Intellectual Property Rights | Trade Mark | Uncategorized

Amrish Agarwal v. Venus Home Appliances Pvt. Ltd.

 Amrish Agarwal v. Venus Home Appliances Pvt. Ltd.

2019 (80) PTC 414 (Del)

High Court of Delhi

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The Learned Trial Court had taken on record the Certificates for use in Legal Proceedings of the trade marks of the Plaintiff at the stage of final arguments. Aggrieved by the said order, the Defendant had filed the present appeal. Defendant/Appellant’s contention was that the documents cannot be taken on record at such a belated stage.

The Hon’ble Delhi High Court permitted the Legal Proceeding Certificate to be taken on record subject to cost of Rs. 50,000/-. The Hon’ble Court held that substantive justice is to be done in the matter and the trademark registration was in fact pleaded by the Plaintiff.

However, the Hon’ble Court directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:

  1. 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.,
  2. 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;
  3. 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;
  4. In the case of (2), 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.

The Hon’ble Court also directed the Controller General of Patents, Designs and Trade Marks as also the Joint Secretary, DPIIT to ensure that LPCs when applied for are issued without delay and in any case within a period of 30 days.

Author’s Comments:

The decision is partly in line with the scheme of the Trade Marks Act, 1999 on the evidentiary value of Certificates for use in Legal Proceedings. The decision is also in line with the scheme of the Commercial Courts Act, 2015 pertaining to the required documents that are to be filed along with the suit at the initial stage itself as well as the procedure for admission/denial of documents as per the Code of Civil Procedure, 1908 as amended by the Commercial Courts Act, 2015. In fact, it appears that the Hon’ble Court has passed these directions by reading the substantive law and procedural law harmoniously.

Further, considering the all pervasive urgency which Intellectual Property matters suffer from, the Hon’ble Court has also kept that in mind and has given a limited leeway to the litigants to defer the filing of Certificates for use in Legal Proceedings and the same are only required if the Defendant disputes any aspect of the trade mark registration.

The decision will help in saving time and money of the litigant as it allows them to file Certificates for use in Legal Proceedings only if the Defendant disputes any aspect of trade mark registration.

However, this leeway should only be allowed and implemented in cases where Plaintiff has approached the Hon’ble Court within couple of months from date of knowledge of infringement and not to those litigants who filed the suit after some delay which is clear on the combined reading of Direction 2 and 4.

So effectively by virtue of this decision, these documents can be relied upon till the same are challenged by the Defendant.

A small issue in the said order/directions appears to be that the Hon’ble Court has in order to cut short the controversy and technicalities allowed the filing of latest status report from the website of the trade marks registry. Therefore, can it be said that the evidentiary value of the same as well as of trade mark registration certificates has now been recognized by the Hon’ble High Court of Delhi till the stage of admission/denial.

This is when the creator of the status report and the registration certificates, i.e. trade marks office states in specific terms ‘Not for legal use’ on the status reports and also mentions a similar disclaimer on the registration certificates.

Further, the Hon’ble Court does not deal with the relying upon of such documents at the stage of temporary injunction which is considered crucial in all Intellectual Property Disputes. Whether, the Plaintiff would be entitled to rely on these documents only till the Defendant files his defence and in those circumstances whether the hearing on the Interim application be adjourned so as to wait for the Certificate for use in Legal Proceedings.

Thus, there appear to be some unanswered issues in otherwise intentionally correct directions.

Lastly, the Directions to the Government Departments are also in the the right direction as it has been observed that it takes a considerable amount of time from date of filing of an application to date of obtaining of Certificate for use in Legal Proceedings.

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