In the civil suit titled Amrish Agarwal v. M/S Venus Home Appliances Pvt. Ltd., [CM (M) 1059/2018] the Delhi High Court (Singh, J.) has, vide its order dated 2019.08.27, issued practice directions in relation to the documents that must be filed along with a plaint alleging trademark infringement.
The Plaintiff filed a suit plaint alleging infringement of the mark ‘VENUS’. Alongwith the plaint, Plaintiff had only filed a copy of the trademark renewal certificate issued by the Trade Marks Registry.
The Defendant, Amrish Agarwal, challenged the Trial Court’s order taking on record the Legal Proceedings Certificate (LPC) filed by the Plaintiff only at the final stage of arguments. The Trial Court order was after the conclusion of the evidence stage.
The High Court observed that in a trademark infringement matter, the Trial Court ought to be able to see the mark right when the suit plaint is filed. The High Court further observed that while it is true that trademark registration is a matter of record and that the registration can be accessed by visiting the Trade Marks Registry’s website, 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 LPC ought to be placed on record as a suit document along with the plaint itself. Seamless connectivity with the Trade Marks Registry for evidentiary purposes is clearly only aspirational for the Court system.
The High Court permitted the LPC to be taken on record even at a belated stage in the interest of justice but made it subject to payment of R.50,000 as costs to the Defendant. The High Court did, however, make clear that the Plaintiff should have filed the trademark registration certificate at the initial stage itself.
The High Court further directed that 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. must be filed along with the plaint in a trademark infringement matter.
In case the LPC is not available at the time of filing of the suit and the Plaintiff is seeking urgent orders of injunction then the Plaintiff must furnish a copy of the trade mark registration certificates, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. The Plaintiff should also make an averment in the suit plaint pleading that the LPC has been applied for. Additionally, specific averments that there are no disclaimers imposed on the mark and that the mark stands renewed, must also be made. Any licences and assignments for the mark must also be specifically pleaded.
Further, the LPC must be filed prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side.
The High Court also observed that as registration of trademarks is easily verifiable from the public records, parties should not be allowed to deny the factum of registration unless they have sufficient cause to do so.
The High Court directed the Registrar General of the Court to communicate this order to the District judges, particularly the judicial officers of the Commercial Courts as well as to the Trade Marks Registry.
The High Court has also directed the Registry to ensure that when one applies for LPC, the same is to be issued without delay and in any case within a period of 30 days. It is to be noted that the Trade Marks Act, 1999 and the Trade Marks Rules, 2017 do not specify a time limit within which the LPC is to be issued by the Registry. This judgement therefore fills a lacuna until an amendment of the statutes takes place.