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

PRODUCTION OF ADDITIONAL DOCUMENT DURING CROSS EXAMINATION

BREIF CASE SUMMARY OF JUDGMENT DATED 18.04.2016 PRONOUNCED BY HON’BLE HIGH COURT OF DELHI IN SUIT BEARING CS(OS) NO.504 OF 2004, TITLED AS POLYFLOR LIMITED VS SH.A.N.GOENKA & OTHERS

·         This case relates to intellectual property right, more especially trademark right.

·         The judgment deals with the issue of production of additional document by the plaintiff’s witness during the course of cross examination in answer to question put by the defendant’s counsel.

·                    Hence in this case, the Hon’ble High Court of Delhi laid down the case law, whether, during the course of cross examination, a witness can produce additional document (the copies of which were not filed , neither along with plaint, nor at the time of framing of issues, nor along with the plaintiff’s evidence by way of affidavit nor any list of reliance was filed by the plaintiff along with the plaint), while answering the question, put by the counsel of the opposite party.

THE FACTUAL MATERIX:

·                    The plaintiff instituted the suit seeking permanent injunction, passing off, delivery up and unfair trade practices and rendition of account against the defendants in the year April 2004 claiming the proprietary right in the trademark POLYFLOR. The issues in the suit were framed on 02.12.2013. There after the matter was ordered to proceed for the cross examination of the plaintiff’s witness before the Ld. Local Commissioner, appointed by the Hon’ble High Court of Delhi.

·                    The recording of evidence was going on before the Ld. Local Commissioner. The plaintiff’s witness PW-1 was under cross examination. During the course of cross examination, the defendant’s counsel put question to the plaintiff’s witness, regarding statement of account of the plaintiff company. In answer to that the plaintiff’s witness said that I am carrying the same with me and requested to rely upon the case. The Ld. Local Commissioner refused to take on record the afore-mentioned additional document of the plaintiff’s witness.

·                    There after the plaintiff moved application under Order 7 Rule 14(3) CPC seeking to place on record three sets of documents (the copies of which were not filed, neither with plaint, nor at the time of framing of issues, nor along with the plaintiff’s evidence by way of affidavit nor any list of reliance was filed by the plaintiff) relating to the audited statement of accounts of the plaintiff, before the Ld. Joint Registrar, Hon’ble High Court of Delhi.

·                    The said application was rejected by the Ld. Joint registrar after considering this fact that the original suit was filed in the year 2004. The documents sought to be produced were neither filed along with the plaint, nor at the stage of admission/denial of documents, nor even at the stage of framing of issues on 02.12.2013. The plaintiff’s witness has been substantially cross examined. The Ld. Joint Registrar rejected the plaintiff’s application as the additional documents were in the control of the plaintiff and that the same were not filed at the appropriate stage, nor even at the stage of framing of issues.

·                    Against the rejection of plaintiff’s application under Order 7 Rule 14(3) by the Ld. Joint Registrar, the plaintiff filed the subject matter Chamber Appeal before Hon’ble Single Judge, High Court of Delhi, which the Hon’ble Single Judge after discussing the facts and laws applicable thereto.

REASONING OF THE HON’BLE HIGH COURT OF DELHI:

·                    The Court examined the provision of Order 7 Rule 14 (3) CPC, which is produced as herein below:

          “A document which ought to be produced in Court by the plaintiff when the plaint is presented, or to be entered in     the list to be added or annexed to the plaint but is not  produced or entered accordingly, shall not without  the leave of the Court, be received in evidence on his   behalf at the hearing of the suit”.

          The Court further examined the provisions of The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 provides under Order XI Sub-rule (1) of Rule 1, which is as herein below:

          “Plaintiff shall file a list of all documents and photocopies   of all documents, in its power, possession, control or      custody, pertaining to the suit, along with the plaint,   including:

          (a) documents referred to and relied on by the plaintiff in the plaint;

          (b) documents relating to any matter in question in the  proceedings, in the power, possession, control or custody of the plaintiff, as on the date of filing the    plaint, irrespective of whether the same is in support     of or adverse to the plaintiff’s case;”.

          Sub-rule (5) of Rule 1 states that:

           “The plaintiff shall not be allowed to rely on documents, which were in the plaintiff’s power, possession, control   or custody and not disclosed along with plaint or within the extended period set out above, save and except by  leave of Court”

·                    The Hon’ble High Court of Delhi observed that the plaintiff is prohibited from leading in evidence,  a document which he ought to have produced when the plaint was presented. The exception to this rule is that, where the Court grants leave to the plaintiff, the document may be permitted to be led in evidence at the hearing of the suit under the befitting circumstances.

·                    The Hon’ble Court rejected the chamber appeal as the  plaintiff’s witness PW-1 was under cross-examination and has already undergone a substantial portion of his cross-examination. To grant leave to, and permit the plaintiff to file and lead in evidence additional documents at this stage would mean that the defendants would be put to serious prejudice.

·                       The Hon’ble Court further observed that no plausible reason has been given by the plaintiff for non-disclosure of the documents and non-filing of the documents, or at least copies thereof along with the plaint, or even till the stage of framing of the issues.

CONCLUSION:

·                    Along with the plaint, the plaintiff is required to file copies of all the documents which are in their power and possession and shall also file the list of reliance regarding all those documents, which are not in its power and possession.

·                    A party cannot be allowed to put on record the additional document in answer to question put forward by the opposite party counsel, during the course of cross examination until and unless it is shown that the documents were not in the power and possession of the witness and the same could not have been produced on record and that there are sufficient cause for non production of the same. The Hon’ble Court also made reference to the provisions.

·                    The Hon’ble High Court has also rejected the chamber appeal of the plaintiff as the plaintiff was unable to give any plausible reason for not filing the additional documents on record at the appropriate stage of the suit, as all the additional documents, sought to be taken on record, were always available with the plaintiff.

·                    It can safely be said that the Hon’ble Court has declined to grant any relief to a party, which is guilty of adopting lackadaisical attitude.

                                                          AJAY AMITABH SUMAN

                                                          ADVOCATE

                                                          DELHI HIGH COURT