Delhi HC Passes Directions on Documents for Trademark Infringement Cases

NewsTrademark    October 7, 2019
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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: For more visit: 

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