IPD Rules Do Not Bar Taking Additional Documents On Record After Filing Of Reply Or Counter-Statement To Rectification Petition: Delhi High Court

The Delhi High Court has ruled that its Intellectual Property Rights Division Rules, 2022, do not contain any provision which bars taking additional documents on record after reply or counter-statement is filed by the respondent to the rectification petition.

“The IPD Rules do not contain any provision which proscribes taking of additional documents on record, unlike the Original Side Rules, which does contain such a provision, in Rule 147 in Chapter VII,” Justice C Hari Shankar held.

The court said that the amendments to the Code of Civil Procedure as contained in the Commercial Courts Act, 2015, are ipso facto applicable to the original petitions (rectification petitions) preferred under Section 57 of the Trade Marks Act.

“In my opinion, allowing such documents to be taken on record does not militate against any of the provisions of the IPD Rules,” the court said.

It added that there is no provision in the IPD Rules requiring the documents in the Civil Original Petitions (which include petitions under Section 57 of the Trade Marks Act), to be filed with l respective pleadings, corresponding to Order XI Rule 1(7)8 of CPC as amended by the Commercial Courts Act.

“In that view of the matter, I am of the opinion that Order XI Rule 1(10) of the CPC as amended by the Commercial Courts Act would be applicable, mutatis mutandis, to rectification petitions, in view of Rule 7(xiii) of the IPD Rules,” the court said.

Furthermore, the court observed that Rule 7(ix)9 of the IPD Rules envisages filing of a reply to the Civil Original Petition with no stipulation regarding the stage at which documents in support of the reply can be filed by the respondent.

“Needless to say, however, the respondent cannot be denied its right to file documents supporting its reply to the rectification petition. The stage at which the documents can be filed has, however, been left open-ended in Rule 7 of the IPD Rules,” the court said.

It added: “Allowing the defendant, the benefit of Order XI Rule 1(10) of the CPC, in the matter of filing additional documents in support of the reply to the rectification petition would not, therefore, stricto sensu infract any of the provisions of Rule 7 of the IPD Rules.”

The court made the observations while dealing with two IPR suits filed by Bennet Coleman and Company Limited against E1 Entertainment Television LLC seeking rectification of the register of trademark by removal of a mark which was registered in favour of the respondent entity.

The order was passed in the applications filed by E1 Entertainment Television LLC seeking permission to place additional documents on record after a counter-statement was already filed by it to the rectification petitions.

It was the television company’s case that it has been using the mark in question as part of its trading style since early 1990s. In support of its submission, the respondent relied upon a YouTube video titled “E Entertainment TV 1993 year in Review”. The applications were filed to place on record the said YouTube video clip referred to in the written statement.

Allowing the applications, Justice Shankar permitted the respondent company to place on record the downloaded copy of the YouTube video by means of a pen drive, with an advance copy to Bennet Coleman’s counsel.

“Inasmuch as the present document is being permitted to be taken on record at this stage, the petitioner would be at liberty to admit or deny the document and also file an additional affidavit contesting the validity and relevance of the YouTube video link and raise of other defences in that regard, as noted hereinabove, within a period of four weeks from today,” the court said.

Counsel for Petitioner: Mr. Hemant Singh, Ms. Mamta Rani Jha, Ms. Akansha Singh, Ms. Soumya Khandelwal and Ms. Pragya Jain, Advs

Counsel for Respondents: Ms. Priya Adlakha and Ms. Devyani Nath, Advs. for R-1

Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday and Mr. Krishnan V., Advs. for R-2

Title: BENNETT COLEMAN AND COMPANY LIMITED v. E ENTERTAINMENT TELEVISION LLC AND ANR

Citation: 2023 LiveLaw (Del) 1141

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