In matters pertaining to
intellectual property right, this had been routine practice to summon the
officials of Trade Marks Registry in order to prove the registered trademarks
or pending trademarks of parties, during the trial in a civil suit proceeding.
In a recent Judgment dated 31.07.2017, passed by Hon'ble Mr. Justice Rajiv Sahai Endlaw in C.R.P. No.146/2015 and C.R.P. No.29/2017, the Hon’ble High Court
of Delhi framed general guide lines regarding obtaining the certified copies
from the office of registrar of trade marks. Vide common Judgment dated
31.07.2017, the Hon’ble High Court of Delhi, disposed off both the aforementioned petitions bearing C.R.P. No.146/2015 and C.R.P. No.29/2017.
In both the afore mentioned petition,
the Registrar of Trade Marks was summoned by the parties to produce the certified
copies of the documents, during the course of trail proceeding. However the
registrar of trade marks failed to do so. In such situation the registrar of
trademarks filed the afore mentioned petitions before the Hon’ble High Court of
Delhi. During the course of arguments, the following provisions of the Trade
Marks Act 1999 were discussed.
“136.
Registered user to be impleaded in certain proceedings.—(1) In every proceeding under chapter VII or under section 91, every registered
user of a trade mark using by way of permitted use, who is not himself an applicant
in respect of any proceeding under that Chapter or section, shall be made a
party to the proceeding.
(2) Notwithstanding
anything contained in any other law, a registered user so made a party to the
proceeding shall not be liable for any costs unless he enters an appearance and
takes part in the proceeding.
137.
Evidence of
entries in register, etc., and things done by the Registrar.—(1) A copy of
any entry in the register or of any
document referred to in sub-section (1) of section 148 purporting to be 47
certified by the Registrar and sealed with the seal of the Trade Marks Registry
shall be admitted in evidence in all courts and in all proceedings without
further proof or production of the original.
(2)
A certificate purporting to be under the hand of the Registrar as to any entry,
matter or thing that he is authorised by this Act or the rules to make or do
shall be prima facie evidence of the entry having been made, and of the
contents thereof, or of the matter or things having been done or not done.
138.
Registrar and
other officers not compellable to produce register, etc.—The Registrar
or any officer of the Trade Marks
Registry shall not, in any legal proceedings to which he is not a party, be
compellable to produce the register or any other document in his custody, the
contents of which can be proved by the production of a certified copy issued
under this Act or to appear as a witness to prove the matters therein recorded
unless by order of the court made for special cause.”
It is
contended by the Registrar of Trade Marks that the offices of the Registrar of Trade Marks at different
locations are very small, with skeletal staff whose work is affected if the said staff is also required
to appear as witness before different Courts. It was contended that once the Registrar of Trade Marks
furnishes certified copies of its records, certified copies can be obtained and tendered in evidence
and which,
under the provisions aforesaid, would be admitted in evidence
in all proceedings, without further Proof
or production of the original. It was further contended that once it is
provided in Section 138 supra that the petitioner Registrar of Trade Marks shall not in any legal
proceedings to which it is not a party be compellable to produce the Register or any document in
its custody, the contents of
which can be proved by production of a
certified copy issued under
the said Act, the Registrar of Trade
Marks cannot be summoned as a
routine matter, as is generally being done.
This ground of the registrar of
trademarks was contested by the respondents that such applications for
certified copies made to the Registrar of Trade Marks remain pending for an
indefinite time and hence the need accrues to summon the record. The
respondents mainly highlighted this aspect that the registrar of trade marks
are not providing them the certified copies of the documents within the
stipulated time, hence lots of inconvenience is being caused to the parties
litigating in various court proceedings. This problem is there as the
production of original Trade Marks Registration certificates are not sufficient
in evidence proceeding.
After hearing the contentions of both
the parties, the Hon’ble High Court of Delhi has directed the Registrar of
Trade Marks and issued directions of a general nature to all the offices
throughout India of Registrar of Trade Marks qua the issuance of certified
copies. This is a landmark Judgment on this aspect of streamlining the issue of
obtaining the certified copies of the documents from the Registrar of Trade
Marks. The following is the general guide lines:
The Registrars of Trade Marks are
directed to:-
(i)
If
not already in place, nominate one Nodal Officer of each branch to receive
applications for certified copies and to issue certified copies.
(ii)
To,
within two months of today, announce on the website of the Registrar of Trade
Marks, the particulars i.e. name/designation, address, phone number/s and email
address of the Nodal Officer responsible for accepting and entertaining
applications for certified copy and to issue certified copies for each office of
the Registrar of Trade Marks.
(iii)
To,
within six months of today, make a provision, if not already in existence, for
making online applications for certified copies.
(iv)
To,
within six months of today, make a provision on the website of the Registrar of
Trade Marks for disclosure of the status of the applications for certified
copies including any deficiency or defect therein required to be remedied by
the applicant and/or the date when it will be ready for collection.
(v)
To,
till the aforesaid is functional, as an interim measure, make a provision for
sending intimation, to the applicant/s for certified copies, of deficiencies /
defects required to be rectified via e-mail, SMS and other modes of
communication.
(vi)
To,
endeavour to make provision for online payment of the fee and other charges if
any for certified copies.
(vii) To issue certified copies within one
month of the receipt of a duly completed application.
(viii) To indicate on the certified copy,
whether it has been prepared from the original of the document or from a copy
of the document.
(ix)
To
explore the possibility
of making an
endorsement of
„original seen and returned‟ on the
copies on the record, originals of which are returned.
(x)
To
ensure, that the certified copies are legible and wherever the original / copy
on the record of the Registrar of Trade Marks has any colour other than black
and white, the certified copy reflects such colour.
(xi)
To,
if the documents of which certified copies is sought have been lost or
misplaced, intimate the same to the applicant within one
month as aforesaid of the application for certified copy having been made.
With
this observation, both the afore mentioned petitions have been disposed
of. The registrar of Trade Marks are
also given liberty to upload the said order on their web site. This Judgment is
unique in nature as its tackles the problem of general litigant litigants who
were not being supplied with the certified copies. The Hon’ble High Court of
Delhi also directed registrar of trade marks that within six months of today, to
make a provision on the website of the Registrar of Trade Marks for disclosure
of the status of the applications for certified copies including any deficiency
or defect therein required to be remedied by the applicant and/or the date when
it will be ready for collection. Till the aforesaid is functional, as an
interim measure, make a provision for sending intimation, to the applicant/s
for certified copies, of deficiencies / defects required to be rectified via
e-mail, SMS and other modes of communication. The afore mentioned guide lines
lessen the scope of procedural lapses as the applicant would be in position to
know the exact status of their application regarding obtaining the Certified
Copies of the documents.
AJAY
AMITABH SUMAN
ADVOCATE
DELHI
HIGH COURT
