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INDIA: Delhi High Court issues directions for Mandatory Documents to be filed in Trade Mark Infringement Suit

October 5, 2019

By Tulip De and Kiratraj Sadana

The Hon’ble High Court of Delhi has recently issued a set of practice directions pertaining to the documents which are to be filed mandatorily along with the plaint in Trademark Infringement disputes. The directions were given in the case Amrish Agarwal v M/s Venus Home Appliances Pvt Ltd. vide judgement dated August 27, 2019.

The Petitioner, Amrish Agarwal, filed the present appeal against the order dated August 04, 2018 by the Trial Court. In the said order, the Trial Court took on record the Legal Proceedings Certificate relating to the trademark ‘Venus’, which according to the Petitioner was filed at a belated stage by the Respondent, M/s Venus Home Appliances, as the evidence was already concluded and the matter was listed for final arguments.

The Petitioner relied on the decision passed by the Single Judge of Delhi High Court in Gold Rock World v Veejay Lakshmi Engineering Works Ltd[1], to argue that the document could not be taken into record at this belated stage.

The Court observed that the Court ought to be able to see the mark. Therefore, either the Legal Proceedings Certificate or the Registration Certificate along with the Journal extract should be filed by the Petitioner along with the Plaint.

The Court further observed that trademark registration are matters of public records which can be accessed by visiting the Indian Trade Mark Registry’s website. However, the Certificate of Registration along with the journal extract or the Legal Proceedings Certificate are to be placed as documentary evidence for the Court to consider the registration of the trade mark in question.

The Court, after going through the Petitioner’s contentions, was of the view that the Trademark Registration Certificate should have been filed at the initial stage, however in the interest of justice the Court took on record the Legal Proceedings Certificate, subject to payment of Rs. 50,000 as costs to be paid to the Defendants.

Thereafter, the Court passed the following directions pertaining to the documents that are necessary to be filed in a suit for Trade mark infringement –

i. Legal Proceedings certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc.;

ii. If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licences and assignments ought to be pleaded;

iii. Usually, at the time of admission/denial, parties ought not to be permitted to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from public record online;

iv. In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side;

The Court directed the Registrar General to communicate these directions to the Districts Judges, especially the Judges of the Commercial Courts, so that the judgement can be complied with. Furthermore, the order is to be communicated to the Controller General of Patents, Designs and Trade Marks and the Joint Secretary, DPIIT to ensure that the Legal Proceedings Certificates are issued without delay and within a period of 30 days.

 

[1] (208) 149 PLR 40

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