When ever a right holder files a suit for infringement of Trademark, the same
does in a hasty manner. It is normal practice to file application under Order 39
Rule 1 and 2 CPC along with the Plaint , while asking for the prayer of Interim
Relief. As the relief in the nature of interim injunction are urgent in nature,
the plaintiff also has to reflect urgency.
Practical reality is also that the right holder files a suit for trademark
infringement, seeking urgent relief. The same is filed in hasty manner. When
there is lot of pressure on the advocate, many important documents are missed
out at the stages of filing of suit. Naturally when the suit is ripe for
evidences, these lacunae surfaces.
What could be natural consequences of that? Naturally filing of applications
seeking leave from the Hon'ble Court to file additional documents. The Opposite
party also gets time to file reply, then rejoinder. The Court also has to pass
In case party is aggrieved of that order, it may prefer Appeal. Then reply in
Appeal , then rejoinder. Appeal in order has to follow. If not appealed, then
opposite party is bound to get time for rebuttal. In this process the valuable
time of court is wasted. And resultantly the Judicial system is blamed for that.
These futile excise can be avoided if Plaintiff files the essential documents at
the time of filing of the Suit.
At least filing of trade mark registration certificate should be must for
proving trademark infringement. What if this vital document is not filed by the
right holder in a suit involving trade mark infringement without registration
certificate and that the same is filed at the evidence stage with application
seeking to put the same on record?
One of such case came up before Hon'ble High Court of Delhi in case bearing CM
(M) No.1059 of 2018 titled as Amrish Agarwal vs M/S Venus Home Appliances Pvt.
. It was also a case involving trademark infringement. In this case also the
Plaintiff filed renewal certificate only and not the registration certificate.
Whether application seeking leave to file the registration certificate at the
stage of evidence , should be allowed or not, was the issue lying before the Hon'ble High Court of Delhi.
Vide order dated 27.08.2019 passed by Hon'ble High Court of Delhi in afore
mentioned case bearing CM (M) No.1059 of 2018 titled as Amrish Agarwal vs M/S
Venus Home Appliances Pvt. Ltd., the same allowed registration certificate to be
taken on record, subject to payment of cost Rupees 50,000/-. While ding so the
Hon'ble High Court of Delhi laid down the following guidelines regarding filing
of necessary documents involving trademark infringement.
- 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 licenses granted, renewals etc.,
- 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 licenses and assignments ought to be pleaded;
- 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;
- 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;
These afore mentioned guidelines have proved very effective in reducing the time
of Hon'ble Court not at the time of filing of the Plaint but also at the time of
evidence stage. These guidelines are also necessary as Legal Proceeding
Certificate of a registered trade mark also contains whole chain of ownership of
trademark. Such guidelines ultimately would result in increasing trust of
business man in Indian Judiciary.
Written By: Ajay Amitabh Suman, Advocate
, Hon'ble High Court Of Delhi