The Delhi High Court
(HC) recently has passed a slew of directions associated with the documents
needed to be mandatorily filed along with a complaint in Trademark Infringement concerns. The specific order was passed by a Single Judge
Bench of Justice Pratibha M Singh following a plea challenging an order of the
Trial Court that had taken on record the Legal Proceedings Certificate
revolving around the trademark ‘VENUS’ in a trademark infringement lawsuit.
What’s the Matter?
M/S Venus Home
Appliances Pvt Ltd, the plaintiff in a trademark infringement lawsuit had filed
the Legal Proceeding Certificate at the stage of final arguments and after the
evidence was concluded. However, at the initial stage, only the renewal
certificate was filed and duly exhibited. Amrish Agarwal, the defendant in the
same case, challenged the Court’s order saying that a document could not be
taken on record at such a belated stage.
The Court said that in
a trademark infringement affair, it needs to be able to view the mark.
Therefore, along with the Journal extract, the plaintiff should file either the
Legal Proceeding Certificate or the registration certificate to enable the
Court to determine whether or not the trademark itself is registered.
It continued by saying
that although Trademark Registration is a matter of public record and people can access it by
visiting the Trademark Registry’s website, still to make the Court consider the
registration, documentary evidence in the form of either the journal extracts
or the Legal Proceeding Certificate, is essential to be put on record.
The Court then noted
that in the present case no other document except the renewal certificate was
filed at the initial stage and the Legal Proceeding Certificate was uncovered
at the final stage. It added that the plaintiff didn’t obtain the certified
copies of documents being the public record to rely on the same in lawsuit
proceedings. The Court, therefore, concluded that the plaintiff ought to file
the trademark registration certificate at the initial stage.
Nonetheless, in the
interest of ‘substantive justice,’ the Court concluded that the Legal
Proceeding Certificate is allowed to be taken on record, subjecting the
plaintiff to make a payment of Rs.50,000 to the defendant. The Court then
proceeded to grab the opportunity to pass directions regarding the documents
that ought to be mandatorily filed along with the complaint in trademark
infringement cases.
The directions
passed by the Court are as follows:
1.
Legal
Proceedings certificate (LPC) showing the trademark, date of application, date
of claim, conditions, disclaimers if any, assignments, and licenses granted
should be provided along with the trademark infringement plaint.
2.
If
LPC isn’t available at the time of filing the lawsuit and urgent orders of the
injunction are being sought, then there is a need to provide a copy of the
trademark registration certificate, along with a copy of the trademark journal
and the latest status report from the Trade Mark Registry’s website. An
averment in the pleadings that LPC is applied for should accompany this.
Besides making an averment showing that there are no disclaimers imposed on the
mark and the mark stands renewed, any licenses 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 is easily verifiable from public records online.
4.
If
the LPC is not available at the time of filing of the suit, the party ought to
file the LPC before the commencement of the trial if any aspect of the
trademark registration is being disputed by the opposite side.
For compliance of the
recently passed order, the Court has directed the Registrar General of the HC
to communicate the directions within the order to all the District Judges,
especially the judges of commercial courts. Other authorities who should be
aware of the same directions include the Controller General of Patents,
Designs, and Trademarks, and the Joint Secretary, DPIIT to ensure that LPCs
should be issued without delay and within 30 days from the date of
application. View Source:
https://barandbench.com/delhi-hc-passes-directions-on-documents-to-be-mandatorily-filed-with-plaint-in-trademark-infringement-matters/
For view source: https://www.kashishipr.com/blog/delhi-hc-passes-directions-on-documents-for-trademark-infringement-cases/
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