Trademark injunction vacated for suppression of material registration and failure to show prima facie passing off.

Ex parte trademark injunction was vacated because the plaintiff had not made full and fair disclosure of the defendant's existing registration in class 4 and had arrayed the parties in a manner viewed as suppressive. The court held that concealment of a material trademark registration disentitled the plaintiff to equitable relief. It further found no prima facie passing off, as the plaintiff produced no material showing misrepresentation, consumer deception, or likely injury to goodwill from the defendant's use of the mark for lubricants. The defendant's prior and extensive use, together with the absence of confusion evidence, meant the interim restraint could not be sustained.

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Issues: (i) Whether the plaintiff had concealed and suppressed material facts by failing to disclose the defendant's registration of the mark in class 4 and by the manner in which the parties were arrayed. (ii) Whether the plaintiff had made out a prima facie case of passing off so as to sustain the ex parte ad interim injunction.

Issue (i): Whether the plaintiff had concealed and suppressed material facts by failing to disclose the defendant's registration of the mark in class 4 and by the manner in which the parties were arrayed.

Analysis: The pleadings and the earlier ex parte order proceeded on the basis that the defendant had no registration in class 4, although the defendant in fact held a registration for the same mark in that class. In an injunction matter, the plaintiff is expected to make a full and fair disclosure and to verify the trademark position before seeking ex parte relief. The court also treated the arraying of the principal defendant as the second defendant, while naming a dealer as the first defendant, as indicative of an attempt to avoid prompt appearance by the principal defendant.

Conclusion: The plaintiff was found to have concealed and suppressed material facts, and this disentitled it to equitable relief.

Issue (ii): Whether the plaintiff had made out a prima facie case of passing off so as to sustain the ex parte ad interim injunction.

Analysis: A passing off action required proof of misrepresentation by the defendant, made in the course of trade to prospective customers, likely to injure the plaintiff's goodwill, and causing or likely to cause damage. The court held that the plaintiff had not produced material showing that the defendant's use of the mark for lubricants amounted to misrepresentation or that consumers were being misled into believing that the defendant's goods were those of the plaintiff. The defendant's prior and extensive use of the mark in the automotive field, together with the absence of material on confusion or injury to goodwill, meant that the plaintiff had not established the essential ingredients of passing off prima facie.

Conclusion: The plaintiff failed to establish a prima facie case of passing off.

Final Conclusion: The injunction granted earlier could not be confirmed, and the defendant was entitled to vacation of that restraint.

Ratio Decidendi: Ex parte injunction in a trademark dispute cannot be sustained where the plaintiff suppresses a material trademark registration and fails to establish the essential elements of passing off, especially misrepresentation and likely injury to goodwill.

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