Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of decision: 27 August, 2019.
+ CM (M) 1059/2018
AMRISH AGARWAL ..... Petitioner
Through: 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
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2. The present petition has been filed challenging order dated 4 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
CM (M) 1059/2018 Page 2 of 4
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;
CM (M) 1059/2018 Page 3 of 4
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
CM (M) 1059/2018 Page 4 of 4