BRIEF INTRODUCTION OF TRADE MARKS LAW IN INDIA.

       

THE ACT

The Law pertaining to Trade Marks in India is governed by Trade Marks Act 1999. The Trade Marks Act 1999 came into operation in India since the year 15^th September 2003. Prior to Trade Marks Act 1999, the law pertaining to Trade Mark in India was governed by Trade and Merchandise Marks Act 1958.

TRADE MARK

A Trade Mark is a mark, which may be in the form of a word, phrase, symbol or design, or combination of words, phrases or symbols .

THE BASIC FUNCTION OF A TRADE MARK

The basic function of Trade Mark is to identify or distinguish the product/services of one person  from that of other, during the course of Trade. In other words , the Trade Mark signifies the origin of a product form one individual , during the course of Trade.

WHY OWNER OF A TRADE MARK SHOULD BE VIGILANT ABOUT PROTECTING THE TRADE MARK.

After maintaining the high quality of a product and after investing the huge amount on the advertisement, a Trade Mark got recognition in the Market. Because of the effort of the owner of a Trade Mark, people at large start purchasing a good because of its name. Normally for promoting a Trade Mark in Market lots of effort , resources and skill is required, which a small business do not possess. So in order to make easy money , even the small scale business man tempts to sell their inferior quality products under the well accepted brands . Because of sell of inferior quality products under the accepted Trade Mark/Brand, the reputation of the same badly tarnishes. In most cases , a well known Trade Mark/Brand dies because of piracy/pirated products. Hence it becomes imperative on the part of brand owner to protect their well known Trade Marks/brands against the pirates from getting the goodwill/reputation of the same being damaged/eroded.

HOW A PERSON CAN CLAIM TO BE OWNER OF A TRADE MARK

A person acquire the right in Trade Mark, either by user or by registration. The government of India has provided a machinery for felicitating the registration of a Trade Mark.

HOW THE RIGHTS IN TRADE MARK CAN BE PROTECTED

The owner of a Trade Mark/Brand can seek recourse of either civil remedy or criminal remedy.

CIVIL REMEDY: The owner of a Trade Mark can file a civil Suit , seeking to stop the pirates from using the Trade Mark. In case the Trade Mark is registered , then Suit for infringement can be filed. In case the Trade Mark is not registered, then the common law remedy of passing off , is available. In civil Suits, the local commissioners can be appointed and the counterfeits (fake ) products  of the  pirates can be seized.

DIFFERENCE BETWEEN THE INFRINGEMENT AND PASSING OFF REMEDY

            The Trade Mark owner can sue for infringement of a Trade Mark against the pirated use by the third party, in case the Trade Mark is registered. In case the Trade Mark is not registered , then the Trade Mark owner can sue for the common law remedy of passing off. Infringement is a statutory remedy and passing off  is a common law remedy.

CRIMINAL REMEDY:  The owner of a Trade Mark can file a criminal complaints against the pirates. In criminal complaints, the search and seizure orders are issued counterfeits (fake) products of the pirates can be seized. The criminal remedy is more effective in nature as because of the same, the pirates may put behind the bars, besides seizure of the fake products. 

The punishment for selling/providing services by using a falsified trademark is minimum of six months and maximum of three years. The Court can also impose a fine not less than Rupees fifty thousand, which may be may extend up to Rupees two lakh.

RIGHTS CONFERRED BY REGISTRATION

In case a person gets a Trade Mark registered, then the same get the exclusive right to use the registered Trade Mark in relation to the goods or services in respect of which the trademark is registered. Though registration of a trademark is not compulsory, however it offers better legal protection for action for infringement. On the basis of the registered Trade Mark, the registered proprietor may sue for infringement. In case of unregistered Trade Mark, the owner is having common law remedy of passing off, which is relatively inconvenient remedy. In case of passing off, the owner has to establish prior, continuous user , tremendous goodwill and reputation of the Trade Mark/brand, while in case of infringement, mere production of registration certificate is sufficient. Registration certificate it self is prima facie evidence of its validity and production of the registration certificate is sufficient enough to obtain the injunction order in cases of infringement. This is the reason, why it is always advisable to go for registration.

WHO CAN APLY FOR OBTAINING A TRADE MARK REGISTRATION

Any person, claiming to be owner of a Trade Mark , may file Trade Mark application in relation to good or services.

LOCUS OF TRADE MARK REGISTRY FOR FILING THE TRADE MARK APPLICATION.

The government of India has established five Trade Mark Registry in India , located at  Delhi, Mumbai,  Kolkatta, Chennai and Ahmedabad. The government of India has conferred upon each registry particular areas in India, and a person carrying out its business activity in that particular area, may apply for registration of Trade Mark in respective Trade Marks Registry.

In case, the principal place of business is outside India, then the it is normal practice that the application can be filed in the Trademark office, under whose jurisdiction the office of the lawyer is  situated( by treating the office of advocate as address for service in India).

In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.

PRECAUTIONS, ADVISABLE TO BE TAKEN, PRIOR TO FILING OF TRADE MARK APPLICATION.

Prior to  making an application for registration before the Trade Marks registry,  it is advisable to take search report from  Trademark office in order to ensure that a same/similar  Trade Mark in relation to same/similar goods/service does not exist in the name of other person. Obtaining a search report from the Trade Marks registry also establishes the bonafide and honest adoption of a Trade Mark by the person.

 STEPS FOR REGISTRATION OF A TRADE MARK

Step 1

A person may file Trade Mark application after filing the form TM-1 along with the prescribed fee. The application is filed in triplicate. Along with the form 1, five copies of representation sheet is also required to be filed. In   representation sheet  name of owner of the Trade Mark, class of the goods, description of the goods, user claimed and nature of business has to be mentioned.

In Trade Marks Act 1999, the legislature has provided for classification system in which goods and services have been grouped into different  classes of goods and services. In the earlier act , i.e. Trade and Merchandise Marks Act 1958, the classification for service sector was not there. Now in the Trade Mark Act 1999, the service class has also been taken care of. Depending upon the nature of goods and services, the applicant may choose the respective goods and class.

Step 2

The registrar of Trade Marks provides the Trade Marks application number.

Step 3

The Examiner of Trade Mark issues the objection regarding the Trade Mark application filed. Normally a hearing is appointed and the Applicant is granted the opportunity to meet the objection raised by the Examiner of Trade Mark.

Step 4

In case the Applicant satisfy the Examiner of Trade Mark , then the Trade Mark application is ordered to be advertised in the Trade Mark Journal.

STEP 5

            In case some error has been crept in the advertisement of the Trade Mark, then the applicant can get the error in the advertisement amended/corrected. The corrected Trade Mark has to be advertised again , in case the amendment is substantial.

Step 6

Within 3 months (plus one month extended period) of advertisement of the Trade Mark in Trade Mark Journal (from the time the Trade Mark Journal is made available to the public), any person may file objection to the Trade Mark application filed by the Applicant. The grounds of opposition normally are that the Trade Mark application filed is not distinctive, nor capable of distinguishing the Trade Mark in respect of the goods applied for, or that it is descriptive  and has a direct reference to the character and quality of the goods , or that it is similar to earlier existing trade marks, or that the applicant is not the proprietor of the Trade Mark applied for etc. In case the no opposition is filed within the prescribed period, then the Trade Mark application of the Applicant got registered in his favour. In case the Opposition is filed within the stipulated period, ex explained hereinabove, then the following process has to ensue.

Step 7

After completion of pleading and evidence, a hearing is appointed in the opposition proceeding and either the application is allowed or the application is refused for registration. In the application is allowed then the Trade Mark application of the Applicant gets registered in his name. In case the application is refused, then the Applicant is having liberty to file an appeal against the refusal order before the Intellectual Property Appellate Board.

Step 8

Before the Intellectual Property Appellate Board, after completion of pleadings and evidence, the judgment is pronounced. In case the appeal of the applicant is allowed then the applicant got its trade mark registered. In case of adverse order, the applicant is having remedy to file appropriate writ petition before the High Court.

THE IMPORTANT TRADE MARKS FORMS

Form TM-1, TM-2, TM-3, TM-8, TM-51 for filing the Trade Mark application, depending upon the nature of the Trade Mark application.

Form TM-5 , for filing Notice of Opposition

Form TM-12  for Renewal of a Registered

Form TM-10 for payment of  surcharge for belated renewal of registered Trade Mark.

Form TM-13 for restoration of removed mark

Form TM-26 for filing petition for  rectification of a registered trade mark before the Registrar of Trade Mark

Form TM-46 for issuance of Legal proceeding  Certificate 

Form TM-54 for obtaining Official search request

Form TM-55 for obtaining the Preliminary advise of the Registrar as to the registrability of a Trade Mark

Form TM-60 for obtaining the non objection certificate by Registrar of Trade Mark in relation to a Copyright application filed before the Registrar of Copyright.

DURATION OF A  REGISTERED TRADE MARK

Once a Trade Mark got registered, then it remain valid and effective for a period of ten years. The Applicant may get its registered Trade Mark renewed after 10 years after payment of requisite renewal fee. In case the Trade Mark is not renewed within the prescribed time, then the Registrar of Trade Mark may remove the same from the register on account of non payment of the renewal fee.

USE OF SYMBOLS ON THE TRADE MARK , AS PERMISSIBLE BY THE LAW.

An applicant may use the symbol “TM” on the Trade Mark , in case the same file the Trade Mark application and that the same is pending adjudication before the registrar of Trade Mark. In case the Trade Mark application got registered , then the Applicant may use the symbol “R” on the Trade Mark. In case the Applicant has applied for the service mark , then it may use the symbol “SM” on the Trade Mark.

PROTECTION OF USER OF TRADE MARK IN FOREIGN COUNTRIES

In case the Applicant gets the Trade Mark registered in India, then the same gets the exclusive right to use the Trade Mark in India only. In case the Applicant is having user  out side of the Indian Territory, then in order the obtain the statutory right in the foreign country, the applicant must have file application for Trade Mark registration in respective foreign country.

By getting the Trade Mark registration in a country, one gets the Trade Marks right in that particular country. Till today there is no any system available across the world that by filing a single Trade Mark application, the Applicant gets the right to protect the Trade Mark internationally. However at some places in the world , the multinational trade mark filing system has been adopted. Foe example,  The European Union,  comprising  of 15 countries,  has adopted the Community Trademark system. Another example is The African Organization for Intellectual Property (OAPI), a group of African nations, have also adopted the multinational Trade Mark application filing system, in other words , in these countries the  national trademark offices has been replaced  by their common trademark office, where by  a system has been provided for  a single trademark registration to be  valid in all of the member countries.

BY AJAY AMITABH SUMAN

ADVOCATE

                                                         

BRIEF INTRODUCTION OF TRADE MARKS LAW IN INDIA.

       

THE ACT

The Law pertaining to Trade Marks in India is governed by Trade Marks Act 1999. The Trade Marks Act 1999 came into operation in India since the year 15^th September 2003. Prior to Trade Marks Act 1999, the law pertaining to Trade Mark in India was governed by Trade and Merchandise Marks Act 1958.

TRADE MARK

A Trade Mark is a mark, which may be in the form of a word, phrase, symbol or design, or combination of words, phrases or symbols .

THE BASIC FUNCTION OF A TRADE MARK

The basic function of Trade Mark is to identify or distinguish the product/services of one person  from that of other, during the course of Trade. In other words , the Trade Mark signifies the origin of a product form one individual , during the course of Trade.

WHY OWNER OF A TRADE MARK SHOULD BE VIGILANT ABOUT PROTECTING THE TRADE MARK.

After maintaining the high quality of a product and after investing the huge amount on the advertisement, a Trade Mark got recognition in the Market. Because of the effort of the owner of a Trade Mark, people at large start purchasing a good because of its name. Normally for promoting a Trade Mark in Market lots of effort , resources and skill is required, which a small business do not possess. So in order to make easy money , even the small scale business man tempts to sell their inferior quality products under the well accepted brands . Because of sell of inferior quality products under the accepted Trade Mark/Brand, the reputation of the same badly tarnishes. In most cases , a well known Trade Mark/Brand dies because of piracy/pirated products. Hence it becomes imperative on the part of brand owner to protect their well known Trade Marks/brands against the pirates from getting the goodwill/reputation of the same being damaged/eroded.

HOW A PERSON CAN CLAIM TO BE OWNER OF A TRADE MARK

A person acquire the right in Trade Mark, either by user or by registration. The government of India has provided a machinery for felicitating the registration of a Trade Mark.

HOW THE RIGHTS IN TRADE MARK CAN BE PROTECTED

The owner of a Trade Mark/Brand can seek recourse of either civil remedy or criminal remedy.

CIVIL REMEDY: The owner of a Trade Mark can file a civil Suit , seeking to stop the pirates from using the Trade Mark. In case the Trade Mark is registered , then Suit for infringement can be filed. In case the Trade Mark is not registered, then the common law remedy of passing off , is available. In civil Suits, the local commissioners can be appointed and the counterfeits (fake ) products  of the  pirates can be seized.

DIFFERENCE BETWEEN THE INFRINGEMENT AND PASSING OFF REMEDY

            The Trade Mark owner can sue for infringement of a Trade Mark against the pirated use by the third party, in case the Trade Mark is registered. In case the Trade Mark is not registered , then the Trade Mark owner can sue for the common law remedy of passing off. Infringement is a statutory remedy and passing off  is a common law remedy.

CRIMINAL REMEDY:  The owner of a Trade Mark can file a criminal complaints against the pirates. In criminal complaints, the search and seizure orders are issued counterfeits (fake) products of the pirates can be seized. The criminal remedy is more effective in nature as because of the same, the pirates may put behind the bars, besides seizure of the fake products. 

The punishment for selling/providing services by using a falsified trademark is minimum of six months and maximum of three years. The Court can also impose a fine not less than Rupees fifty thousand, which may be may extend up to Rupees two lakh.

RIGHTS CONFERRED BY REGISTRATION

In case a person gets a Trade Mark registered, then the same get the exclusive right to use the registered Trade Mark in relation to the goods or services in respect of which the trademark is registered. Though registration of a trademark is not compulsory, however it offers better legal protection for action for infringement. On the basis of the registered Trade Mark, the registered proprietor may sue for infringement. In case of unregistered Trade Mark, the owner is having common law remedy of passing off, which is relatively inconvenient remedy. In case of passing off, the owner has to establish prior, continuous user , tremendous goodwill and reputation of the Trade Mark/brand, while in case of infringement, mere production of registration certificate is sufficient. Registration certificate it self is prima facie evidence of its validity and production of the registration certificate is sufficient enough to obtain the injunction order in cases of infringement. This is the reason, why it is always advisable to go for registration.

WHO CAN APLY FOR OBTAINING A TRADE MARK REGISTRATION

Any person, claiming to be owner of a Trade Mark , may file Trade Mark application in relation to good or services.

LOCUS OF TRADE MARK REGISTRY FOR FILING THE TRADE MARK APPLICATION.

The government of India has established five Trade Mark Registry in India , located at  Delhi, Mumbai,  Kolkatta, Chennai and Ahmedabad. The government of India has conferred upon each registry particular areas in India, and a person carrying out its business activity in that particular area, may apply for registration of Trade Mark in respective Trade Marks Registry.

In case, the principal place of business is outside India, then the it is normal practice that the application can be filed in the Trademark office, under whose jurisdiction the office of the lawyer is  situated( by treating the office of advocate as address for service in India).

In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.

PRECAUTIONS, ADVISABLE TO BE TAKEN, PRIOR TO FILING OF TRADE MARK APPLICATION.

Prior to  making an application for registration before the Trade Marks registry,  it is advisable to take search report from  Trademark office in order to ensure that a same/similar  Trade Mark in relation to same/similar goods/service does not exist in the name of other person. Obtaining a search report from the Trade Marks registry also establishes the bonafide and honest adoption of a Trade Mark by the person.

 STEPS FOR REGISTRATION OF A TRADE MARK

Step 1

A person may file Trade Mark application after filing the form TM-1 along with the prescribed fee. The application is filed in triplicate. Along with the form 1, five copies of representation sheet is also required to be filed. In   representation sheet  name of owner of the Trade Mark, class of the goods, description of the goods, user claimed and nature of business has to be mentioned.

In Trade Marks Act 1999, the legislature has provided for classification system in which goods and services have been grouped into different  classes of goods and services. In the earlier act , i.e. Trade and Merchandise Marks Act 1958, the classification for service sector was not there. Now in the Trade Mark Act 1999, the service class has also been taken care of. Depending upon the nature of goods and services, the applicant may choose the respective goods and class.

Step 2

The registrar of Trade Marks provides the Trade Marks application number.

Step 3

The Examiner of Trade Mark issues the objection regarding the Trade Mark application filed. Normally a hearing is appointed and the Applicant is granted the opportunity to meet the objection raised by the Examiner of Trade Mark.

Step 4

In case the Applicant satisfy the Examiner of Trade Mark , then the Trade Mark application is ordered to be advertised in the Trade Mark Journal.

STEP 5

            In case some error has been crept in the advertisement of the Trade Mark, then the applicant can get the error in the advertisement amended/corrected. The corrected Trade Mark has to be advertised again , in case the amendment is substantial.

Step 6

Within 3 months (plus one month extended period) of advertisement of the Trade Mark in Trade Mark Journal (from the time the Trade Mark Journal is made available to the public), any person may file objection to the Trade Mark application filed by the Applicant. The grounds of opposition normally are that the Trade Mark application filed is not distinctive, nor capable of distinguishing the Trade Mark in respect of the goods applied for, or that it is descriptive  and has a direct reference to the character and quality of the goods , or that it is similar to earlier existing trade marks, or that the applicant is not the proprietor of the Trade Mark applied for etc. In case the no opposition is filed within the prescribed period, then the Trade Mark application of the Applicant got registered in his favour. In case the Opposition is filed within the stipulated period, ex explained hereinabove, then the following process has to ensue.

Step 7

After completion of pleading and evidence, a hearing is appointed in the opposition proceeding and either the application is allowed or the application is refused for registration. In the application is allowed then the Trade Mark application of the Applicant gets registered in his name. In case the application is refused, then the Applicant is having liberty to file an appeal against the refusal order before the Intellectual Property Appellate Board.

Step 8

Before the Intellectual Property Appellate Board, after completion of pleadings and evidence, the judgment is pronounced. In case the appeal of the applicant is allowed then the applicant got its trade mark registered. In case of adverse order, the applicant is having remedy to file appropriate writ petition before the High Court.

THE IMPORTANT TRADE MARKS FORMS

Form TM-1, TM-2, TM-3, TM-8, TM-51 for filing the Trade Mark application, depending upon the nature of the Trade Mark application.

Form TM-5 , for filing Notice of Opposition

Form TM-12  for Renewal of a Registered

Form TM-10 for payment of  surcharge for belated renewal of registered Trade Mark.

Form TM-13 for restoration of removed mark

Form TM-26 for filing petition for  rectification of a registered trade mark before the Registrar of Trade Mark

Form TM-46 for issuance of Legal proceeding  Certificate 

Form TM-54 for obtaining Official search request

Form TM-55 for obtaining the Preliminary advise of the Registrar as to the registrability of a Trade Mark

Form TM-60 for obtaining the non objection certificate by Registrar of Trade Mark in relation to a Copyright application filed before the Registrar of Copyright.

DURATION OF A  REGISTERED TRADE MARK

Once a Trade Mark got registered, then it remain valid and effective for a period of ten years. The Applicant may get its registered Trade Mark renewed after 10 years after payment of requisite renewal fee. In case the Trade Mark is not renewed within the prescribed time, then the Registrar of Trade Mark may remove the same from the register on account of non payment of the renewal fee.

USE OF SYMBOLS ON THE TRADE MARK , AS PERMISSIBLE BY THE LAW.

An applicant may use the symbol “TM” on the Trade Mark , in case the same file the Trade Mark application and that the same is pending adjudication before the registrar of Trade Mark. In case the Trade Mark application got registered , then the Applicant may use the symbol “R” on the Trade Mark. In case the Applicant has applied for the service mark , then it may use the symbol “SM” on the Trade Mark.

PROTECTION OF USER OF TRADE MARK IN FOREIGN COUNTRIES

In case the Applicant gets the Trade Mark registered in India, then the same gets the exclusive right to use the Trade Mark in India only. In case the Applicant is having user  out side of the Indian Territory, then in order the obtain the statutory right in the foreign country, the applicant must have file application for Trade Mark registration in respective foreign country.

By getting the Trade Mark registration in a country, one gets the Trade Marks right in that particular country. Till today there is no any system available across the world that by filing a single Trade Mark application, the Applicant gets the right to protect the Trade Mark internationally. However at some places in the world , the multinational trade mark filing system has been adopted. Foe example,  The European Union,  comprising  of 15 countries,  has adopted the Community Trademark system. Another example is The African Organization for Intellectual Property (OAPI), a group of African nations, have also adopted the multinational Trade Mark application filing system, in other words , in these countries the  national trademark offices has been replaced  by their common trademark office, where by  a system has been provided for  a single trademark registration to be  valid in all of the member countries.

BY AJAY AMITABH SUMAN

ADVOCATE

                                                         

ATLAS PLASTIC VERSUS C G ENTERPRISE

COMMENT:  In this case  Hon’ble High Court of Gujarat at Ahmedabad has returned the following  findings.

THIS CASE DEALS WITH THE ISSUE OF AMENDMENT OF PLAINT WHICH IS NECESSITATED BECAUSE OF EVENTS, WHICH OCCURRED DURING PENDENCY OF THE SUIT PROCEEDING.

1. The amendment prayed for is in continuation of the pleadings in the pleadings and the facts have a linkage. In other words, amendment prayed for is merely an addition of pleadings of facts which are subsequent happening. It could not be said that amendment prayed for introduces facts which are totally foreign to the controversy. They are in the nature of supplementary facts relating to subsequent developments. Amendment does not change the nature of suit at all. The amendment is necessary for wholesome adjudication of the controversy between the parties

COMPLETE TEXT OF JUDGEMENT:

                     IN THE HIGH COURT OF GUJARAT AT AHMEDABAD

                           CIVIL APPLICATION (OJ) NO. 342 of 2012

                                   In CIVIL SUITS NO. 2 of 2012

=======================================================

ATLAS PLASTIC....Applicant(s)

Versus

C G ENTERPRISE....Respondent(s)

======================================================= Appearance:

MR HARSHIL SHAH, ADVOCATE for the Applicant(s) No. 1

MR MITUL K SHELAT WITH MR KALPESH C PATEL, ADVOCATE for the======================================================

CORAM: HONOURABLE MR.JUSTICE N.V.ANJARIA

Date : 27/02/2015

CAV ORDER Learned advocate Mr.R.R. Shah appears for the applicant. Learned advocate Mr.Mitul Shelat for learned advocate Mr.Kalpesh Patel appeared and made submissions on behalf of the respondent. The present Application was considered and heard along with another Civil Application (OJ) No.589 of 2014 which was also for amendment. Both these Applications are interconnected arising from the same Suit proceedings and were heard together.

2. The present Application by the applicant- original plaintiff is filed under Order VI Rule 17 of the Code of Civil Procedure, 1908 praying for O/OJCA/342/2012 CAV ORDER amendment in the plaint.

3. The applicant-plaintiff instituted Civil Suit No.04 of 2011 for declaration, permanent injunction restraining infringement of design, rendition of accounts and delivery up of offending material under the Designs Act, 2000. The Suit was originally instituted before the District Court, Ahmedabad (Rural) at Mirzapur. The same came to be transferred to this Court by order below Exhibit 29 dated 08th February, 2012 in view of provisions of Section 22(4) and Section 90 of the Designs Act, 2000. The Suit came to be re-numbered as Civil Suit No.02 of 2012 as registered before this Court.

3.1 In the Suit, it is the case of the plaintiff stated in nutshell is that it is a sole proprietary concern and has created various designs having novel shapes and configuration of the various types of plastic seals for use in electric meters, gas meters, taxi meters, pay phones, petrol tankers, calibrations, valves, cash box, drums, transformers, etc., and that the plaintiff is the first original creator. It is the case that the defendant is engaged in the business of manufacturing and marketing of locking for closing device and that it is a subsequent registered proprietor of the impugned design No.218986 dated 06th October, 2008 in Class 08-07. The plaintiff has filed cancellation application dated 30th May, 2011 before the Controller of Designs, Kolkatta which is pending. In the Suit, the plaintiff has complained against the sets of passing of design committed by the defendant O/OJCA/342/2012 CAV ORDER by adopting and using the design of the plaintiff and the Suit is also for infringement of plaintiff's registered design No.205868. According to the plaintiff, it commenced the manufacturing of plastic seals in June 1999, prior thereto he was doing job work of various plastic works since 1989. It is the case of the Controller of Designs, Kolkatta has issued statutory protection to said unique design of plastics seal being registered No.205868. It was registered on 01st September, 2006 under the Designs Act.

3.2 The plaintiff has given details of the registrations obtained by it in respect of different types of plastic seals with different designs, shapes and configurations as per the list reproduced hereinbelow.

       Sr.        Design           Design             Class     Date of

       No.                           Regd. No.                     Registration

       1.    Plastic       Seal    179570              03       27.05.1999

       2.    Plastic       Seal    182371              03       17.05.2000

       3.    Plastic       Seal    182372              03       17.05.2000

       4.    Plastic       Seal    193033              03       28.08.2003

       5.    Plastic       Seal    205868             08-07     01.09.2006

       6.    Plastic       Seal    205869             08-07     01.09.2006

       7.    Plastic       Seal    205870             08-07     01.09.2006

       8.    Plastic       Seal    205871             08-07     01.09.2006

3.3          It may be stated that in this Application it is    further        averred       by     the         applicant       that   due   to inadvertence, a bona fide mistake has crept in not mentioning the registered design No.205871 along with registered design No.205868 in paragraphs 3,5,11,12,13,15,17 and 27(b) of the plaint and paragraphs 3,5,11,12,13,15,17 and 29(a) of the injunction application and accordingly the application for amendment of plaint and injunction application has O/OJCA/342/2012 CAV ORDER been filed on 02nd January, 2012 before the District Court of Ahmedabad (Rural) at Ahmedabad in Civil Suit No.04 of 2011, which has been transferred to this Court and re-numbered as Civil Suit No.02 of 2012. It is stated that the said amendment application is pending for hearing before this Court. It may be noted that the said Civil Application No.589 of 2014 was also kept for orders and the order therein is pronounced today.

3.4 As far as the present Application is concerned, applicant has prayed to incorporate the following averments by inserting paragraph 23.1 after paragraph 23 in the plaint.

"23.1 The said cancellation application of the plaintiff pending before the Hon'ble Controller of Designs, Kolkata and the final hearing of the said cancellation petition was held on 27.01.2012. It is further submitted that the plaintiff herein has received the order dated 27.09.2012 allowing the cancellation petition filed by the plaintiff in respect of Registered Design No.218986 of the defendant along with forwarding letter No.218986- D/Cancel dated 27.09.2012 from the Assistant controller of Patents & Designs, Kolkata. Copy of the said order dated 27.09.2012 with its forwarding letter are annexed hereto with the list."

3.5 Respondent has contested the prayer for amendment by filing its reply and it is objected. Affidavit-in-rejoinder is also filed.

4. Heard learned advocate Mr.R.R. Shah for the applicant and learned advocate Mr.Mitul Shelat with learned advocate Mr.Kalpesh Patel for the respondent.

5. From the contents of the aforesaid amendment prayed for, it could be seen that the averments are O/OJCA/342/2012 CAV ORDER sought to be added in the pleadings which are in the nature of subsequent developments. Paragraph 23 existing in the plaint whereafter aforesaid new paragraph is sought to be added reads as under.

"23. The cause of action has arisen when the plaintiff came to know for the first time in the last week of May, 2011 about the registration of the impugned design under No.218986 in class 08-07 by the defendant and immediately thereafter, the plaintiff has filed cancellation petiton thereof before the Controller of Designs, Kolkata. Further the cause of action in the present suit has arisen recently when the plaintiff came across the defendant's suit product under the same design being sold in the market of Ahmedabad and elsewhere in the month of November, 2011. The plaintiff has got knowledge that the defendant is manufacturing and marketing Plastic Seal/Locking For Closing Device under the impugned suit design in a clandestine and surreptitious manner and as such the cause of action is continuous and subsisting against the defendants from day to day till the defendant is restrained from using the said design and selling the said Plastic Seal/Locking for Closing Device in the open market. Moreover, the defendant has also infringed plaintiff's Regd. design by using the same or deceptively similar design and are also guilty of passing off by their design as and for the plaintiff's suit product and thus the defendant is guilty of infringement of plaintiff's Regd. Design under the provisions of Designs Act, 2000 and under section 20 of the Code of Civil Procedure, 1908. the cause of action is continuous and recurring day to day."

6. Therefore the amendment prayed for is in continuation of the pleadings in paragraph 23 and the facts have a linkage. In other words, amendment prayed for is merely an addition of pleadings of facts which are subsequent happening. It could not be said that amendment prayed for introduces facts which are totally foreign to the controversy. They are in the nature of supplementary facts relating to subsequent developments. Amendment does not change the nature of suit at all. The amendment is necessary for wholesome adjudication of the controversy between the parties.

O/OJCA/342/2012 CAV ORDER Therefore, the same could be granted.

7. Accordingly the amendment is granted by allowing the present Application in terms of paragraph 5(A).

(N.V.ANJARIA, J.) Anup

QUASHING OF FIR ON THE BASIS OF SETTLEMENT ARRIVED BETWEEN THE PARTIES

COMMENT: In this case, the Hon’ble Delhi High has returned the following 2 findings.

THIS CASE DEALS WITH THE ISSUE OF QUASHING OF FIR ON THE BASIS OF SETTLEMENT ARRIVED AT BETWEEN THE PARTIES.

1. Certain offences which overwhelmingly and predominantly bear civil flavour having arisen out of civil, mercantile, commercial, financial, partnership or such like transactions or the offences arising out of matrimony, particularly relating to dowry, etc. or the family dispute, where the wrong is basically to the victim and the offender and the victim have settled all disputes between them amicably, irrespective of the fact that such offences have not been made compoundable, the High Court may within the framework of its inherent power, quash the criminal proceeding or criminal complaint or FIR if it is satisfied that on the face of such settlement, there is hardly any likelihood of the offender being convicted and by not quashing the criminal proceedings, justice shall be casualty and ends of justice shall be defeated.

1. Those cases where the settlement is arrived at immediately after the alleged commission of offence and the matter is still under investigation, the High Court may be liberal in accepting the settlement to quash the criminal proceedings/investigation. It is because of the reason that at this stage the investigation is still on and even the charge-sheet has not been filed. Likewise, those cases where the charge is framed but the evidence is yet to start or the evidence is still at infancy stage, the High Court can show benevolence in exercising its powers favourably, but after prima facie assessment of the circumstances/material mentioned above. On the other hand, where the prosecution evidence is almost complete or after the conclusion of the evidence the matter is at the stage of argument, normally the High Court should refrain from exercising its power under Section 482 of the Code, as in such cases the trial court would be in a Crl. M.C. 3552/2013 Page 5 position to decide the case finally on merits and to come to a conclusion as to whether the offence under Section 307 IPC is committed or not. Similarly, in those cases where the conviction is already recorded by the trial court and the matter is at the appellate stage before the High Court, mere compromise between the parties would not be a ground to accept the same resulting in acquittal of the offender who has already been convicted by the trial court. Here charge is proved under Section 307 IPC and conviction is already recorded of a heinous crime and, therefore, there is no question of sparing a convict found guilty of such a crime.

COMPLETE TEXT OF JUDGEMENT:

IN THE HIGH COURT OF DELHI AT NEW DELHI

CRL.M.C. 3552/2013 & Crl. M.A. No. 656/2014

Date of Decision : 19th February, 2015

RAJESH PARSHAD ..... Petitioner

Through: Mr. Ravinder Aggarwal & Mr. S. K.

Chaudhary, Advocates

Versus

STATE ..... Respondent

Through: Mr. Parveen Bhati, Additional Public

Prosecutor for State with SI Yogesh

Kumar and Mr. P.N. Diwan,

Authorized Representative of

Respondent No. 2

CORAM:

HON'BLE MR. JUSTICE SUNIL GAUR

JUDGMENT

(ORAL) Quashing of FIR No.311/2001, under Sections 420 of IPC and 78/79 of the Trade and Merchandise Marks Act, 1958 and Section 63 of the Indian Copy Rights Act, 1957, registered at police station Kotwali, Delhi is sought on the strength of amicable resolution of the dispute between the parties vide Memorandum of Understanding of 21 st August, 2013.

Notice.

Mr. Parveen Bhati, learned Additional Public Prosecutor for respondent-State accepts notice and submits that Mr. P.N. Diwan, Authorized Representative of respondent No.2, present in the Court, is the first-informant of the FIR in question. Authorized Crl. M.C. 3552/2013 Page 1 Representative of second respondent affirms the contents of his affidavit and submits that the dispute between the parties stands settled, so proceedings out of the FIR in question be brought to an end.

Learned Additional Pubic Prosecutor for respondent-State on instructions from SI Yogesh Kumar, Investigating Officer of this case, submits that charge sheet for the offence of under Section 420 of the IPC and Trademarks and Copy Rights Act has been filed.

In „Gian Singh Vs. State of Punjab‟ (2012) 10 SCC 303 Apex Court has recognized the need of amicable resolution of disputes in cases like the instant one, by observing as under:-

"However, certain offences which overwhelmingly and predominantly bear civil flavour having arisen out of civil, mercantile, commercial, financial, partnership or such like transactions or the offences arising out of matrimony, particularly relating to dowry, etc. or the family dispute, where the wrong is basically to the victim and the offender and the victim have settled all disputes between them amicably, irrespective of the fact that such offences have not been made compoundable, the High Court may within the framework of its inherent power, quash the criminal proceeding or criminal complaint or FIR if it is satisfied that on the face of such settlement, there is hardly any likelihood of the offender being convicted and by not quashing the criminal proceedings, justice shall be casualty and ends of justice shall be defeated."

The aforesaid dictum stands reiterated by the Apex Court in a recent judgment in Narinder Singh v. State of Punjab (2014) 6 SCC

1. The pertinent observations of the Apex Court in Narinder Singh (Supra) are as under:-
2. In view of the aforesaid discussion, we sum up and lay down the following principles by which the High Court would be guided in giving adequate treatment to the settlement between the parties and exercising its power under Section 482 of the Code while accepting the settlement and quashing the proceedings or refusing to accept the settlement with direction to continue with the criminal proceedings:

29.1 Power conferred under Section 482 of the Code is to be distinguished from the power which lies in the Court to compound the offences under Section 320 of the Code. No doubt, under Section 482 of the Code, the High Court has inherent power to quash the criminal proceedings even in those cases which are not compoundable, where the parties have settled the matter between themselves. However, this power is to be exercised sparingly and with caution.

29.2. When the parties have reached the settlement and on that basis petition for quashing the criminal proceedings is filed, the guiding factor in such cases would be to secure:

(i) ends of justice, or

(ii) to prevent abuse of the process of any court. While exercising the power the High Court is to form an opinion on either of the aforesaid two objectives.

29.3. Such a power is not to be exercised in those prosecutions which involve heinous and serious offences of mental depravity or offences like murder, rape, dacoity, etc. Such offences are not private in nature and have a serious impact on society. Similarly, for the offences alleged to have been committed under special statute like the Prevention of Corruption Act or the offences Crl. M.C. 3552/2013 Page 3 committed by public servants while working in that capacity are not to be quashed merely on the basis of compromise between the victim and the offender.

29.4. On the other hand, those criminal cases having overwhelmingly and predominantly civil character, particularly those arising out of commercial transactions or arising out of matrimonial relationship or family disputes should be quashed when the parties have resolved their entire disputes among themselves.

29.5. While exercising its powers, the High Court is to examine as to whether the possibility of conviction is remote and bleak and continuation of criminal cases would put the accused to great oppression and prejudice and extreme injustice would be caused to him by not quashing the criminal cases.

29.6. Offences under Section 307 IPC would fall in the category of heinous and serious offences and therefore are to be generally treated as crime against the society and not against the individual alone. However, the High Court would not rest its decision merely because there is a mention of Section 307 IPC in the FIR or the charge is framed under this provision. It would be open to the High Court to examine as to whether incorporation of Section 307 IPC is there for the sake of it or the prosecution has collected sufficient evidence, which if proved, would lead to proving the charge under Section 307 IPC. For this purpose, it would be open to the High Court to go by the nature of injury sustained, whether such injury is inflicted on the vital/delegate parts of the body, nature of weapons Crl. M.C. 3552/2013 Page 4 used, etc. Medical report in respect of injuries suffered by the victim can generally be the guiding factor. On the basis of this prima facie analysis, the High Court can examine as to whether there is a strong possibility of conviction or the chances of conviction are remote and bleak. In the former case it can refuse to accept the settlement and quash the criminal proceedings whereas in the latter case it would be permissible for the High Court to accept the plea compounding the offence based on complete settlement between the parties. At this stage, the Court can also be swayed by the fact that the settlement between the parties is going to result in harmony between them which may improve their future relationship.

29.7. While deciding whether to exercise its power under Section 482 of the Code or not, timings of settlement play a crucial role. Those cases where the settlement is arrived at immediately after the alleged commission of offence and the matter is still under investigation, the High Court may be liberal in accepting the settlement to quash the criminal proceedings/investigation. It is because of the reason that at this stage the investigation is still on and even the charge-sheet has not been filed. Likewise, those cases where the charge is framed but the evidence is yet to start or the evidence is still at infancy stage, the High Court can show benevolence in exercising its powers favourably, but after prima facie assessment of the circumstances/material mentioned above. On the other hand, where the prosecution evidence is almost complete or after the conclusion of the evidence the matter is at the stage of argument, normally the High Court should refrain from exercising its power under Section 482 of the Code, as in such cases the trial court would be in a Crl. M.C. 3552/2013 Page 5 position to decide the case finally on merits and to come to a conclusion as to whether the offence under Section 307 IPC is committed or not. Similarly, in those cases where the conviction is already recorded by the trial court and the matter is at the appellate stage before the High Court, mere compromise between the parties would not be a ground to accept the same resulting in acquittal of the offender who has already been convicted by the trial court. Here charge is proved under Section 307 IPC and conviction is already recorded of a heinous crime and, therefore, there is no question of sparing a convict found guilty of such a crime."

Since the subject matter of this FIR stands mutually and amicably settled between parties, therefore, continuance of proceedings arising out of the FIR in question would be an exercise in futility.

Accordingly, this petition is allowed subject to cost of Rs. 1,00,000/- to be equally borne by petitioner and respondent no. 2 and be deposited with Prime Minster‟s Relief Fund within four weeks from today. Upon placing on record the receipt of cost, FIR No.311/2001, under Sections 420 of IPC and 78/79 of the Trade and Merchandise Marks Act, 1958 and Section 63 of the Indian Copy Rights Act, 1957, registered at police station Kotwali, Delhi and the proceedings emanating there from shall stand quashed qua petitioner.

This petition and application are accordingly disposed of.

(SUNIL GAUR)

JUDGE

FEBRUARY 19, 2015

rs

Crl. M.C. 3552/2013

Crl. M.C. 3552/2013

NOVARITIS VERSUS UNION OF INDIA 2013 (54) PTC 1 (SC)

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539