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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
CIVIL APPELLATE JURISDICTION
WRIT PETITION NO.8116 OF 2010
WITH
WRIT PETITION NO.8119 OF 2010
WITH
WRIT PETITION NO.8121 OF 2010
WITH
WRIT PETITION NO.8139 OF 2010
Sudhir Bhatia Trading as
M/s. V. Bhatia International,
R/o. 62, Westwind, 3 X Road,
Lokhandwala, Andheri (W),
Mumbai - 400 053. ..Petitioner.
V/s.
1. The Central Government of India,
Through Ministry, Udyog Bhawan,
New Delhi.
2. The Registrar of Trade Marks,
Trade Marks Registry at Mumbai,
Boudhik Sampada Bhavan, Near
Antop Hill Head Post Office, S.M.
Road, Mumbai - 400 037.
3. Midas Hygiene Industries Pvt. Ltd.,
D-46, S-4, Amarjyoti, M.G.H. Complex,
Section-14, Vashi, Navi Mumbai-400 703. ..Respondents.
Mr. Shailen Bhatia and Sanjay Malhotra i/b. R.K. Midha for petitioner.
Mr. J.P. Cama, senior Advocate, Ms. Laxmi Maria Jenkins i/b. Jehangir
Gulabbhai and Bilimoria & Danawala for respondent No.3.
CORAM : B.H. MARLAPALLE AND U.D.SALVI, JJ.
JUDGMENT RESERVED ON : 13TH OCTOBER, 2010
JUDGMENT PRONOUNCED ON : 26TH OCTOBER, 2010
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JUDGMENT (PER U.D. SALVI, J.)
1. Rule. Taken up for final hearing with the consent of parties.
2. The orders dated 13/03/2009 passed by the Intellectual
Property Appellate Board (Circuit Bench at Mumbai) rejecting the prayer
for production of additional documents in M.P. No.112/2008 in OA/20/
2004/TM/MUM, M.P. No.108 & 110/2008 in TA/62-63/2003/TM/MUM
(M.P. No.27 & 28 of 2003). M.P. Nos.111/2007 & 106/2008 in ORA/14/
2007/TM/MUM and M.P.No.114/2008 in OA/90/2004/TM/MUM are
assailed in these petitions.
3. The aforesaid bunch of appeals are the result of row over
the registration of Trade mark “Laxman Rekha” between the petitioner
Bhatia, the sole proprietor of M/s. V.Bhatia International and the
respondent No.3 Midas Hygiene Industries Pvt. Ltd. before the Assistant
Registrar of Trade Marks. The petitioner moved the said Misc.
Applications for production of the following documents in the said
appeals:-
Sr. Particulars
No.
1. Affidavit
2. Exhibit “A” – Copy of the letter received from Dy. Commr. of Sales
Tax (Adm) dated 10/10/2006.
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3. Exhibit “A1” – Copy of letter received from Jt. Commr. of Sales Tax
(Adm) dated 17/11/2006 along with the enclosures therein.
4. Exhibit “B” – Copy of certificate of registration under Bombay Sales
Tax Act, 1959 of Mr.Sudhir Bhatia trading under name and style of
M/s. V. Bhatia International.
5. Exhibit “C” – Copy of letter dated 13/09/2005 of Asstt.
Commissioner Sales Tax.
6. Exhibit “D” – Copy of letter dated 6/10/1985 of M/s. Midas
Marketing House addressed to M/s. Bhatia International.
7. Exhibit “E” – Copy of the caution notice published in MID-DAY
Newspaper on July 17, 1993.
8. Exhibit “F” – Copy of let
ter 16/07/1993 addressed by the Advocates of M/s.V.Bhatia
International to M/s.Midas Marketing House.
9. Exhibit “G” – Copy of the letter received from Dy. Commr. of Sales
Tax (Adm,) dated 10/10/2006.
10. Exhibit “H” – Copy of invoice dated 12/11/1996 of Midas Hygiene
Industries Pvt. Ltd.
11. Exhibit “I” – Copy of letter received from Jt. Commr. Sales Tax
(Adm) dated 22/11/2006.
12. Exhibit “J” – Copy of letter received from Office of Commr. of
Central Excise, Mumbai -III dated 28/02/2008.
13. Exhibit “K” – Copies of some invoice dated 8/10/1988 of M/s.
Midas Marketing House.
14. Exhibit “L” – Copy of translated letter from Marathi along with
Marathi letter dated 15/02/2007 of Jt. Commr. Food & Drugs
Administration, Mumbai.
15. Exhibit “M” – Copy of letter of Jt. Commr. Food & Drugs. Mumbai.
16. Exhibit “N” – Copies of letters dated 23/01/2007 and 14/03/2008 of
Trade Marks Registry, Mumbai.
17. Exhibit “O” – Copies of pages from the Trade Marks Journal
publishing the Trade mark LAXMAN REKHAA bearing application
No.545610 and Trade Mark KRAZY LINES LAXMAN REKHAA
bearing application No.545609.
18. Exhibit “P” – Copy of letter dated 21/06/2007 of Sr. Police
Inspector, Goregaon police station, Mumbai.
19. Exhibit- Q – Copy of the additional representation of trade mark
application bearing No.568046.
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20. Exhibit “R” – Copy of page from the Trade Marks Journal
publishing the Trade mark LAKSHMANREKHA – WHITE CHALKS
(Label) bearing application No.568046 along with the corrigenda of
the same.
21. Exhibit “S” – Copy of the carton of NEW KRAZY LINES PLUS
22. Exhibit “T” – Copy of the Form TM 1 for application of trade mark
NEW KRAZY LINE PLUS (Label) bearing application No.580872.
23. Exhibit “U” – Copy of the additional representation of the trade
mark application MAGIC PREMIUM LAXMANREKHA (Label)
dated 30/05/1996.
24. Exhibit “V” – Copy of the filing notings.
25. Exhibit “W” – Copy of the letter dated 31/01/2008 of Trade Marks
Registry, Mumbai.
4.
The petitioner pleaded that the documents sought to be
produced before the Appellate Board were not in his possession when
the appeals were preferred and could be secured by means of
provisions of Right to Information Act with great effort; and the said
documents are relevant and necessary for proper adjudication of the
said matters particularly for showing how the respondent No.3 M/s.
Midas Hygiene Pvt. Ltd. by concealment of material particulars and
manipulation of the records had succeeded in making out a case based
on false user before the Registrar of Trade Marks.
5. The contesting respondent No.3 Midas Hygiene Industries
Pvt. Ltd. resisted the applications by filing replies. The contesting
respondent contended that the documents sought to be produced are
irrelevant and despite the same being in the knowledge of the appellant,
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there was no whisper about them in the pleadings. Generally, the
contesting respondent No.3 denied all the contentions of the appellant in
support of the claim for production of the additional evidence. The
maintainability of the applications for production of additional evidence
was also questioned by the contesting respondent, particularly with
reference to Rule 8 of the Intellectual Property Appellate Board
(Procedure) Rules, 2003.
6. After hearing the parties, the learned Board Members with
reference to the said Rules observed that though there is no express
provision for tendering additional evidence at the appellate stage,
Section 92 of the Trade Marks Act, 1999 exhorted the Appellate Board to
be guided by the principles of natural justice and for the purpose of
discharging its function under the Act to exercise powers as vested in a
Civil Court under the Civil Procedure Code, 1908 while trying a suit in
respect of receiving evidence, etc. The learned Board for the purposes
of the said applications moved by the petitioner / appellant thought it fit
to take recourse to the principles for production of additional evidence in
C.P.C. contained in Order 41 Rule 27 and sought guidance from the
judgment of the Apex Court in Mahavir Singh and Ors V/s. Naresh
Chandra & Anr., [2001 (1) S.C.C. 309] expounding the said principles.
With reference to clauses 1(a) and (aa) of Order 41 Rule 27 of CPC, the
learned Board observed as under:-
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” ..In so far as the second circumstance (i.e. 1 (aa) of O.41 R. 27
of CPC) is concerned, it is noticed that the applicant / appellant
has not averred that the subject documents were not in its
knowledge but only has said that the subject documents were not
in its possession when it preferred the appeal. It is not specified
whether the applicant / appellant made any diligent attempt or
effort to obtain copies of those documents from the concerned
authorities. Further, the applicant / appellant has not pointed out
that it has mentioned about the non-availability of those
documents and reserved its right to produce as and when the
same comes in its possession. It is also not the case of the
applicant / appellant that notwithstanding the exercise of due
diligence, the evidence sought to be filed was not within its
knowledge or could not, after exercise of due diligence, be
produced by it at the time when the impugned order was passed
by the Assistant Registrar of Trade Marks. The diligence or
otherwise of the applicant / appellant can be safely inferable from
the instance that the appeals were filed by the appellant in the first
half of year 2004 and now sought to file the additional evidence in
the second half of the year 2008. ”
7. The observations made by the learned Board are not
correct. The Appellate Board has to allow the production of additional
evidence in either of the three contingencies spelled out in clause 1(a)
(aa) or (b) of Order 41 Rule 27 of the C.P.C. So far as the contingency
under clause 1 (aa) of Order 41 Rule 21 of the C.P.C. is concerned, it is
sufficient for the parties seeking permission to produce the evidence to
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establish that notwithstanding the exercise of due diligence, such
evidence was not within his knowledge or could not after after the
exercise of due diligence, be produced by him at the time when the
decree appealed against was passed. It is, therefore, sufficient for the
party seeking permission to produce additional evidence that it
establishes that such evidence could not, after the exercise of due
diligence, be produced by him at the time when the decree appealed
against was passed.
8.
Evidently, there is an averment made by the applicant /
appellant that some of the documents sought to be produced were not in
his possession and could be secured with considerable effort by
resorting to the provisions of Right to Information Act, 2005. It can also
be seen that after the orders were passed by the Registrar of Trade
Marks and appeals preferred against them the Right to Information Act,
2005 came to be enacted and as such before such enactment, there
was no effective tool to secure the documents from the concerned
quarters. The perusal of the documents sought to be be produced in
evidence and listed at Annexure Q of the petition reveals that the
documents marked as Exhibit “A”, Exhibit “A1”, Exhibit “C”, Exhibit “G”,
Exhibit “I”, Exhibit “J”, Exhibit “M”, Exhibit “N”, Exhibit “P” and Exhibit
“W” could be secured from the concerned quarters by resorting to the
provisions of the Right to Information Act, 2005, and could not have been
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in the possession of the applicant / appellant and, therefore, could not
have been produced at the time of passing the impugned order by the
Registrar of Trade Marks. The production of the said documents,
except at serial Nos.6 to 8 and 17 to 21 before the Appellate Board is,
therefore, justified. In our opinion, the lower appellate forum ought to
have allowed the public documents on record with the aid of Order 41
Rule 27 of C.P.C. The petitions are partly allowed accordingly. Hence,
the order.
9.
The orders dated 13/03/2009 passed in M.P. No.112/2008 in
OA/20/2004/TM/MUM, M.P. No.108 & 110/2008 in TA/62-63/ 2003/TM/
MUM (M.P. No.27 & 28 of 2003). M.P. Nos.111/2007 & 106/2008 in ORA
/14/ 2007/TM/MUM and M.P. No.114/2008 in OA/90/ 2004/TM/MU are
set aside. The production of aforesaid documents listed at Annexure
“Q” to the petitions and except the documents at serial Nos.6 to 8 and 17
to 21, before the Intellectual Property Appellate Board (Circuit Bench at
Mumbai) is allowed. All the petitions are partly allowed accordingly. The
pending appeals are directed to be heard and decided, as per law, as
expeditiously as possible and preferably before 31st March, 2011.
10. Rule is made absolute in terms of the above order with no
order as to costs.
(U.D.SALVI, J.) (B.H. MARLAPALLE, J.)
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