PROCEDURAL LAW SHOULD BE CONSTRUED LIBERALLY

           This article deals with the liberal construction of procedural law by the Indian Courts. In law, time has been prescribed for doing a time in a prescribed period. There is Limitation Act,  which prescribes the time schedule for doing a particular act within a particular span of time. Whenever any Act is enacted by the Legislature, normally rules are also prescribes within the ambit of the Act. The Rules prescribed within the ambit of the Act, prescribes the procedure, how procedure is to be followed.

            This question came up before the Hon’ble Supreme Court of India and before the Hon’ble High Court many times. There has been many cases where the Act or Rules made there under prescribes the time for doing an act within a particular time and the party failed to do so. In such cases the Hon’ble Supreme Court of India including the Hon’ble High Court of Delhi has laid down the law that the procedural law are required to be treated liberally. Here are the details of few of such Judgments:

            In AIR 1976 SC 1177: The State of Punjab and Anr Vs Shamlal Murari and Anr, the Hon’ble Supreme Court of India, while dealing with the scope of the processual law, observed “We must always remember that processual law is not to be a tyrant but a servant, not an obstruction but an aid to justice. It has been wisely Observed  that   procedural   prescriptions   are    the    hand-maid and not the mistress, a lubricant, not a resistant in the administration of justice.

            The Hon’ble Supreme Court of India, in its Judgement , reported as AIR 2005 SC 3304: Smt. Rani Kusum Vs Smt. Kanchan Devi, reiterated the afore mentioned stand as “Processual law is not to be a tyrant but a servant, not an obstruction but an aid to justice. Procedural prescriptions are the handmaid and not the mistress, a lubricant, not a resistant in the administration of justice. It is also to be noted that though the power of the Court under the proviso appended to Rule 1 of Order VIII, C.P.C. is circumscribed by the words - “shall not be later than ninety days” but the consequences flowing from non-extension of time are not specifically provided though they may be read by necessary implication. Merely, because a provision of law is couched in a negative language implying mandatory character, the same is not without exceptions. The Courts, when called upon to interpret the nature of the provision, may, keeping in view the entire context in which the provision came to be enacted, hold the same to be directory though worded in the negative form”.

            The Hon’ble Supreme Court of India , in its Judgment AIR 1987 SC 1353: Collector, Land Acquisition, Anantnag and Anr Vs Mst. Katiji and Ors, observed that substantial justice has to be preferred upon the procedural technicalities. The Hon’ble Supreme Court of India returned the finding as under ”When substantial justice and technical considerations are pitted against each other, cause of substantial justice deserves to be preferred for the other side cannot claim to have vested right in injustice being done because of a non-deliberate delay.”

           

            Conflict between the procedural law and the substantial law has been resolved by the Hon’ble Supreme Court of India in its Judgement reported as AIR 2008 SC 2099, Zolba Vs Keshao and Ors ,as under” The use of the word 'shall' is ordinarily indicative of mandatory nature of the provision but having regard to the context in which it is used or having regard to the intention of the legislation, the same can be construed as directory. The rule in question has to advance the cause of justice and not to defeat it. The rules of procedure are made to advance the cause of justice and not to defeat it. Construction of the rule or procedure which promotes justice and prevents miscarriage has to be preferred. The rules or procedure are hand- maid of justice and not its mistress. In the present context, the strict interpretation would defeat justice.”

            In AIR 2005 SC 3353: Salem Advocate Bar Association, Tamil Nadu v. Union of India: it has been clearly held that “the provisions including the proviso to Order 8 Rule 1 of the CPC are not mandatory but directory. It has been held in that decision that the delay can be condoned and the written statement can be accepted even after the expiry of 90 days from the date of service of summons”.

            While discussing with the power of Controller of Patent, the Hon’ble Supreme Court of India, in its Judgment AIR 2012 SC 285: Polydrug Laboratroies P. Ltd. Vs Controller of Patents and Ors, the Hon’ble Supreme Court of India held “According to a plain reading of Rule 138, it is clear that the Controller may extend the time for filing evidence for a period of one month. Learned counsel for the Appellant submits that the Assistant Controller of Patents and Designs has not considered the said Rule 138 of the Patent Rules, 2003 in its proper perspective. He further submits that he has filed the evidence but the same has not been taken on record. We are of the considered view that according to Rule 138, the Controller has the power to extend the time for a period of one month.”

            The Hon’ble Supreme Court of India discussed the provisions of the Limitation Act in the Judgment AIR 1998 SC 3222: N. Balakrishnan Vs M. Krishnamurthy and returned the finding as follows ” Rules of limitation are not meant to destroy the right of parties. They are meant to see that parties do not resort to dilatory tactics, but seek their remedy promptly. The object of providing a legal remedy is to repair the damage caused by reason of legal injury. Law of limitation fixes a life-span for such legal remedy for the redress of the legal injury so suffered. Time is precious and the wasted time would never revisit. During efflux of time newer causes would sprout up necessitating newer persons to seek legal remedy by approaching the courts. So a life span must be fixed for each remedy. Unending period for launching the remedy may lead to unending uncertainty and consequential anarchy. Law of limitation is thus founded on public policy. It is enshrined in the maxim Interest reipublicae up sit finis Mum (it is for the general welfare that a period be put to litigation). Rules of limitation are not meant to destroy the right of the parties. They are meant to see that parties do not resort to dilatory tactics but seek their remedy promptly. The idea is that every legal remedy must be kept alive for a legislatively fixed period of time.”

            Similarly in its Judgments , reported as 2009 (41) PTC 474 (Del): Liberty Footwear Company Vs Force Footwear Company and Ors, the Hon’ble High Court of Delhi observed that “Rules  of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision. In Kailash Vs Nankhu AIR 2005 SC 2441 and Salem Advocate Bar Association, Tamilnadu Vs Union of India  AIR      2005 SC 3353 it has been held that there may be many cases where non-grant of extension would amount to failure of justice. The object of procedural rules is not to promote failure of justice. Procedural rules deserve to be read down to mean that where sufficient cause exists or events are beyond the control of a party, the Court would have inherent power to extend the time.”

            The Hon’ble High Court of Delhi, while discussing the power of IPAB to condone the delay in filing the Appeal, in its Judgment 2012 (51) PTC 611 (Del): CYDMAX (India) Pharma Pvt. Ltd. Vs M/s Gilead Sciences INC. & Ors, observed as under      ” Section 92 of the Trade Marks Act, 1999 states that Appellate Board shall not be bound by the procedure laid down in the CPC but shall be guided by the principles of natural justice. The learned Single Judge observed that though rules had been framed under the Patents Act in the year 2003, these rules were silent with regard to the procedure for preferring an appeal under the Patents Act presumably because of the reason that acting under Section 92 of the Trade Marks Act, the IPAB had framed Procedure Rules, 2003 which deal with procedure for preferring an appeal before the Appellate Board. Rule 14 of these rules states that if the Appellate Board is satisfied that there is sufficient cause for extending the time for doing any act prescribed under the rules (not being a time expressly provided for in the Trade Marks Act, 1999), it may, subject to such conditions as may think fit to impose, extend the time and inform the parties accordingly. This power is exercised upon making of an application to the Appellate Board in the prescribed form. The procedure for preferring an appeal under the aforesaid rules is prescribed from Rule 3 onwards. On this basis, the learned Single Judge held that the Appellate Board is empowered to extend the time for preferring an appeal.”

            After the afore mentioned discussion, it is apparent that the procedural law meant to add to substantial right of the parties. When the substantial right and the procedural law are pitted against each other, in that case, substantial justice of the parties has to be preferred. However this does not mean that a party is allowed to drag the matter on account of liberal construction of the procedural law. The procedural laws are made in order to smooth functioning of the cases and not to defeat the substantial right of the parties.  The parties, who wants the liberal treatment of the procedural law, must explain the reason for condoning in delay in doing any act, prescribed by the law. If the party is able to give sufficient reasons for condoning the delay for doing any act, prescribed by the law, in that case, the Court has inherent power to condone the delay and treat the procedural law liberally. This principle is not only applicable to the Court of Justice, but also the Quasi Judicial authorities and Tribunal also.

           

                          AJAY AMITABH SUMAN, ADVOCATE

                        DELHI HIGH COURT

USE OF TRADEMARK ON CALENDER DOES NOT PROVE USER OF TRADE MARK

         In cases for the infringement of Trade Mark and in cases of passing off, user of trademark plays very important role in establishing proprietary right over the trademark.

            Section 31 of the he Trade Marks Act 1999 provides that Trade Marks Registration is prima facie evidence of its validity. Mere production of Registration Certificate was sufficient in cases pertaining to infringement of Trade Mark. The relevant provision of Trade Marks Act 1999 is being reproduced as here in below:

            “31. REGISTRATION TO BE PRIMA FACIE EVIDENCE OF VALIDITY:

         (i). In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57),  the original registration of the trade mark and of all   subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.”

          The Hon’ble Supreme Court of India has also returned strong presumption in favour of Trade Marks Registration.  In 1986 AIR 137 titled as American Home Products Vs Mac Laboratories Private Limited, the Hon’ble Supreme Court of India has returned the finding that in cases of Infringement of Trademark, only Trade Marks Registration is sufficient to obtain the relief of injunction. The relevant para of said Judgment is reproduced as under:

         "when a  person gets his trade mark registered, he acquires  valuable rights by reason of such registration. Registration of his trade mark gives him the exclusive right to the use of the trade mark in connection with the goods in respect of  which it  is registered  ant  if  there  any invasion of  this right by any other person  using a mark which is  the same or deceptively similar to his trade mark, he can protect his  trade mark by  action for infringement in which  he can obtain injunction, damages or an account of profits mate  by  other  person.  In  such  an action  the registration of  a trade mark is prima facie evidence on its validity.”

               There by the Hon’ble Supreme Court of India observed that in cases of infringement of Trade Mark, mere Trade Mark Registration is sufficient and the registered proprietor can obtain injunction.  Much weight age was given to the registration certificate. Mere production of registration certificate was sufficient and the registered proprietor was not required to produce any other document, except producing the Trade Mark registration Certificate. Once the offending trade mark is found to be similar to the registered trade mark, then the registered proprietor was not require to produce any other document.

       Gradually the law is changing its colour and various courts passed Judgments giving much more emphasis on the user of a trademark. In 2011 (45) PTC 553 (Del) , Sancheti Appliances Pvt. Ltd. Vs M/S J.K. Electrical Industries  Judgment, the Hon’ble High Court of Delhi has retuned such finding as under:

         “However, the Trademarks Act, 1999, has woven an exception to this rule, which is that if there is a prior user, of the same or similar mark, his action or defence can defeat the registered trademark proprietor's rights.”

         The Hon’ble Supreme Court of India , in a recent Judgment 2015 (64) PTC 225 (SC), Neon Laboratories Versus Medical Technologies Ltd, has given much more emphasis on the prior user of trade mark, vis-a-vis the registered proprietor of a trade mark. In (2004) 12 SCC 624, Milmet Oftho Industries v. Allergan Inc the Hon’ble Supreme Court of India has returned the finding that the true test is that who is first in the World Market. The right of prior user was also held to be superior in case of (1996) 5 SCC 714, N.R. Dongre v. Whirlpool Corporation. In (2015) 7 Scale 136  Innovolt Inc.  Vs.  Kevin Power Solutions Ltd, the Hon’ble Supreme Court of India observed that the right of prior user prevails upon the subsequent registered proprietor of a trade mark.  

      User of Trade Mark is playing very important role. There are plethora of Judgments where various Courts has returned the finding the even registered Trade Marks dies of non user. If a party obtains registration but does not user the Trade Mark, then non user of registered Trade Mark dilutes the right Registered Proprietor. 

     In such circumstances, various parties tries to create sham user by various ways. There has been tendency by parties to create the user of Trade Mark by any means. Normally for proving the user of a Trade Mark, bills, Invoices, Advertisement in News Papers, Magazines, TV Advertisement etc are considered to be credible evidence of user. Use in calendar is also easy mode to create sham defence of user. Here is one Order of Hon’ble High Court of Delhi, where finding is that user in Calender does not prove the actual user of Trade Mark. 

   Hon’ble Justice Shri Vipin Sanghi, High Court of Delhi , vide order dated    24.07.2013, passed in Suit bearing CS(OS) 2426/2009 , titled as M/s Kiwi Foods (India) Pvt. Ltd   Vs M/s Dugar Spices and Eatables Pvt. Ltd. , returned the finding that user of Trade Mark in a Calender does not prove user of a trademark. Here are the brief introduction of facts of the said case and then the relevant laws laid down by the Hon’ble High Court of Delhi in the said order, regarding user of Trade Mark on Calender.

     In this case, plaintiff claimed that the same  is engaged in the business of manufacturing and marketing of confectionary, snacks and namkeens and other related goods. The  plaintiff asserted that it adopted the mark FUN POP since April 2005   and has also been using FUN STAR and FUN RINGS. In case the plaintiff applied for   registration of FUN POP on 08.04.2005 and for FUN STAR on 12.11.2007.   FUN RINGS is applied for on 6.10.2008. The case was pertaining to passing off action as the plaintiff’s Trade Marks Applications were not registered at that point of time. However the plaintiff has put on record documents showing user of the subject matter Trade Mark since the year 2008.

  The defendants alleged that the same is using the Trade Mark FUN RINGS since the year 2006. In   support of alleged user since the year 2006, the defendant has placed on record the calendar stated to have been  circulated  by it in the year 2006 and 2007. In these calendars apart from other products, the product FUN RINGS has also been displayed. 

     However the defendant filed the bills/Invoices only since the year 2009.  The Hon’ble High Court of Delhi returned the finding that “Mere use of the picture of FUN RINGS on the calendar of the year 2006 does not establish the actual user of the   said mark on the product by the defendant. Therefore, the plaintiff is   entitled to protection in respect of FUN RINGS. “

  Accordingly in the afore mentioned case, the Hon’ble High Court of Delhi was pleased to grant injunction in favour of the Plaintiff and against the Defendant.  The said order has not been challenged by the Defendant in this case, hence the said order has become a biding precedent.

       It is submitted that the Hon’ble High Court of Delhi disapproved the user of Trade Mark by the Defendant in the Calender as the same is self serving document. If user of the Trade Mark in Calender be approved by the Court , then any party can create the sham user. Reason is that Calender is a self serving document and can be created/printed by the party. This is the reason, why the Hon’ble High Court of Delhi returned the finding that user of Trade Mark on Calender does not establish the actual user of the Trade Mark.

     Similarly Brochure, Price List, Pamplets , Catalogue etc also fall in same category of document, Calender falls. All these documents are self serving documents and party can create itself and can put any year on these documents. All these documents do not relate to actual commercial user of the trademark. Unlike the bills/Advertisement in New Paper, Documents pertaining to Government Organization etc do relate to actual user of trade mark. 

      It is submitted that in this document this factor must have been in the mind of Hon’ble Court that those documents, which actually relates to commercial user of a trade mark, should be considered as user of a trademark. While the documents, which actually do not correspond to actual commercial user of trade mark, should not be considered as user of trademark. 

                                             AJAY AMITABH SUMAN, ADVOCATE ,DELHI HIGH COURT  

HIGH COURT OF DELHI ALLOWS THE COMMUNICATION OF COURT ORDER THROUGH MOBILE

            

               

            Gone are the days, when service on the party used to be effected by way of publication in News Paper or by way of affixation in the concerned locality, where the party resides. With change in technology and with advent of internet era, e-mail, mobile, facebook, whatsapp etc, the mode of communication is changing fast.  Now messages can be communicated to the party in a much fast manner, than it used to be in the Old days. 

            There has been long time, since it has been felt that procedure laid down by Civil Procedure Code 1908 in India, regarding service on the parties and communication of the court orders has to be amended. As the manner of communication has changed with advancement of Information Technology and the advent of Internet Era, the change in the law was badly required, so that it can keep pace with the time and technology.

            When Civil Procedure Code 1908 in India was enacted in India, at that time, neither there was e-mail, nor the mobile or whatsapp or facebook. There Indian Court has been passing various orders in order to keep pace with the advancement in the technology.  Hon'ble Mr. Justice Rajiv Sahai Endlaw, Delhi High Court, vide its order dated 27.04.2017 passed in CS(COMM) 1601/2016, titled as Tata Sons Limited & ors Vs John Doe (s) & ors passed order to this effect. Thus Hon’ble High Court of Delhi is trying to keep pace with the advancement in Technology and passed the order that in a Suit proceeding, service on a party can be effected through WHATSAPP also.

            In matters pertaining to wed sites, it is very difficult to effect services as most of the time, the addresses of domain name are hidden. Normally the web sites keep their names , address hidden. The exact names, details and addresses of the web sites are available with the registrar of the web sites. The Hon’ble High Court of Delhi passed the order to the effect that on such domain names, orders can be communicated to the mobile numbers of registrant of such domain names. The fact of the case was that THE POLO/LAUREN COMPANY L P filed suit for permanent injunction seeking proprietary right in the trademark ‘POLO’; POLO WITH DEVICE OF POLO PLAYER and other POLO formative trademarks. Plaintiff has built up reputation all over the world including India, in respect of wide range of its products, which includes, apparels, perfumes, leather products, etc. It is claimed by the plaintiff  that the defendant nos.1 & 2, in order to encash the goodwill and reputation of the plaintiff’s products, are selling online through website www.varshaa.com the counterfeit T-shirts, shirts, trousers, sweaters, shorts, scarfs, etc. with word/mark/label ‘POLO’ with or without the device of POLO player. Accordingly vide order dated 28.09.2015 passed in I.A. No. 20417/2015 (u/O 39 Rule 1 & 2) in Suit bearing CS(OS) 2946/2015 titled as THE POLO/LAUREN COMPANY L P Vs M/S VARSHA & CO AND OTHERS, the Hon’ble High Court of Delhi was pleased to grant ex-parte injunction in favour of the plaintiff and against the defendant no.1 and 2 restraining them from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trade mark/label POLO with or without the device of POLO player or any other word/mark/trademark/label, which may be identical with and/or deceptively similar to the plaintiff’s trade mark/label/domain names in relation to their impugned goods or readymade garments and accessories and allied and cognate products, through the website www.varshaa.com or otherwise.

            In these circumstances, the plaintiff moved I.A. No. 1268/2016, under Order XXXIX Rule 2A CPC complaining of non-compliance of the ex-parte order of injunction passed by this Court on 28.09.2015. By virtue of order dated 27.01.2016 passed in the said Suit bearing CS(OS) No.2946 of 2015, the Hon’ble Justice Shri Vipin Sanghi, High Court of Delhi passed the following order:

“Admittedly, the plaintiff has not been able to serve the defendants at the given address in the memo of parties. Mr. Bansal submits that in the whois directory, the address of the defendants has been hidden. A perusal of the whois directory qua the defendants’ domain name varshaa.com shows that the e-mail of the registrant is varshaa.com@domainsbyproxy.com. Moreover, it also contains the Registrar Abuse Contact E-mail, which is abuse@godaddy.com and the Registrar Abuse Contact Phone +1.4806242505. The defendant could be served at the aforesaid e-mail address and the Registrar could also be informed of the injunction orders passed by this Court through e-mail as well as telephonically. Since the defendants have not been communicated the said order till date, it may not be correct to say that there is a deliberate infringement of the said order, and thus, the application under Order XXXIX Rule 2A CPC would not lie at this stage. The plaintiff is permitted to serve the defendants at the aforesaid e-mail address and also to communicate the orders passed by this Court on 28.09.2015 to the Registrar godaddy.com telephonically as well as through e-mail. If so communicated, the Registrar godaddy.com shall ensure compliance of the order dated 28.09.2015 in respect of the defendants.”

From bare perusal of the said order dated 27.01.2016 passed in the said Suit bearing CS(OS) No.2946 of 2015, it is clear that Hon’ble Justice, Shri Vipin Sanghi passed the order to the effect that the defendant namely www.varshaa.com could not only be served through the E-mail address but also passed the direction that on the said web site, the injunction order passed in the present Suit can be communicated through the e-mail address and mobile number appearing on the registrant of the said domain name. 

                                 AJAY AMITABH SUMAN, ADVOCATE

                                 DELHI HIGH COURT

THE DEFENSE OF THIRD PARTIES USE IN AN ACTION FOR INFRINGEMENT OF TRADE MARK AND PASSING OFF IN INDIA

      In an action for infringement of trademark and passing off, there is general defence by the defendants that the trademark, over which the plaintiff is claiming right, is not exclusive property of the plaintiff and that the plaintiff’s trademark is being used by various parties. The defendant also takes this defence that the various parties are using the trademark of the plaintiff, how ever the plaintiff is not taking any action against the third parties. So the question arises, in case the plaintiff is not taking action against the third parties/infringers, does this fact dis-entitle the plaintiff from obtaining the injunction against the defendant.  What would be effect of such defence. This article deals with these defences of the defendants.

            This question was dealt with by the Hon’ble Supreme Court of India in National Bell Co. & Anr vs Metal Goods Mfg. Co. (P) Ltd 1971 AIR 898, 1971 SCR (1) 70, where by the defendant took the defence that the subject matter trademark of the plaintiff is being used by various third parties and that the same is common to trade. The Hon’ble Supreme Court of India discussed this issue and answered the same in this manner: “This evidence negatives any abandonment of trade marks or letting infringements go unchallenged or misleading the other manufacturers that the respondent company would not interfere it they were to use the same marks. Rights in a mark can, of course, be abandoned by its owner but so long as he remains the registered proprietor of the mark and carried on the business to which the mark is attached, a plea of abandonment is difficult to sustain. It would, however, be a different matter if it is shown that there, were repeated, undisturbed infringements. The evidence in the present case does not show that there were repeated breaches which went unchallenged though known to the proprietor. Mere neglect to proceed does not necessarily constitute abandonment if it is in respect of infringements which are not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of them. (see Re. Farina(1) Where neglect to challenge infringements is alleged, the character and extent of the trade of the infringers and their position have to be reckoned in considering whether the registered proprietor is barred by such neglect. [see Rowland v. Mitchell(2) ]. The plea of common use must fail, for, to establish it the use by other persons should be substantial.”

            In Coolways India Vs. Princo Air Conditioning and Refrigeration, PTC (Suppl) (1) 470 (Del): 1993 (1) Arb.LR 401:  the defendant took this defence that a plaintiff himself using usurping or infringing a third party's registered trade mark is debarred from claiming the relief of injunction. The Hon’ble High Court of Delhi has dealt with this issue and laid down the law in this manner , “What has to be seen is whether the plaintiff has acquired a reputation, goodwill in a mark which he is using in trading his goods uninterruptedly for quite some time and somebody else is attempting to pass off his goods under that mark. The contention that a plaintiff himself using usurping or infringing a third party's registered trade mark is debarred from claiming the relief of injunction, in my ivew, is a meritless plea. This a matter between the plaintiff and the party in whose favour trade mark is registered. Only he can object to it. It is not for a third person to take up issue for him and claim protection on that score. It is not disputed by the defendant that no action for infringement of trade mark has been initiated against the plaintiff by any of the parties, in whose name the said trade mark is claimed as registered. There is no reason why a person, competing in trade, is allowed to make use the reputation and goodwill of another person by attaching to his product a name or description with which he has no natural association”.

            In P.M. Diesels Ltd. Vs. S.M. Diesels, 1993- PTC-75 case, the defendant took the defence that the subject matter trademark is being used by various parties and that the plaintiff is not taking action against such infringers. Hence the plaintiff has abandoned right in the subject matter trade mark. This issue has been dealt with by the Hon’ble Court as ,        “Next contention raised by learned counsel for the defendant is that the word Marshal has become common to the trade of diesel engines in Rajkot and various other persons are using the trade mark in one form or other as inasmuch as some are using Airmarshal, Perfect Marshal, Powermarshal etc. and the defendant is not the only person who is using the trade mark Sonamarshal only. The plaintiff, thereforee, cannot claim its trade mark to be distinctive of its goods or business and no customer is likely to be confused or deceived on account of this trade mark. This contention of the learned counsel for the defendant is also without force. In this connection it is sufficient to say that under the law it is the right of two parties before the court which has to be determined and the court has not to examine the right of other parties. If some other manufacturers are using or suffixing the word Marshal on their diesel engines, it is of no consequence. Furthermore, if the plaintiff has not taken any action against several other infringements, this does not mean that the plaintiff has abandoned its trade mark and cannot challenge the action of the defendant.”

         In Essel Packaging Ltd. Sridhar Narra & Anr. 2002(25) PTC 233 (Del) case, the Hon’ble Delhi High Court dealt with the issue of the defendant regarding the third parties user and answered this question in this way, “Merely because some other parties or persons are using the name ESSEL does not provide a justification to the defendants for using the said name as the plaintiff has been using this name much prior to the adoption of this name by the defendants and its widespread use of this name shows that this word has become synonymous with the business of the plaintiff and its group companies.”

         In Express Bottlers Services Pvt. Ltd. vs. Pepsi Inc. & Ors., 1989 (7) PTC 14 case, the issue of inaction on the part of the plaintiff against the other infringers came, which was dealt with by the Court in the following manner: “To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks.... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence.... Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This court is inclined to accept the submissions of the respondent no. 1 on this point... The respondent no. 1 did not lose its mark by not proceeding against insignificant infringers.”

            In Pankaj Goel vs. Dabur India Ltd., 2008(38) PTC 49 (Del) the  case, similar question came before the Division Bench of Hon’ble High Court of Delhi, where in the Hon’ble Division Bench reasserted the same principle, which is as follow: “As far as the Appellant's argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the appellant has not been able to prima facie prove that the said infringers' had significant business turnover or they posed a threat to plaintiff's distinctiveness. In fact, we are of the view that the respondent/plaintiff is not expected to sue all small type infringers who may not be affecting respondent/plaintiff's business. The Supreme Court in National Bell   vs.   Metal       Goods, AIR 1971 SC 898 has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness.”

            In Anjani Kumar Goenka and Anr. Vs Goenka Institute of Education and Research: AIR2008Delhi1992, 2008(2)ALD(Cri)547, (2009)ILR 3Delhi758, 2009(39)PTC720(Del) in Para No. 65 of the said Judgment , the Hon’ble High Court of Delhi observed that  As a settled principle of law, unauthorized or unconsented use by other party is no defense.

            In Dr. Reddy'S Laboratories Ltd. vs Reddy Pharmaceuticals Limited: 2005 128 Comp Case 42 Delhi, 2004 (76) DRJ 616, 2004 (29) PTC 435 Del, the Hon’ble High Court of Delhi reiterated the same principle that owner of a trademark or copyright is not required to run after every infringers. The relevant portion of the said Judgment is being reproduced as here in below: “The owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interests and starts misleading and confusing their customers.”  

            In P RAKASH R OADLINE L TD. V S. P RAKASH P ARCEL S ERVICE (P) L TD. 48 (1992) DLT 390 : 1992 (22) DRJ 489 rejected the contention of the Defendant therein that “there were others in the market with similar name whom the Plaintiff had chosen not to sue by holding that the other parties may not be affecting the business of the Plaintiff. They may be small time operators who really do not matter to the Plaintiff. Therefore, the Plaintiff may not choose to take any action against them. The Court further held that the mere fact that the Plaintiff has not chosen to take any action against such other parties cannot disentitle the Plaintiff from taking the present action.”

        In 2014 (59) PTC 256 (Del) Indian Hotels Company Limited Versus Ashwajeet Garg, the Hon’ble High Court of Delhi has laid down the following principle: “Mere fact that the Plaintiff has not chosen to take any action against other parties cannot disentitle the Plaintiff from taking the present action. The other parties may not be affecting the business of the Plaintiff. They may be small time operators who really do not matter to the Plaintiff. Therefore, the Plaintiff may choose not to take any action against them.”

            In 2008 (37) PTC 468 (Del) (DB), Indian Hotels Company Limited Versus Jiva Institute of Vedic Science case, the Hon’ble High Court of Delhi observed “It was also contended by Mr. Rohtagi that since other parties were also making use of the trade mark Jiva the plaintiff was not entitled to the injunction prayed for. The decision of this Court in Info Edge (India) Pvt. Ltd. and Anr. v. Shailesh Gupta and Anr. 2002 (24) PTC 355(Delhi) provides a complete answer to that submission. The court was in that case also dealing with a similar argument against the issue of an injunction which was repelled, holding that the use of the trade mark by some other party against whom the plaintiffs have not proceeded immediately for seeking an injunction would not dis-entitle him from seeking an injunction against another party who was similarly committing a violation.”

            In 1998 PTC (18) 698, Indan Shaving Product Limited Vs Gift Product, the Hon’ble High Court of Delhi dealt with the contention of the defendant as under: “It was next argued by the learned counsel for the defendant that the said trade mark Ultra is being used by several other persons/companies besides the defendants such as Toshiba, National and Sony. Thus the same has become publici juris and the plaintiffs can not claim any exclusive right therein. Admittedly, the said parties are not before this Court. Neither the said parties are claiming any relief against the plaintiffs nor the plaintiffs are claiming any relief against them. Hence the said defense, that other persons are also using the said trade mark, is not available to the defendants. The Court is called upon to decide disputes in between the parties which are before it. The Court cannot be expected to adjudicate upon a dispute which is not before it. A matter very much akin to the matter in hand came up before a single Judge of this Court.”

       In Amrit Soap Company Vs. New Punjab Soap Factory, 1989(2) Arbitration Law Reporter 242, the Hon’ble High Court of Delhi answered this aspect in this manner, "The allegation that some other manufacturers are also using the same trade mark is of no consequence as the Court is concerned with parties before it only."

            In 2016(68)PTC37(Cal),  Assam Roofing Ltd. Vs  JSB Cement LLP, the Hon’ble High Court of Kolkata returned the following finding, “It is a settled legal position that the use of a registered mark or the essential feature thereof by others is not a defence available to the Defendant in an action for infringement and passing off. Merely because the Plaintiff has chosen to sue one infringer first and has not at such time sued others for infringement is also no defence in an action for infringement and passing off and it is settled law that it is the prerogative of the Plaintiff/registered proprietor/owner of a mark whom to sue so as to protect its rights.”

            After going through all the afore mentioned different Judgments as laid down by the Hon’ble Supreme Court of India and Hon’ble High Court , the principle which emerges is that use of the trademark of the plaintiff by the third parties , is no defence in an action for infringement of trademark and passing off. The plaintiff is not required to run after every infringers. In action on the part of the plaintiff in taking action against other infringers, does not entitle the defendants to use the trademark of the plaintiff. What the court is required to see, is the list between the contesting parties. The Court has to see the respective rights and user of the contesting parties. The court is not required to see the rights of the third parties. The plaintiff’s inaction against other infringers does not mean abandonment of the trade mark.  The plaintiff can wait . till it feels that third party user is damaging its right. The defendant can not say that plaintiff can not allege right in the trademark, as other parties are using the plaintiff’s registered trademark and that plaintiff is not taking any action. This defense of the defendant is of no help.

           

                                     AJAY AMITABH SUMAN, ADVOCATE

                                     DELHI HIGH COURT

CRIMINAL LIABILITY OF A PARTY MAKING FALSE STATEMENT OR PLEADING IN THE COURT, IN VIEW OF SECTION 209 IPC.

     Section 209 of IPC has remained unchartered territory in matters pertaining to Intellectual Property Rights, especially  pertaining to Trade Marks/Copyright. In matters pertaining to trade   marks, copyrights, there is general tendency of parties to make tall claim of user of trademarks/copyright. Whenever a  suit is filed or written statement is filed, the contesting parties are  making tall claim of user, but in most of the matters, the  party   seldom files the documents substantiating the claimed user. Or in many cases, the party takes the contradictory claim of user  with respect to the user, they have claimed in trade mark  application. In such circumstances, Section 209   IPC can be     invoked by the Hon’ble Court so that party should restrain themselves from making false claim.

Section 209 IPC states as here under:-

Section 209 – dishonestly making false claim in Court.

            “Whoever fraudulently or dishonestly or with intent to injure or any person makes  in a court of justice any claim which knows to be false, shall be published with imprisonment of either description or a term which may be extend to two years, and also shall be liable to fine.”

                        It is submitted that the Hon’ble Court may take recourse of Section 165 of the Indian Evidence Act 1972 to carve out the  truthfulness of the statement made by the parties.

Section 165 of Indian Evidence Act states as here under:-

            Section 165 in The Indian Evidence Act, 1872

                         “165. Judge’s power to put questions or order production.—The Judge may, in order to discover or to obtain  proper proof of relevant facts, ask any question he pleases, in  any form, at  any time, of any witness, or of the parties, about  any fact relevant or irrelevant; and may order the  production of any document or thing; and neither the parties  nor their agents shall be entitled to make any objection to any such question   or order, nor, without the leave of the   Court, to cross-examine any witness upon any answer given in reply to any such question: Provided that the Judgment must be based upon facts declared by this Act to be   relevant, and duly    proved: Provided also that this section   shall not  authorize   any Judge to compel any witness to answer      any question, or to produce any document which such    witness would be     entitled to refuse to answer or produce under sections 121 to  131, both inclusive, if the questions    were asked or the documents were called for by the adverse party; nor shall the Judge ask any question which it would be   improper for any other person to ask under section 148 or    149; nor shall he dispense with primary evidence of any  document, except in the cases herein before excepted.”

            Normally in matters pertaining to IPR (Viz: trademark/design), when ever a party is making false claim of user, that is penalizing by grating or vacating the Injunction. But what should be criminal liability of party making such a false statement, has not been dealt with by the Court.  Recently vide order dated 20.04.2015 passed in FAO 114/2015, passed by HON'BLE MR. JUSTICE J.R. MIDHA, notice under Section 209 IPC has been issued to the Appellant for making false claim. The relevant portion of the said order is being reproduced as herein below:

       “The appellant has challenged the impugned order dated 20^th February, 2015 whereby he has been restrained   from using the registered trademark ‘POLO’ and the device  of a rider playing  polo. The appellant adopted the  respondent’s trademark ‘POLO’   as well as respondent’s  device in the year 2007. This Court is of the prima facie view that the appellant has made a false claim which amounts to an offence under Section 209 of the Indian  Penal Code.”

            It is submitted that the said notice was issued as the  Hon’ble  Court was of the view that the user claimed by the appellant in the matter was wrong. However vide   order dated 03.11.2016 passed in the said Appeal, the said matter was not tested by the Hon’ble Court, as the matter was remanded back and notice under Section 209   IPC was  withdrawn. The relevant portion of Order dated 03.11.2016 passed in the said Appeal is being reproduced as herein below:

             “Since the matter is being remanded back, the show cause notice dated 20^th April, 2015 under Section 209 IPC is withdrawn. However, the Trial Court shall consider Section  209 IPC at the time of final hearing of the suit after recording of the evidence.”

           The criminal liability of a  party, making a false claim of user , is yet to be tested in purview of Section 209 IPC. I am proposing general guidelines for invoking the        provision of Section 209 IPC.

           

  The provision of Section 209 IPC is penal in nature and the court should exercise precaution in applying the same in  matters pertaining to Intellectual Property Rights, especially in relation to matters pertaining to trade mark. Section 209 IPC can be held to be applicable where it appears to the court that the party, other than owner of the trade mark, has wrongly and dishonestly adopted the trade mark.

Though it is very difficult to make out the circumstances  where it can be held that the provisions of Section 209 IPC can be held to be applicable. However here are few of the examples  where a party can be held to be punishable for the offences committed under Section 209 IPC

             In case of counterfeiting (meaning thereby use of  identical trade mark by any other party, other than the original owner/proprietor, in relation to duplicate/pirate/counterfeit  product), the offence under Section 209 IPC is made out as in such cases the counterfeiters are fraudulently or dishonestly make false claim in the court as to their ownership in relation to  counterfeit products, whereby the interest of owner of the trade    mark is adversely effected.

           Where the trade mark of a party is an arbitrary or coined or a well known trade mark, in such circumstances adoption of  similar trade mark by another party can be held to be ex-facie   illegal or dishonest. For example the trade mark like SWISS MILITARY, BENZ, LOREAL, GARINER, LACOSATE, POLO RALPH LOREN, LAKME,  etc., where  the owner has coined the trade mark, if any other party is claiming to be proprietor of same or similar trade mark, the dishonesty committed on the part of other party is ex-facie apparent and offence under  Section 209 IPC is made out.

          In case of ex-employee, ex-licensee, ex-director, ex-    partner, ex-distributor, ex-agent etc., the knowledge on their   part of the original owner of the trade mark can safely and   easily fastened. The ex-employee, ex-licensee, ex-director, ex-  partner, ex-distributor, ex-agent etc cannot claim to be owner   or proprietor of same/similar trade mark of the original  company/partnership firm/proprietorship firm. In case they  are doing so, they are making themselves liable to be punished  in accordance with Section 209 IPC.

          In some cases, the owner of a trade mark use the trade  mark in a artistic manner and also uses unique symbol. For example trademark HAMDARD WITH UNIQUE EYE DESIGN,   trade mark POLO WITH DEVICE OF POLO PLAYER, trademark LACOSTE WITH DEVICE OF CROCODILE etc. In      such cases if  third party uses either unique lettering style, artistic feature or the logo then the third party can easily be    imputed with the knowledge of the original trade mark. In such           cases also the court should initiate proceeding under Section  209 IPC.

         The provision of Section 209 IPC is applicable also in cases where a party dishonestly makes a claim which he knows to be false. These can be explain with examples like if a part has filed trade mark application with claiming a user since a particular date and year. If in the suit proceedings, the party  claims a different date of user of the same trade mark in relation to identical goods, in such case it is clear that before the Hon’ble court he makes a claim which he knows himself to     be false. It also applies to cases where a party takes a contradictory stand, to what he has taken in any other proceeding prior to the suit proceeding. The contradictory   stand may be of any kind , like the knowledge of the trade mark, the user of trade mark etc.

         In a party is wrongly using a symbol ® or “TM” in spite of the fact either the trademark is not registered or the trademark is not pending or have been abandoned. By claiming the trademark to be registered, though it is not registered, or by    making claim of trademark application, despite being the same abandoned, the party makes a false claim before the Court. The party can again be ex-facie held to be guilty of dishonesty in order to attract the provisions of Section 209 IPC.

       If a party is using false trade description on the impugned product then also the provisions of Section 209 IPC  can be said to have been attracted. There can be various examples of this kind. If a party is using a mark, symbol or        word or logo on their product to show that it is originating from      a particular country despite of this fact that the product is not  originating from that country, then also it can be said that the   person is making false claim to attract the provisions of Section 209 IPC. For example if a party is using the trademark SWISS  LIGHT with flag of Switzerland , without the product  emanating from Switzerland , or without being authorized to use the flag of Switzerland, then the party is apparently liable to be punished under the provision of Section 209 IPC.

                        Where the parties are located in same city, state or in  close proximity with each other and are using identical/similar  trademark in relation to same/similar products then also     knowledge on the part of subsequent adopter of  trademark  regarding the prior adopted and prior used trademark can easily be imputed. In similar fashion if the advertisement of  both the parties is found in same Newspaper or Magazine then also knowledge on the part of subsequent adopter can safely be imputed. In a nutshell if it can ex-facie be seen that the other party is having knowledge of the earlier trademark and in spite of knowledge the same keeps on using the same/similar  trademark.

                        All these guidelines are also applicable to third parties  who are the subsequent adopter of trademark mark and are subsequently using the trademark as a part of domain name/e-   mail ids/trade name etc. Even if third party uses the well     known or arbitrary trademark as part of the software  application , service mark etc. The provisions of Section 209 IPC can also be liable to liable where the intermediaries are not the following the guidelines as warranted under the provisions of Section 79 of the Information Technologies Act and the   guidelines issued in the year 2013 in relation thereto.

                        Third party can evade the liability under Section 209 IPC     if the same can prove that he is not aware of the trademark of the original owner of a trademark. For example if a party is  based in Kashmir and another party is based in Chennai.      Though the party based in Kashmir may be prior user of a trade  mark but if party based in Chennai adopts the similar  trademark but if the lettering style and symbol used with    trademark are different then provisions of Section 209 may not  be attracted. If the parties are located at distant places and are     dealing in different products then also it is not a fit case to   apply the provisions of Section 209 IPC. Provisions of    SECTION 209 IPC may also not be attracted where the subsequent user of a trademark proves his bonafide by  roducing the search report from the trademark registry in   order to establish that the same has inquired from trademark registry to ascertain whether similar trademark exists in the    name of some other party.

                                                AJAY AMITABH SUMAN,  ADVOCATE

                                                DELHI HIGH COURT