Venus Sportswear Vs Dinesh Jain

..... Respondent

Mr. Shivendra P. Singh and Mr. Sunil Mishra, Advocates. (M:9953394364)

..... Petitioners

Mr. Jayant Mehta, Mr. Sazeed Rayeen and Mr. Ajay Amitabh Suman, Advocates. (M:9990389539)

$~32

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+CM (M) 1509/2019, CM APPLs. 46155/2019 & 46156/2019

VEENUS SPORTSWEAR PRIVATE LIMITED &

ANR.

Through:

versus

DINESH JAIN

Through:

CORAM:

JUSTICE PRATHIBA M. SINGH

ORDER

%                                         11.12.2019

1.                 The  only  issue  in  this  case  is  that  the  Petitioners/Defendants

(hereinafter ‘Defendants’) have failed to file the original documents and

only photocopies of the same were on record at the time of admission/denial.

The Trial Court has refused permission to exhibit the copies, which are on

record, on the ground that the originals were not produced at the time of

admission/denial.

2.                 The suit is one for injunction restraining infringement of trademark, passing off, etc. The following issues were framed in the suit.

“1. Whether the plaintiff is the Registered Proprietor of the Mark TYCOON Registered under no. 632354 in class 25 and 632353 in class 15 dated 29^th June, 1994 claiming use of the mark since the year 1994, being so, is he entitled to a decree of infringement action in terms of prayer clause '(a)'? OPP

2.    Whether the plaintiff is entitled to the remedy of passing off being prior user of the mark TYCOON since the year 1994? OPP

Or

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Whether the defendant are entitled to the protection of the use of products under the mark TYCOON under Section 33 of the Trade Marks Act, 1999 being prior user of the mark to that of the plaintiff? OPD

3.     Whether the plaintiff is entitled to Rendition of Accounts and damages in terms of prayer clause '(d) & (e)'? OPP

4.     Whether the plaintiff is guilty of concealment of material facts? OPD

5.           Whether suit suffers delay, latches and acquiescence? OPD

6 Whether the plaintiff has never used the mark TYCOON as a trademark for its products? OPD. Relief.”

3.                 One of the issues to be adjudicated is in respect of prior user of the mark. The Defendants had an obligation to file the originals of the documents including the invoices to establish prior user at the stage of admission/denial. However, they have not done so.

4.                 The evidence by way of affidavit has now been filed by the Defendants. The affidavit seeks to exhibit copies of the documents which are on record. These documents are not new and the Plaintiff has notice of these documents. Evidence is being recorded before the Local Commissioner.

5.                 The settled legal position is that if during recording of evidence before the Local Commissioner, objections are raised, the Commissioner is to record the objections and proceed with the cross examination. The objections raised would have to be adjudicated at the final stage. A similar situation had arisen in the case of Exide Industries Ltd. v. Exide Corporation USA, 2014 (58) PTC 200 (Del). The said judgement was also

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followed subsequently in M/s. Prakash Oil Corporation & Anr. v. Brijj Kishan [CM(M) 1002/2018, decided on 19^th September, 2019].

6.                 In view of the above stated facts and legal position, the following directions are issued:

1)    The Defendants’ evidence is yet to commence. The Defendants shall place on record all the original invoices. Only the original documents now annexed with the affidavit shall be exhibited/marked in accordance with law, subject to the objections to be taken by Plaintiff being recorded by the Local Commissioner.

2)    The question as to whether these documents are relevant and if the same are necessary for final adjudication and are admissible in evidence, would be decided prior to the commencement of the final arguments in the suit.

3)    If the Plaintiff wishes to file any rebuttal evidence in respect of these documents, as the evidence of the Plaintiff stands concluded, they are permitted to do so.

7.                 Owing to the delay in filing the original documents, costs of Rs.50,000/- are imposed upon the Defendants to be paid to the Plaintiff on or before the next date before the Trial Court. The Local Commissioner shall record the examination in chief of the Defendants’ witnesses only upon the production of proof of payment of costs.

8.                 The petition along with the pending applications is disposed of in the above terms.

PRATHIBA M. SINGH, J.

DECEMBER 11, 2019/dk

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Amrish Aggarwal Vs Venus Home Appliances

$~10

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of decision: 27th

August, 2019.

+

CM (M) 1059/2018

AMRISH AGARWAL

Through:

..... Petitioner

Mr.  Ajay  Amitabh  Suman  and  Mr.

Vinay   Kumar   Shukla,     Advocates.

(M:9990389539)

versus

M/S VENUS HOME APPLIANCES PVT. LTD. ..... Respondent

Through:        Mr.    R.    K.    Aggarwal    and      Ms.

Aparajita             Sharan,             Advocates.

(M:9654010731)

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

CM APPL. 36518/2018 (exemption)

1.                 Allowed, subject to all just exceptions. Application is disposed of.

CM (M) 1059/2018 & CM APPLs. 36516-17/2018

2.                 The present petition has been filed challenging order dated 4^th August, 2018 by which the ld. Trial Court has taken on record the Legal Proceedings Certificate relating to the trademark ‘VENUS’. The objection by the Petitioner/Defendant (hereinafter, ‘Defendant’) is that the evidence is concluded and the Respondent/Plaintiff (hereinafter, ‘Plaintiff’) is seeking to file the said documents at the stage of final arguments.

3.                 He relies upon a judgment of a ld. Single Judge of this Court in Gold

Rock World v Veejay Lakshmi Engineering Works Ltd. (2008) 149 PLR 40 to argue, that at this belated stage, the document could not have been taken

CM (M) 1059/2018                                                                                                                                        Page 1 of 4

on record. Ld. counsel appearing for the Plaintiff, on a query from this Court states that though the trademark registration was itself not filed at the initial stage, only the renewal certificate was on record and the same was duly exhibited.

4.                 In a trademark infringement matter, the Court ought to be able to see the mark. Either the Legal Proceeding Certificate or registration certificate along with the Journal extract ought to have been filed by the Plaintiff, to enable the Court to see that the trademark itself is registered. In this case, the Legal Proceeding Certificate was not filed during the entire pendency of the suit. It was only at the final stage of arguments that the Plaintiff sought to file the Legal Proceeding Certificate.

5.                 In matters involving trademark infringement, there is no doubt that the trademark registration itself is a matter of public record, and can be accessed by visiting the Trademark Registry’s website itself. However, in order for the Court to consider the registration, documentary evidence in the form of either the trademark registration along with the journal extracts or the Legal Proceeding Certificate ought to be placed on record. In the present petition, initially, except the renewal certificate no other document was filed and the ld. Trial Court has taken the Legal Proceeding Certificate on record at the final stage. Though the documents are public record, usually the normal course, which is adopted is to obtain certified copies of the said public record in order to rely on the same in suit proceedings or other proceedings. In the present case, neither was done by the Plaintiff. The Defendant, thus, opposes allowing the Legal Proceeding Certificate to be taken on record.

6.                 The Court has heard the parties  and perused the pleadings in the

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plaint, which are clearly based on the registration of the trademark ‘VENUS’. The trademark registration certificate ought to have been filed at the initial stage, however, since substantive justice is to be done in the matter and the trademark registration itself was pleaded by the Plaintiff, the Legal Proceeding Certificate is permitted to be taken on record, subject to payment of Rs.50,000/- as costs to the paid to the Defendant.

7.                 It is further directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:

i.            Legal Proceedings certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc.,

ii.            If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licences and assignments ought to be pleaded;

iii.            Usually, at the time of admission/denial, parties ought not to be permitted to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from public record online;

iv.            In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side;

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The present order be communicated to all the ld. District Judges by the worthy Registrar General of this Court so that the directions contained herein can be brought to the notice of the Judicial officers especially in the commercial courts. In addition, the order be also communicated to the Controller General of Patents, Designs and Trade Marks (Ph:-022-24132735, Email:- cgoffice-mh@nic.in) as also the Joint Secretary, DPIIT (Ph:- 022-23062983) to ensure that LPCs when applied for are issued without delay and in any case within a period of 30 days.

8.                 With these observations, the petition is disposed of. All pending applications also disposed of.

PRATHIBA M. SINGH

JUDGE

AUGUST 27, 2019/dk

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