The doctrine of approbate and reprobate is rooted in the principle of equity that prevents a person from making contradictory statements or taking advantage of two contradicting positions in legal proceedings. It embodies the maxim, “allegans contraria non est audiendus,” meaning a person alleging contrary statements should not be heard. This principle ensures consistency and fairness in judicial proceedings. In the realm of trademark law, this doctrine is crucial to maintaining the integrity of the system and preventing abuse of rights. This doctrine essentially uses the idiom, “You can’t have your cake and eat it too” to convey its meaning.
Understanding Approbate and Reprobate
Approbate and reprobate are antonyms to each other. Approbate simply means ‘to accept’ while reprobate on the other hand means ‘to reject’. The situation of approbate and reprobate arises in a judicial proceeding when one party approbates i.e., accepts a set of facts, statements or takes a stand about a situation and later reprobates i.e., rejects the same, especially to gain advantage over the other party. This concept of approbate and reprobate originates from the laws of Scotland and is based on the fundamental doctrines of estoppel and election.
The Doctrine of Estoppel prevents a party from taking a position in legal proceedings that contradicts their previous statements or actions, especially if the other party relied on those statements to their detriment.
The Doctrine of Election is relevant in the sense that a person must elect or choose one of the two inconsistent things or contradictory rights and when he had made such election, he cannot retract from it to procure benefit from the other right as well. Both doctrines are founded on common law of equity ensuring that if a person consciously elects to accept a statement or situation and accrues its benefits, then he is estopped from denying the validity of the same on later stage. The courts generally apply this doctrine to ensure that parties do not benefit from inconsistent positions, as it would undermine the administration of justice.
The application of approbate and reprobate can be understood in context of various provisions of law such as Bhartiya Nyay Sakshya Adhiniyam, 2023; Arbitration and Conciliation Act, 1996; Contract Act, 1872, etc.
Relevance in Trademark Law
Trademark law is fundamentally structured to strike an equilibrium between the interests of trademark proprietors and consumers, ensuring that trademarks serve their purpose of distinguishing goods and services. This doctrine has been applied consistently by the Indian courts, even in trademark disputes, particularly when assessing and analyzing a party’s standing regarding similarities and conflict between competing trademarks, or trademark’s distinctiveness or generic nature. The doctrine of approbate and reprobate becomes relevant in various scenarios explained through the given illustrations:
1. Regarding Similarity/Dissimilarity
The doctrine is often invoked when a party, after asserting that its trademark is distinct from another, later contradicts itself by claiming similarity for attaining strategic advantage in legal proceedings or vice versa.
Illustration:
- Business A files for the trademark “MysticBrew” for coffee mugs.
- During the examination process, the Examiner raises an objection, citing a prior registered mark “MysticBrewBlack” belonging to Business B. In its response, Business A argues that its mark is distinctive and dissimilar from the cited mark.
- Later, after securing registration, Business A initiates rectification proceedings against Business B’ registered trademark, claiming that “MysticBrew Black” is deceptively similar to its own mark and should be removed.
This contradictory conduct is a textbook example of approbate and reprobate. A party cannot claim dissimilarity to secure registration and then assert similarity to challenge another’s trademark. The doctrine stops them from acting in this contradictory manner.
FURTHER, this doctrine is also applicable in case of Parallel Proceedings/ Counter-blasting matter, where a party, in response to an opposition filed against them, retaliates by filing a separate rectification/opposition against the original opponent. This situation is referred to as Parallel Proceedings and such subsequent opposition/rectification filed by the initial applicant is called counterblasting. This is one of the most common scenarios where the doctrine of approbate and reprobate applies. In such cases, the applicant initially claims dissimilarity between their trademark and the registered trademark to defend their mark against the opposition. However, they later file a rectification against the same registered trademark, alleging similarity. This tactic is often employed to undermine, distract, or weaken the opposing party’s position or to pressure them into withdrawing or abandoning their opposition, rather than addressing the merits of the original case.
Case: Dwijendra Narain Roy v. Joges Chandra De[i], The Division Bench of the Calcutta High Court has succinctly held: “12. It is an elementary rule that a party litigant cannot be permitted to assume inconsistent positions in Court, to play fast and loose, to blow hot and cold, to approbate and reprobate to the detriment of his opponent. This wholesome doctrine, the learned Judge held, applies not only to successive stages of the same suit, but also to another suit than the one in which the position was taken up, provided the second suit grows out of the judgment in the first”.
2. Regarding Material Facts
The doctrine bars parties from altering material facts as per their convenience in different proceedings.
Illustration:
Business A applies for the trademark “FruitFizz”, claiming use since 2020. When opposed by Business D, citing a similar mark used from 2018, Business A shifts its stance, claiming use since 2015. The doctrine of approbate and reprobate states that they cannot the change the same material fact to suit their defense—both the facts must align.
3. Regarding User Claims in Trademark Applications
When an applicant makes contradictory claims about the date of first use of the same trademark in different applications, doctrine of approbate and reprobate applies and condemns such contradictory user claims.
Illustration:
Business A has applied for two trademarks:
- Word Mark: “EcoCup” (use claimed since 2021).
- Device Mark: Logo of “EcoCup” (use claimed since 2019).
This is a prima facie case of applicability of Doctrine of Approbate and Reprobate since it is a matter of common sense that a device bearing the word mark could not precede the adoption of the word mark itself.
Example: If Business B claims to have used “COLGATE SUPER MAX FRESH” since 2015, it cannot later claim the mark “COLGATE” was adopted in 2020. The two claims must align.
The doctrine of approbate and reprobate states that they cannot pick and choose which date works best for them—both claims should align.
4. Regarding Generic Marks
party cannot alternate between asserting that a mark is distinctive for registration and later claiming it is generic to avoid infringement liability.
Illustration:
Business Y registers the mark “Quick,” asserting it as distinctive and coined. When sued by Business X for infringement, Business Y argues that “Quick” is a generic word over which no person can claim exclusivity or monopolistic rights.
According to the doctrine of approbate and reprobate, Business Y cannot take both sides. They cannot themselves apply to obtain exclusivity over the term “Quick” by filing for trademark registration and later, when convenient, claim that “Quick” is generic in a legal dispute.
Case Law:
- The court in the case of Mind Gym Ltd. v. Mindgym Kids Library Pvt. Ltd.[ii], held as under: “11. In the present case, it is admitted by the defendant that MIND GYM is a coined mark and even the defendant itself has applied for registration of the trademark MINDGYM. At this stage, I am of the considered view that once the defendant has sought the registration on the basis of distinctive mark, he is stopped from raising the validity of the same trade mark in an infringement action. Two contrary pleas are raised by the defendant, who now cannot be allowed to take the benefit of the same if any action is taken by the registered proprietor.”
- In the case of PEPS Industries (P) Ltd. v. Kurlon Ltd.,[iii] wherein the court observed that when the defendant has sought registration of the same mark as that of the plaintiff (NO TURN’ in the said case), such a defendant is estopped from raising a question on the validity of the said mark on the ground of it being descriptive in nature. The court said:
“23. Similarly, the courts have consistently held that when the party itself is seeking the registration of a mark, it cannot question the mark as being descriptive and incapable of registration”.
5. Regarding Geographical Restrictions
This doctrine also applies when a party agrees to a particular geographical restriction during registration of its trademark but later attempts to circumvent such restriction by filing subsequent trademark applications for the same mark.
Illustration:
Business B is granted registration for the mark “Brewtea” by the Registrar subject to imposition of the restriction as to the use of the said mark for the geographical territory of Madhya Pradesh only. Later, B slyly files another application for the same mark without restrictions, seeking national protection.
The doctrine prevents Business B from reneging on the original territorial limitation they accepted.
6. Regarding Conditions imposed
When a trademark is granted registration subject to specific conditions, the applicant cannot later contradict/disregard those conditions.
Illustration:
B applies for registration of the trademark, “Mann Bookdepot” He was granted registration with a condition imposed by the Registrar that – “The applicant does not claim any exclusive right over the word ‘Bookdepot’ separately.” Later, B applies for registration of the word ‘Bookdepot’ in a separate application.
This is the prima facie case of application of doctrine of approbate and reprobate as B cannot file a separate application for registration of the word ‘Bookdepot’ after accepting the condition of registration of “Mann Bookdepot” to gain benefit.
Multi-Layered Nature of the Doctrine of Approbate and Reprobate in Trademark Disputes
The doctrine of approbate and reprobate is inherently multi-layered, as it goes beyond a superficial application of preventing contradictory claims. At its core, it upholds the principles of consistency, fairness, and good faith in legal proceedings. The doctrine serves to preserve the integrity of the legal process by preventing manipulation, ensuring that parties are bound by their earlier representations, and maintaining consistency throughout the dispute resolution process. Its depth can be understood through the following facets:
- Principle of Consistency in Legal Claims: The principle of consistency goes beyond mere appearances; it requires a party to uphold its initial representations, even when faced with the opportunity to manipulate facts or legal interpretations for its advantage. For example, in trademark disputes, when a party initially claims that its mark is distinctive, it cannot later argue that the mark is generic to gain advantage in an invalidity claim or to avoid infringement liability. This principle operates on a deep ethical level — preventing bad faith exploitation of legal processes.
- Prevention of Abuse of Legal Process: The doctrine is designed to prevent abuse of process in situations where parties try to use inconsistent positions for tactical advantage. This applies to situations such as parallel proceedings, where a party might seek to take contradictory stances in different forums, or in the case of changing user dates or marks’ distinctiveness, thus fostering fair competition and protecting against efforts to exploit legal loopholes.
- Application in Complex Disputes: In trademark disputes, the complexity often arises when multiple claims, applications, and legal actions are happening simultaneously. The doctrine becomes multi-layered because it applies across different stages of legal proceedings, from filing and registration to litigation and settlement negotiations. It ensures that a party is consistent not just in one forum but across the entire dispute, safeguarding against inconsistent representations that could undermine legal outcomes.
- Protection of Third-Party Rights: The doctrine also serves to protect the rights of third parties by preventing a party from accepting benefits from one position while later attempting to undermine or negate the legal implications of that position to disadvantage another party.
- Strategic Negotiations and Legal Leverage: The doctrine prevents a party from using tactical inconsistency as a bargaining tool. For example, if a party first claims one set of facts to obtain a favourable ruling in one jurisdiction, they cannot later reframe the facts to leverage a more favourable outcome in a different jurisdiction or legal forum.
- Impact on Public Policy and Legal Precedent: The doctrine is a safeguard for public policy. Courts rely on consistent legal reasoning to shape legal precedents, and the doctrine upholds this predictability and stability, thereby contributing to the legal certainty necessary in trademark protection.
Landmark Judgments and Judicial Opinions
- Amar Singh v. Union of India,[iv] (SCC p. 86, para 50): The Supreme Court emphasized that litigants must approach the court with clean hands and sincerity. By taking inconsistent or contradictory positions in legal proceedings, they violate the principles of equity and fair play. The SC declared that: “50. This Court wants to make it clear that an action at law is not a game of chess. A litigant who comes to court and invokes its writ jurisdiction must come with clean hands. He cannot prevaricate and take inconsistent positions.”
- Suzuki Parasrampuria Suitings (P) Ltd. v. Official Liquidator[v]: The court held that while a litigant may take different stands at various stages, they cannot adopt contradictory positions within the same case based on the same facts. Such inconsistent behavior undermines the integrity of the legal process. It stated that: “12. A litigant can take different stands at different times but cannot take contradictory stands in the same case. A party cannot be permitted to approbate and reprobate on the same facts and take inconsistent shifting stands. The untenability of an inconsistent stand in the same case was considered in Amar Singh v. Union of India.”
- Neon Laboratories v. Thermis Medicare Ltd.[vi]: The court ruled that a defendant cannot argue that a mark is generic or common to the trade while simultaneously seeking registration of the same mark. Such contradictory actions amount to estoppel by conduct and violate the principle against approbating and reprobating. “21. The issue of whether a defendant can take such a plea of a mark or a prominent feature of a mark being common to the trade when the defendant has himself applied for registration is no longer res integra : the second action defeats the first argument. This seems to me logical. A man may well say, “I choose to use this particular mark because it is my belief that it is common to our trade and therefore none may claim exclusivity over it.” It is quite another for him to say “I will contend in opposition to a claim of exclusivity that the mark I have adopted is so common to our trade that none may claim exclusivity, but I will myself nonetheless apply for registration and thereby mount precisely such a claim to monopoly, and it matters not that implicit in my registration application is a self-annihilating contradiction of my own stand of the mark being commonplace.” There is a form of estoppel by conduct that applies to such a defendant. A man may not ‘approbate and reprobate.’ He may take inconsistent stands, but not ones that are mutually destructive.”
Conclusion
The doctrine of approbate and reprobate ensures that trademark law operates equitably, discouraging opportunistic and inconsistent behaviour. By enforcing this principle, courts maintain the integrity of the legal system and safeguard the interests of both trademark owners and consumers. Practitioners and stakeholders in trademark law must recognize the importance of consistent claims and actions to avoid unfavourable outcomes. Through case law and practical applications, this doctrine remains a cornerstone of justice in trademark disputes.
Author: Ms. Manvi Jain & Swati Agrawal, Law Student at Amity University Madhya Pradesh.
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[i] AIR 1924 Cal 600, Dwijendra Narain Roy vs Joges Chandra De And Ors. on 31 December, 1923
[ii] 2014 SCC OnLine Del 1240, Mind Gym Ltd. vs Mindgym Kids Library Pvt. Ltd. on 21 March, 2014
[iii] 2022 SCC OnLine Del 3275, Peps Industries Private Limited vs Kurlon Limited on 7 October, 2022
[iv] (2011) 7 SCC 69, Amar Singh vs Union Of India & Ors on 11 May, 2011
[v] (2018) 10 SCC 707, Suzuki Parasrampuria Suitings Pvt. … vs The Official Liquidator Of Mahendra … on 8 October, 2018
[vi] (2014) 60 PTC 621 (Bom), Neon Laboratories Ltd vs Themis Medicare Ltd on 16 September, 2014
