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 20th 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 20th
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
