Delhi HC passes directions on documents to be mandatorily filed with plaint in trademark infringement matters

Delhi HC passes directions on documents to be mandatorily filed with plaint in trademark infringement matters

Aditi Singh

The Delhi High Court has passed a slew of directions pertaining to the documents that need to be mandatorily filed along with a plaint in trademark infringement matters.

The order was passed by a Single Judge Bench of Justice Prathiba M Singh in a plea challenging an order of the Trial Court which had taken on record the Legal Proceedings Certificate relating to the trademark ‘VENUS’ in a trademark infringement suit.

The Legal Proceeding Certificate was filed by the plaintiff, M/S Venus Home Appliances Pvt Ltd. at a stage of final arguments and after the evidence was concluded. At the initial stage, only the renewal certificate was filed and the same was duly exhibited.

The defendant, Amrish Agarwal, challenged the order stating that at such a belated stage, a document could not be taken on record.

The Court observed that in a trademark infringement matter, it ought to be able to see the mark. Thus, either the Legal Proceeding Certificate or registration certificate along with the Journal extract should be filed by a plaintiff, to enable the Court to see that the trademark itself is registered.

It added that although trademark registration is a matter of public record and can be accessed by visiting the Trademark Registry’s website itself, 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.

The Court noted that in the present case, initially, except the renewal certificate no other document was filed and the Legal Proceeding Certificate was taken on record at the final stage.

In spite of the documents being public record, the plaintiff did not obtain certified copies of these public record in order to rely on the same in suit proceedings, it remarked.

The Court thus concluded that the trademark registration certificate ought to have been filed at the initial stage by the plaintiff.

However, in the interest of ‘substantive justice’, the Court permitted 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.

The Court then took the opportunity to pass directions with respect to the documents that ought to be necessarily filed along with the plaint in trademark infringement matters.

The directions are as follows:

    1. Legal Proceedings certificate (LPC) of the trademark 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. f the LPC is not available at the time of filing of the suit, 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.

For compliance of the order, the Court directed that the Registrar General of the High Court to communicate the order to all the District Judges, especially in the Judges of commercial courts.

In addition, the order shall also be communicated to the Controller General of Patents, Designs and Trade Marks and 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.

With these observations, the petition was disposed of.

The defendant was represented by Advocates Ajay Amitabh Suman, Vinay Kumar Shukla. 

The plaintiff was represented by Advocates RK Aggarwal, Aparajita Sharan. 

Read the Order:

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