Delhi High Court Rules on Documents to be Filed with Complaints Alleging Trade Mark Infringement
A Legal Proceedings Certificate or LPC is prima facie evidence of any entry made in the Trade Marks Register. As is the case in most countries, intellectual property offices (the Registrar of Trade Marks in case of India) issue a certificate of registration of a trademark. However, as per the rules governing trade mark practice in India, such a certificate of registration shall not be used in any legal proceedings. In legal proceedings, including proceedings for trade mark infringement, parties are required to submit a LPC that is issued by the Registrar of Trade Marks and is for use specifically in legal proceedings.
Thus far, a LPC could be filed prior to the commencement of the trial and not necessarily along with the plaint. In this regard, a decision of the Bombay High Court in Pidilite Industries Limited v. Poma Ex Products [2017 (72) PTC 1 Bom] is important. In this case, the court observed that, at a preliminary stage, a certificate of registration can be filed for determining its evidentiary value, and a LPC can be submitted at the stage of the trial.
However, on August 27, 2019, the Delhi High Court, in Amrish Agarwal v. Venus Home Appliances Pvt. Ltd.[CM (M) 1059/2018], ruled that a LPC must be mandatorily filed along with a complaint alleging trademark infringement. In this case, a LPC was filed at the stage of final arguments in the lawsuit. Arguments were made on behalf of both the parties. It was argued that it was impermissible to allow the LPC to be submitted at the late stage of final arguments. A counter argument was made that the renewal certificate was put on record and duly exhibited. The Court held that, in a trademark infringement matter, the court ought to be able to see the mark, and therefore, either a LPC or a Certificate of Registration along with the journal extract must be submitted at the initial stage itself. While allowing the LPC to be taken on record, the court imposed costs of INR 50,000 on the respondent for the late submission.
Further, the court held that where the LPC is not available at the time of filing of suit and urgent orders of injunction are sought, a copy of the Certificate of Registration, a copy of trade mark journal along with the latest status sheet from the website of the Trade Marks Registry can be filed. A specific averment must be made in such cases in the plaint stating that no disclaimers are associated with the mark and the registration is duly renewed. Moreover, in such cases, the party must file the LPC prior to commencement of trial if any aspect of the trade mark registration is disputed by the opposite party.
This case is also important because the court held that, at the time of admission/denial, parties will not be allowed to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from the online records maintained by the Registry.