$~1&2
*
IN THE
HIGH COURT OF DELHI AT NEW DELHI
+C.R.P.
No.146/2015 & CM No.21927/2015 (for stay)
REGISTRAR OF TRADE MARKS .....
Petitioner
Through: Mr. Sanjeev Narula, CGSC and Ms.
Anumita
Chandra, Adv.
versus
KAPOOR
SAWS MANUFACTURING CO & ORS ..... Respondents
Through: Mr. Amit Jain, Adv. for R-1.
Mr. S.K.
Bansal, Mr. Ajay Amitabh
Suman,
Mr. Saurabh Kapoor and Mr.
Kapil
Kumar, Advs. for R-3&4.
AND
+
C.R.P. No.29/2017 & CM
No.5066/2017 (for stay)
REGISTRAR
OF TRADE MARKS
THR
DEPUTY REGISTRAR OF TRADE MARKS
|
.....
Petitioner
|
|||
Through:Mr.
Sanjeev Narula, CGSC and Ms.
|
||||
Anumita
Chandra, Adv.
|
||||
versus
|
||||
SONIK
INDUSTRIES & ORS
|
.....
Respondents
|
|||
Through:Mr.
S.K. Bansal, Mr. Ajay Amitabh
|
||||
Suman,
Mr. Saurabh Kapoor and Mr.
|
||||
Kapil
Kumar, Advs. for R-1.
|
||||
Mr.
S.M. Gupta, Adv. for R-2&3
|
||||
CORAM:
|
||||
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
|
||||
O R D E R
|
||||
%
|
31.07.2017
|
|||
1.
Civil Revision Petition
No.146/2015 was instituted impugning the order, of the Additional District
Judge in a suit inter se respondents
therein, directing issuance of Proclamation under Order XVI Rule 10 of the Code
of Civil Procedure, 1908 (CPC) to the Registrar of Trade Marks, Mumbai for the
reason of the Registrar of Trade Marks, Mumbai having failed to respond
C.R.P. No.146/2015 & C.R.P.
No.29/2017 page 1 of
8
to the notice to show cause, earlier issued, for non-production of
summoned record.
2.
Civil Revision Petition No.146/2015 was entertained
and vide ex parte
order dated 1st October, 2015 which continues to be in force, further proceedings
against the Registrar of Trade Marks before the Trial Court stayed.
3.
It is however today informed that
Proclamation to the Registrar of Trade Marks, in the suit qua which Civil
Revision Petition No.146/2015 has been filed, was ordered to be issued for the
reason of the petitioner Registrar of Trade Marks inspite of service of summons
having not produced the records of the Office of the Registrar of Trade Marks
summoned in the suit. It is also informed that the petitioner Registrar of Trade
Marks has since then furnished to the respondent which had summoned the
Registrar of Trade Marks, certified copies of the documents which were sought
to be summoned and in default of producing which the Proclamation was issued.
4.
The counsels were heard on 14th July, 2017. The counsel for the
petitioner Registrar of Trade Marks drew attention to Sections 136, 137 and
138 of the
Trade Marks Act, 1999 which provide as under:-
“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.
C.R.P. No.146/2015 & C.R.P.
No.29/2017 page 2 of
8
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.”
and
contended that without making an effort to obtain certified copies
of the
record of the petitioner, Registrar of Trade Marks and producing the
same to
obviate the need to summon the petitioner Registrar of Trade Marks,
straightway
summons were being issued asking the petitioner Registrar of
Trade
Marks to produce the records. The counsel for the petitioner Registrar
of Trade
Marks further stated that the offices of the petitioner 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 petitioner Registrar of Trade
C.R.P. No.146/2015 & C.R.P.
No.29/2017 page 3 of
8
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 petitioner Registrar of Trade Marks cannot be summoned as a
routine matter, as is generally being done.
5.
Per contra, it was the contention
of the counsel for the respondents No.3&4 in Civil Revision Petition
No.146/2015 that such applications for certified copies made to the petitioner
Registrar of Trade Marks remain pending for an indefinite time and hence the
need accrues to summon the record.
6.
On 14th July, 2017, the proposal, of
this Court issuing directions to the petitioner Registrar of Trade Marks for
time bound issuance of certified copies was mooted and the counsels requested
to exchange the draft orders incorporating the said directions.
7.
The counsels have been heard further today.
8.
The counsel for the respondents
no.3&4 in Civil Revision Petition No.146/2015 has contended, that
notwithstanding the production of certified copies, need to summon the original
record of the petitioner Registrar of Trade Marks may still arise in certain
cases.
C.R.P. No.146/2015 & C.R.P.
No.29/2017 page 4 of
8
9.
The counsel for the petitioner
Registrar of Trade Marks states that Section 138 though prohibits production of
records, contents of which can be proved by production of certified copy, but
itself provides for the contingency where, notwithstanding production of
certified copy, original may be required. It is however contended that the
summoning of the petitioner Registrar of Trademark should not be in routine
manner, without proper application of mind and it has to be by an order giving
reasons.
10.
Though in my view the Revision
Petition under Section 115 of the CPC is not maintainable against the order
impugned in Civil Revision Petition No.146/2015 but the petition having
remained pending, it is deemed appropriate to proceed to issue directions of a
general nature to all the offices throughout India of the petitioner Registrar
of Trade Marks qua the issuance of certified copies.
11.
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.
C.R.P. No.146/2015 & C.R.P.
No.29/2017 page 5 of
8
(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
C.R.P. No.146/2015 & C.R.P.
No.29/2017 page 6 of
8
within one month as aforesaid of the application for certified copy
having been made.
12.
Once the Registrar of Trade Marks
has implemented the aforesaid, it is expected that neither will any of the
parties to the litigation nor any of the Courts, where such litigations are
pending, would mechanically issue summons to the Registrar of Trade Marks as
witness, requiring it to produce records unless reasons are recorded as to why
the purpose of summoning cannot be served by obtaining certified copies and
tendering the same in evidence.
13.
The counsel for the petitioner Registrar of Trade
Marks states that for
issuing “expedited certified copies” within the
meaning of the Proviso to Rule 122 of the Trade Marks Rules, 2017 also, the
procedure above shall be followed.
14.
I may mention that Mr. S.K.
Bansal counsel for the respondents no.3&4 in Civil Revision Petition
No.146/2015 has during the hearing sought several other directions but which
are beyond the scope of this Roster and the counsel / his client is free to
avail of the appropriate remedies in that regard.
15.
The petitioner Registrar of Trade
Marks shall be at liberty to put up this order on the website of the Registrar
of Trade Marks for compliance by all litigants and Advocates.
16.
The counsel for the petitioner
Registrar of Trade Marks states that the position in Civil Revision Petition
No.29/2017 is the same.
17.
The counsel for the respondents
no.2&3 in C.R.P. No.29/2017 however states that the Registrar of Trade
Marks was summoned in that case
C.R.P. No.146/2015 & C.R.P.
No.29/2017 page 7 of
8
for, inspite of a direction to file an Action Taken
Report qua the matter of allowing the trade mark to proceed for registration
without opposition filed thereto being disposed of, having not been filed.
18.
The counsel for the petitioner
Registrar of Trade Marks states that if the Court has any reason to summon the
Registrar of Trade Marks and has recorded the said reason in the order of
summoning, the Registrar of Trade Marks would be bound to appear. The counsel
however states that the Action Taken Report on an application for registration
or on an opposition is also recorded and certified copy thereof can be issued;
it is stated that the respondents no.2&3, without even obtaining the
certified copy of the Action Taken Report, sought to summon the Registrar of
Trade Marks.
19.
The counsel for the respondents
no.2&3 in C.R.P. No.29/2017 states that the action was not taken.
20.
It will be open to the Civil
Court where the suit, from which C.R.P. No.29/2017 arises, is pending, to
decide whether any need to summon the Registrar of Trade Marks arises.
The petitions are disposed of. No costs.
A copy of this order be forwarded
to Hon‟ble the Chief Justice to consider the need if any for circulating the
same to all the Courts within the supervisory jurisdiction of this Court.
RAJIV SAHAI ENDLAW, J.
JULY 31, 2017
„pp‟..
C.R.P. No.146/2015 & C.R.P.
No.29/2017 page 8 of
8
