WHETHER THE REGISTRAR OF TRADEMARK IS REQUIRED TO BE SUMMONED IN A CIVIL SUIT TRIAL PROCEEDING

WHETHER THE REGISTRAR OF TRADEMARK IS REQUIRED TO BE SUMMONED IN A CIVIL SUIT TRIAL PROCEEDING IN ORDER TO PROVE THE TRADEMARK  REGISTRATION OF A PARTY OR ORDER PASSED IN RELATION TO A TRADEMARK.

            In a Civil Suit proceeding pertaining to Intellectual Property Right in India, when ever matter is listed before the Joint Registrar or Court for purpose of evidence of the parties, there is normal tendency to summon the registrar of trademark under  Order 16 Rule 1and2 CPC in order to prove the registered trademark of the parties or orders passed in relation to a trade mark application. The order OF THE Hon’ble High Court of Delhi, which I am discussing here in below, is  answering this aspect. This order has now become final, as this order has not been challenged by the plaintiff.

            This is the order dated  28.04.2008 passed by Hon’ble Justice SHIV NARAYAN DHINGRA, Delhi high Court in application of the plaintiff under Order 16 Rule 1 & 2 CPC (IA No. 4928/2008 in Suit bearing CS(OS) No. 260/2004)  titled as Sona Spices Vs Soongachi Tea Industries. The said Judgment is available with the official web site of the Hon’ble High Court of the Delhi from the link http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=73248&yr=2008

            The Suit relates to intellectual property right in relation to trademark SONA. The Suit was filed by the plaintiff before the Hon’ble High Court of Delhi in the year 2004.

            Issues in the matter were framed on 20.12.2005. There after the suit was proceeded for the plaintiff’s evidence. On 19.12.2016 the plaintiff was allowed to file list of witnesses and statement of their witnesses in examination in chief on affidavits within three weeks and thereafter, for presenting their witnesses for cross-examination on behalf of the defendants on the date/s to be fixed by the Joint Registrar.

            In this circumstances, the plaintiff moved an application under Order 16 Rule 1 & 2 CPC (IA No. 4928/2008 in the subject matter Suit bearing CS(OS) No. 260/2004), seeking to summon the Registrar of Trade Marks Registry, Boudhik Sampada Bhawan, Dwarka, New Delhi to prove registered trade mark of the Plaintiff No. 367241 and to prove the NOC dated 22.07.2003 issued by the Registrar of Trade Marks, New Delhi.

   
            The Relevant provision of Order 16 Rule 1 & 2 CPC is being reproduced as here in below:

             “1. List of witnesses and summons to witnesses.- (1) On or before such date as the court may appoint, and not later than fifteen days after the date on which the issues are    settled, the parties shall  present in court a list of witnesses whom they propose to call either   to give evidence or to produce documents and obtain summonses to such persons for their attendance in court.

            (2) A party desirous of obtaining an summons for the attendance of any person shall file in court an application stating therein the purpose for which the  witness is proposed to be summoned.”
  

            The Hon’ble High Court of Delhi, vide order dated 24.04.2008 passed in plaintiff’s application under Order 16 Rule 1 & 2 CPC (IA No. 4928/2008 in the subject matter Suit bearing CS(OS) No. 260/2004), was pleased to dismiss the said application of the plaintiff with the following reasoning: 

            “The Registrar of Trade Marks is a public authority discharging functions   under the Trade Marks Act of registration of trade marks and all orders and certificates issued by the Registrar of Trade Marks can be proved by filing certified copies of the orders. The Trade Marks Registrar is not required to be  summoned for proving the trade mark certificates and orders passed by it. If this is allowed, Registrar will in fact standing in the Court and shall not be  discharging any public function because everyday several trade marks matters are  fixed in this Court which are in the evidence stage. I, therefore, consider that there is no necessity of summoning the Registrar of Trade Marks to prove trade marks registration certificate or order passed by him or NOC issued by   him. Filing of certified copies is sufficient and will serve the purpose. The application is hereby dismissed.”

            It is submitted that the Hon’ble Justice must have moved on the presumption that the documents pertaining to records of Trade Marks and Orders passed therein are in the nature of public document. The Hon’ble Court rightly recorded in the order that the Registrar of Trade Marks is a public authority discharging functions under the Trade Marks Act.

            It is submitted that Provision of Section 76 of the Indian Evidence Act 1872 provides that the public document can be proved by furnishing Certified Copies of the same. The relevant provision of Section 76 of the Indian Evidence Act 1872 is being produced as herein below:

            Section 76 in The Indian Evidence Act, 1872

            “76. Certified copies of public documents.—Every public officer having the custody of a public document, which any person has a right to inspect, shall give that person on demand a copy of it on payment of the legal fees therefore,  together with a certificate   written at the foot of  such copy that it is a true copy of such document   or part thereof, as the case may be, and such certificate shall be dated and subscribed by such   officer with his name and his official title, and shall be sealed, whenever such officer is  authorized by law to make use of a seal; and such copies so certified  shall be called certified   copies.—Every public officer   having the    custody of a public document, which any    person has a right to inspect, shall give that person on demand a copy of it on payment of the legal fees therefore, together with a certificate written at the foot of such copy that it is a true copy of such document or part thereof, as the case may be, and such certificate shall be dated and  subscribed by such officer with his name and his  official title, and shall be sealed, whenever such   officer is authorized by law to make use of a seal; and such copies so certified shall be called certified copies." Explanation.—Any officer who, by the ordinary course of official duty, is  authorized to deliver such copies, shall be     deemed to     have the custody of such documents   within the meaning  of this section.”

            By virtue of said provision, it is submitted that mere filing the certified copies of the documents or orders pertaining to Trade Marks in a Suit proceeding is sufficient and Registrar of Trade Marks is not required to be summoned.

            Thus the ratio of the said Order is as follows:

(i).       In order to prove the registered trademarks or any documents or order pertaining the any trademark application, The Registrar of Trade Marks is not required to be summoned to remain present in a Civil Suit Proceeding.

(ii).      The Registrar of Trade Marks is a public authority discharging functions   under the Trade Marks Act of registration of trade marks and all orders and certificates issued by the Registrar of Trade Marks can be proved by filing certified copies of the orders.

            The said Order is not challenged by the Plaintiff, hence the said Order is now binding law.

                                         AJAY AMITABH SUMAN, ADVOCATE

                                         DELHI HIGH COURT