Resolving a Conflict- The Natural Justice Way
HK Avenue, 19, Swastik Society
Ahmedabad - 380 009. INDIA
Phone : +91 79 26425258/ 5259
Fax : +91 79 26425262 / 5263
Email : email@example.com
Web : www.hkindia.com
REPRESENTATIVE OFFICE - USA
2123 , Stanford Avenue
Mountain View, CA 94040
United States of America
Tel. : 1 650 964 1434
Fax : 1 650 964 4857
E-102, First Floor,Lloyds Estate Sangam Nagar, Next to V.I.T. College, Wadala (E)
400 037. INDIA
Tel. : 91 22 24187744
2nd Floor, Shivani Complex, Kanta Stri Vikas Gruh Road
Rajkot - 360 002. INDIA
Tel: 91 281 2242 731
Guest House Road, Opp. Indane Gas Above Satnam Electronics
Morbi - 363 641
Resolving a Conflict- The Natural Justice Way
Justices S.J. Vazifdar and A.K. Menon of the High Court of Bombay pronounced a significant judgment on Section 92 of the Trade Marks Act, 1999 and the effects of Order 41 Rule 27 of Civil Procedure Code on the powers of the Intellectual Property Appellate Board (IPAB) under the said section.
The matter is that Petitioner No.1, M/s. Agar Distributors (India) challenged an order dated 16th July, 2010 passed by the Intellectual Property Appellate Board rejecting his Interim Petition No. 148 of 2008 seeking leave to lead further evidence in the appeal filed by him against the order of the Registrar of Trade Marks.
The issue at hand in this Writ Petition is whether the IPAB ought to have allowed the interim application to lead further evidence.
The petitioner deals in goods viz. China Grass. His predecessor in title has coined, conceived and adopted several trade marks, word marks, label marks with devices in the year 1976, wherein "FIVE STAR" and/ or "STAR" have been a prominent part; some of which are registered while others pending registration. It is claimed by the petitioner that his marks have become distinctive and are exclusively associated with his goods.
It was in the year 1994 that the petitioner came across an advertisement before acceptance of a mark "BRIGHT STAR" in the Trade Marks Journal. Thus, opposition was launched against the respondent by the petitioner, claiming that there is deceptive similarity between the two marks.
The Registrar of Trade Marks, in the year 2003, dismissed the petitioner's notice of opposition; the reason being, the petitioner's failure in filing evidences in support of his claim of usage of the mark(s) since the year 1976 through his predecessors in title. On the contrary, the respondent proved his user since the year 1988, sufficiently. The petitioner, aggrieved by the Registrar's order, filed an appeal before the IPAB. Further, taking out Miscellaneous Petition No. 148 of 2008, the petitioner sought leave to produce evidence in support of this claim of prior user.
The IPAB dismissed the application vide an order dated 16th July 2010. The decision of IPAB was based on the provisions of Order 41 Rule 27 of the Code of Civil Procedure. Hence, the appeal before the High Court of Bombay, against the 2010 IPAB order.
In a nutshell, the issue in this case revolves around the point whether additional evidence can be filed at the appellate stage. If yes, then is the appellate body bound to accept take on record the application to file additional evidence.
Discussion set out over some sections of the Trade Marks Act, 1999 and the Code of Civil Procedure, 1958. Firstly, let's understand a few sections as discussed by the Hon'ble High Court. The Intellectual Property Appellate Board (IPAB) is established by the Trade Marks Act, 1999 under Section 83. Under the provisions of Sections 47 and 57 of the Act, any person aggrieved may make applications for relief's, orders and directions either to the Registrar or to the IPAB. However, in case of an order by the Registrar on an application made by a person aggrieved, an appeal can be filed before the IPAB under Section 91. Thus, proceedings before the IPAB can be both, original as well as appellate in nature. Under normal circumstances, an Appellate Body is restricted to the record brought before the Trial Court; however it does have power to permit a party to file additional evidence. This does not mean that a party has the right to lead further evidences.
The Petitioner's Counsel argued that the appeals filed before the IPAB must be heard de novo and that the plaintiff be allowed to file evidences, in this case. The Court categorically rejected this argument by saying that the IPAB is neither bound to hear appeals filed before it de novo nor is it bound to accept applications for filing of additional evidences. The Court said it would be wrong to read such a provision into the Act and would lead to nothing but chaos.
Coming to Order 41 Rule 27 of the Code of Civil Procedure, the Court first discussed the provision in detail, thereafter looking at whether or not the said provision applies to proceedings under the Trade Marks Act and Rules. Rule 27 (1) provides that the parties to an appeal shall not be entitled to produce additional evidence in the Appellate Court except if the Court from whose decree the appeal is preferred has refused to admit evidence which ought to have been admitted or if the party wanting to produce further evidence proves that even after due diligence the evidence was not within his knowledge or could not be produced. Further, such evidence can be appreciated and accepted if the Appellate Court requires the evidence so as to enable it to pronounce judgment. Then if further evidence is allowed, the Appellate Court shall, under Rule 27 (2) record it's reason for admission of such further evidence.
Now, as can be understood from the above paragraph, an Appellate Court may allow the filing of additional evidence in a matter, provided there are reasons to do so. The Hon'ble High Court went through two decisions; a Supreme Court judgment in Union of India v. Ibrahim Uddin & Anr. and a Privy Council decision of Parsotim Thakur v. Lal Mohar Thakur.
The Counsel further argued that the provisions of the Code of Civil Procedure do not apply to Trade Marks Act and Rules, as per Section 92 of the Trade Marks Act, 1999. The Court replied that though there is no application of the provisions of the Code of Civil Procedure, the IPAB shall be guided by Principals of Natural Justice and rules of reasonableness, justice and fair play must be relied on before the IPAB decided to allow production of additional evidence. That no party has any absolute or unconditional right to additional evidence at every stage, was held by the Court.
The Court also rejected the contention relied upon from an earlier affidavit filed by the Petitioner shortly before the impugned order; wherein it was contended relying on the ill advise of the Counsel that having regard to the registered status of the marks and prior and extensive use of the same, it was considered that evidences need not be filed.
In conclusion, the Court pointed out that the lapse on the part of an advocate is not a justification for permitting additional evidence at the instance of the party. An omission on the part of the party in not adducing evidence at the primary stage does not mean it has right to do so at later stages. The requirement of additional evidence must be of the Court. The rejection of the Petitioner's Application by the IPAB was upheld proving that no party or Appellate Body is above the basic principles of Natural Justice, Reasonableness and Fair Play.
MIPR 2014 (3) 0209
Contributed By : Hetvi Trivedi (Advocate)
Designed By : Vikash Singh