Should've Been Diligent About Protecting Trademark: Delhi HC Denies Plea For Additional Documents To Prove Use Of Mark After Two Years Of Filing Suit

Justice Anish Dayal observed, “This lack of diligence stares in the face of the plaintiff and the relief they seek through this application. Besides, plaintiff being a company of repute, having been in business for decades, should have been diligent about protecting their trademarks. It would not pass muster with this Court that they had to scramble for some documents for more than two years after the institution of this suit to prove use of their house mark PRESTIGE.”

“Strict deadlines of the Commercial Courts Act ought to hang like Damocles' sword over contesting parties, since that is what is intended by the modified provisions of the Code of Civil Procedure, 1908. A party intending to injunct a defendant from using a mark similar to theirs, cannot possibly be tardy or dilatory in marshalling their documents,” Justice Dayal added.

The plaintiff filed an application seeking to submit three documents into evidence: promotional material for the trademark PRESTIGE from 1968 to 1986, a CA Certificate detailing sales and promotional figures from 1959 to 1989 for their predecessor, T.T. Limited, and an unaudited statement of sales and promotional expenses for the year ending March 31, 1990, also related to T.T. Limited.

The suit, initiated on June 2, 2021, alleged infringement of the plaintiff's registered trademark 'PRESTIGE' and its logo, as well as copyright infringement of the PRESTIGE logo, along with claims of passing off and unfair competition against the defendants.

The plaintiff asserted continuous, extensive, and exclusive use of the 'PRESTIGE' trademark in India since 1955, adopting a distinctive logo around 1999 and further refining it in 2006. They accused the defendants of engaging in the manufacture and sale of bath and kitchen fittings,and of unlawfully using the 'PRESTIGE' trademark and providing warranties under that name.

Upon investigation, it was discovered that the trademark 'PRESTIGE' was registered in the name of Mr. Surinder Kumar Baghla, a partner of one of the defendants, for Class 11 products. However, objections were raised against the defendants for using the 'PRESTIGE' trademark without authorization, particularly for kitchenware products.

An ex-parte ad interim injunction was granted on June 4, 2021, prohibiting the defendants and associated parties from selling, offering for sale, or advertising any products under the plaintiff's logo.

Following the defendants' submission of a written statement claiming the use of the 'PRESTIGE' trademark since 2005, the plaintiff filed a replication disputing this claim. Subsequently, the defendants filed an application to introduce additional documents, specifically invoices from 2012 to 2016, which was granted by the court on the basis that the trial had not yet begun.

In response, the plaintiff filed the current application seeking to present additional documents in rebuttal.

In its order, the Court emphasized the stringent and inviolable nature of deadlines under the Commercial Courts Act, highlighting that the Act was designed to ensure prompt resolution of high-value commercial disputes. The Court pointed out that the amendment of provisions in the Code of Civil Procedure (CPC) through Section 16 of the Commercial Courts Act aimed at instituting clear timelines for the submission of pleadings and documents.

Regarding Order XI Rule 1(1) of the CPC, the Court noted that it grants the plaintiff the initial opportunity to submit documents they intend to rely upon at the commencement of the suit. This submission is accompanied by a declaration affirming that all relevant documents within the plaintiff's possession related to the proceedings have been disclosed and annexed to the plaint.

Additionally, it held that Order XI Rule 1(3) of the CPC mandates that the plaintiff declares the absence of any undisclosed documents within their control.

Furthermore, the Court elaborated on Order XI Rule 1(5) of the CPC, which prohibits the plaintiff from using documents under their control but not disclosed with the plaint, except with the Court's permission. The Court stressed that such permission can only be granted if the plaintiff demonstrates a valid reason for non-disclosure at the time of filing.

Thus, it was held that the plaintiff was given the choice to disclose documents they intend to rely upon, and failure to do so renders those documents inadmissible unless reasonable cause for non-disclosure is established.

Considering the facts presented, the Court noted that the plaintiff asserted that the lawsuit was based on the claim of using trademarks since 1955. In light of this claim, the Court suggested that the plaintiff should have provided any available documentation, from any possible source, to substantiate their claim of use since 1955. By doing so, the plaintiff could have strongly supported their case for usage dating back to 1955.

Furthermore, the Court observed that the defendant, in their written statement, asserted their use of the word mark 'PRESTIGE' since 2005. They supported this claim with various documents such as sales invoices, screenshots from different e-commerce platforms, and communications with customers.

Having reviewed the defendant's submission and accompanying documents, the Court emphasized that it was essential for the plaintiff to establish their case by proving prior usage even before 2005 right from the beginning.

The Court asserted, “Nevertheless, plaintiff had an opportunity to file a replication, which they did on 07th September, 2021. Along with the said replication, plaintiff filed certain documents including certain correspondence and screen-shots related to e-commerce sites. At this stage itself, plaintiff should have been diligent and wise enough to file whatever documents they needed to support a prior user claim or even buttress the documents filed along with the plaint.”

“However, they did not do so. They were obviously aware that the initial period for filing documents and the extended period was exhausted by that stage including the slim opportunity they had per Order XI Rule 1(c) (ii) CPC, in rebuttal of the case set-up by the defendants,” the Court added.

The Court said that having received the documents of the prior suit from the Trial Court, the plaintiff needed to assert that they also wanted to file additional documents when the defendants' application for additional documents was being heard by the Court, 

The Court observed that no attempt was made by the plaintiff for the next five months to move an appropriate application.

The Court ruled that the plaintiff hadn't suffered any prejudice, as they had already submitted three volumes of documents with their initial complaint, supporting their claim of trademark usage since 1955, along with additional documents during the replication process in September 2021.

The Court noted that despite ample opportunities provided by the legal process, such as submitting documents with the initial suit, during the extended period, during replication, or even during the consideration of the defendants' application for additional documents, the plaintiff failed to do so.

Therefore, the Court rejected the plaintiff's plea to introduce additional documents under Order XI Rule 1(5) CPC.

Title: TTK PRESTIGE LIMITED v. BAGHLA SANITARYWARE PRIVATE LIMITED & ORS

Citation: 2024 LiveLaw (Del) 186

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