$~10
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IN THE
HIGH COURT OF DELHI AT NEW DELHI
Date of
decision: 27th
August, 2019.
+
CM (M) 1059/2018
AMRISH
AGARWAL
Through:
.....
Petitioner
Mr. Ajay
Amitabh Suman and
Mr.
Vinay Kumar Shukla, Advocates.
(M:9990389539)
versus
M/S VENUS HOME APPLIANCES PVT. LTD. .....
Respondent
Through: Mr. R. K. Aggarwal and Ms.
Aparajita Sharan, Advocates.
(M:9654010731)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
CM APPL. 36518/2018 (exemption)
1.
Allowed, subject to all just exceptions.
Application is disposed of.
CM (M) 1059/2018 & CM APPLs.
36516-17/2018
2.
The present petition has been
filed challenging order dated 4th August, 2018 by which the ld. Trial Court has taken on record the Legal
Proceedings Certificate relating to the trademark ‘VENUS’. The objection by the Petitioner/Defendant (hereinafter, ‘Defendant’) is that the evidence is concluded and the
Respondent/Plaintiff (hereinafter, ‘Plaintiff’) is seeking to file the said
documents at the stage of final arguments.
3.
He relies upon a judgment of a ld. Single Judge of
this Court in Gold
Rock World v Veejay Lakshmi Engineering Works Ltd.
(2008) 149 PLR 40 to argue, that at this belated
stage, the document could not have been taken
CM (M)
1059/2018 Page 1
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on record. Ld. counsel appearing for the Plaintiff, on a query from this
Court states that though the trademark registration was itself not filed at the
initial stage, only the renewal certificate was on record and the same was duly
exhibited.
4.
In a trademark infringement
matter, the Court ought to be able to see the mark. Either the Legal Proceeding
Certificate or registration certificate along with the Journal extract ought to
have been filed by the Plaintiff, to enable the Court to see that the trademark
itself is registered. In this case, the Legal Proceeding Certificate was not
filed during the entire pendency of the suit. It was only at the final stage of
arguments that the Plaintiff sought to file the Legal Proceeding Certificate.
5.
In matters involving trademark
infringement, there is no doubt that the trademark registration itself is a
matter of public record, and can be accessed by visiting the Trademark Registry’s
website itself. However, in order for the Court to consider the registration,
documentary evidence in the form of either the trademark registration along
with the journal extracts or the Legal Proceeding Certificate ought to be
placed on record. In the present petition, initially, except the renewal
certificate no other document was filed and the ld. Trial Court has taken the
Legal Proceeding Certificate on record at the final stage. Though the documents
are public record, usually the normal course, which is adopted is to obtain
certified copies of the said public record in order to rely on the same in suit
proceedings or other proceedings. In the present case, neither was done by the
Plaintiff. The Defendant, thus, opposes allowing the Legal Proceeding
Certificate to be taken on record.
6.
The Court has heard the parties and perused the pleadings in the
CM (M)
1059/2018 Page 2
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plaint, which are clearly based on the registration
of the trademark ‘VENUS’. The
trademark registration certificate ought to have been filed at the initial
stage, however, since substantive justice is to be done in the matter and the
trademark registration itself was pleaded by the Plaintiff, the Legal
Proceeding Certificate is permitted to be taken on record, subject to payment
of Rs.50,000/- as costs to the paid to the Defendant.
7.
It is further directed that in
trade mark infringement matters the following documents ought to be necessarily
filed along with the plaint:
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;
CM (M)
1059/2018 Page 3
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The present order be communicated to all the ld.
District Judges by the worthy Registrar General of this Court so that the
directions contained herein can be brought to the notice of the Judicial
officers especially in the commercial courts. In addition, the order be also
communicated to the Controller General of Patents, Designs and Trade Marks
(Ph:-022-24132735, Email:- cgoffice-mh@nic.in) as also the Joint
Secretary, DPIIT (Ph:- 022-23062983) to ensure that LPCs when applied for are
issued without delay and in any case within a period of 30 days.
8.
With these observations, the
petition is disposed of. All pending applications also disposed of.
PRATHIBA
M. SINGH
JUDGE
AUGUST 27, 2019/dk
CM (M)
1059/2018 Page 4
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