the Single Judge’s denial of an injunction in favor of the appellants. They further submitted that the review petition sought a rehearing on the merits, which was beyond the scope of review jurisdiction.

The court, after examining the arguments, determined that the omission of an express injunction order in favor of the appellants constituted an error apparent on the face of the record. The judgment stated, "The review petition is, therefore, liable to be allowed and, in accordance with the order dated 10.10.2023, we turn to the merits of the appeal."

The court observed that the appellants had established a prima facie case for prior use of "DISPOSAFE" and noted that the respondents had, in a previous hearing, acknowledged that they had not commenced marketing under that name. The court recorded, "For the present purposes, the appellants have succeeded in establishing prima facie, prior use of the mark 'DISPOSAFE'. As the injunction sought is limited to the identical mark, it is unnecessary to examine any further question."

The court examined the submissions regarding prior use and balance of convenience. The judgment stated, "For the present purposes, the appellants have succeeded in establishing prima facie, prior use of the mark 'DISPOSAFE'. As the injunction sought is limited to the identical mark, it is unnecessary to examine any further question."

The judgment further stated, "The appeal is, therefore, liable to be allowed, and an injunction granted against the respondents using the mark 'DISPOSAFE', or any mark deceptively similar thereto, in relation to medical disposable devices, until the disposal of the suit."

The judgment also noted, "It is made clear that the observations in this judgment are not intended to prejudice the parties at the final hearing of their respective suits."

The court issued its final directives, stating, "Review Petition No. 221/2019 is allowed. FAO(OS)(COMM) 272/2018 is allowed. The judgment of the learned Single Judge dated 31.01.2018, in I.A. 2618/2016 and I.A. 8591/2018 is set aside. The ad-interim order dated 24.02.2016 in the said suit is restored. The respondents [Defendants in CS(COMM) 139/2016] are restrained in terms of prayers (a) and (b) of paragraph 40 of the application being I.A. No. 2618/2016."

The judgment concluded with the statement, "It is made clear that the observations in this judgment are not intended to prejudice the parties at the final hearing of their respective suits."

Case Title: Disposafe Health & Life Limited & Ors v. Rajiv Nath & Anr.

Neutral Citation: 2025:DHC:1326-DB

Case Number: FAO(OS)(COMM) 272/2018

Bench: Justice Yashwant Varma, Justice Prateek Jalan

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