==============Judgement Date:12.09.2022Case No. FAO(COMM) 78 of 2022Hon'ble High Court of DelhiVibhu Bakhru and Amit Mahajan , H.JMaan Pharmaceuticals Ltd. Vs Mindwave Healthcare Pvt. Ltd.In a recent Judgement pronounced by Hon'ble Single Judge, of Delhi in Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.: 2019 SCC OnLine Del 9966, general direction has been issued by the Hon'ble Court that while filing Suit for Trademark infringement, the Plaintiff is required to file Legal Proceeding Certificate.
From bare perusal of the guidelines issued by Hon'ble Single Judge, High Court of Delhi, it is apparent that no penal consequences have been provided. What could be effect of Non filing of Legal Proceeding Certificate in a Suit for Infringement, was yet to be adjudicated.
The Hon'ble Division Bench , high court of Delhi was having an occasion to deal with inter-alia this issue in Judgement dated 12.09.2022 passed in Appeal bearing FAO(COMM) 78 of 2022, titled as Maan Pharmaceuticals Vs Mindwave Healthcare Pvt. Ltd.
Coming to the facts of the case, this Appeal was filed by the Defendant against order order dated 07.12.2021 passed by the learned District Judge (Commercial Court-02), Saket Courts - South District, New Delhi whereby the application filed by the appellant (defendant) under Order VII Rules 10 and 11 of Code of Civil Procedure, 1908 (hereinafter ‘the CPC’), was dismissed.
The Hon'ble Division Bench , after observing that the Respondent was having sales office at Neb Sarai, within the jurisdiction of Court. The the order of the Trial Court to effect of favoring the Jurisdiction of the Court was held to be correct.
The Respondent also pleaded that the Appellant have intention to come within territorial jurisdiction of the Hon'ble Court. The Appellant is all set to launch its product within jurisdiction. The Appellant sought rejection of the plaint on the ground that mere apprehension of sale of goods with the impugned trademark in the future, will not amount to cause of action.
However the Hon'ble High Court of Delhi rejected this argument by observing that in view of the settled law , there is no merit in the objection taken by the Appellant that an apprehension to sell the goods with impugned trademark in future will not confer a cause of action in favour of Respondent.
The factum of non mentioning of rectification petition filed by the Appellant was also held not to be material suppression as It is settled law that filing of a rectification petition does not take away the right of a registered proprietor to injunct the infringement of its trademark. The pendency of the rectification does not create any bar for grant of interim injunction. Hence this argument was also rejected.
Now comes to the question of non compliance of general direction issued by the Hon'ble Single Judge , Delhi High Court in Judgement reported as Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.: 2019 SCC OnLine Del 9966. The appellant argued regard to non-filing of the Legal Proceedings Certificate in a Suit for infringement. The said plea has been taken on the strength of the decision passed by a Single Bench of this Court in the case of Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.
In order to appreciate this argument of the Appellant, the relevant portion of said general direction issued by the Hon'ble Single Judge , Delhi High Court in Judgement reported as Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.: 2019 SCC OnLine Del 9966 are reproduced as under:
"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"
Said Judgement does not prescribe for penal consequences in case of non compliance of afore mentioned direction. The Hon'ble Division Bench, High Court of Delhi rejected by observing that though a Legal Proceedings Certificate is an important document, which should be placed before the court at the time of deciding preliminary applications, the same, however, will not take away the statutory right of a plaintiff to seek injunction, which it is otherwise entitled to.
The Hon'ble Division Bench reasoned that in Amrish Aggarwal Vs Venus Home Appliances Pvt. Ltd.: 2019 SCC OnLine Del 9966, the Hon'ble Single Judge had passed certain directions in order to deter frivolous litigations and for the purpose that the time of the courts is not wasted due to non-filing of relevant documents. It was felt that a Legal Proceedings Certificate is an important document, which should be placed before the Court at the time of deciding preliminary applications.
The Hon'ble Division Bench also observed that there is no such requirement in the statute that a suit for infringement will not be entertained, if not accompanied by a Legal Proceedings Certificate. Thus it is clear that in a Suit for infringement, though a Plaintiff is supposed to file Legal Proceeding Certificate of its Trade Mark, however non compliance does not necessarily take away the right of plaintiff to seek injunction.
Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.ajayamitabh7@gmail.com, 9990389539
