Trade Marks Act | Prior To Search & Seizure, Police Is Required To Take Registrar’s Opinion On Infringement Of Trademark: Gujarat High Court

While quashing an FIR and the subsequent charge sheet filed against a businessman accused of selling duplicate spare parts of Hyundai Motor Company, the Gujarat High Court said that in the absence of the Registrar's opinion on trademark infringement, the FIR cannot be sustained, and no search or seizure can be made.

Justice JC Dosh said, “Provisio to section 115(4) of the Act is clear and unambiguous. Undeniably, the police officer who on the complaint has searched that accused is applying trade mark and trade description of complaint or falsifying and falsely apply trade mark of the complaint is required to take opinion of the Registrar for infringement of Trade Mark prior to search and seizure. Rule 110 also spells the same. In the present case, FIR does not disclose obtaining opinion of the Registrar.”

“Learned APP or learned advocate for the complainant are not in position to explain lacuna. It is clear case that mandatory provisions are breached in registering FIR. The complainant has failed to establish that he has authority to file complaint. He cannot give opinion that accused is applying trade mark / trade description or falsifying and falsely applying trade mark of complaint without taking opinion of the Registrar for infringement of trade mark. The circumstances, spells that there is clear breach of statutory provision,” Justice Dosh added.

The case pertained to Mihir Surenbhai Shah, who operated a business called Rushab Automobiles in Ahmedabad City for selling auto parts. The complaint was filed by Sanjay Kumar Verma, claiming to be an officer of IPR Vigilance India Company, alleging that Rushab Automobiles was engaged in selling duplicate Hyundai spare parts. Based on this tip, the complainant approached the CID (Crime), Gandhinagar, and subsequently, the police raided the petitioner's shop and registered an FIR for offences under sections 101, 102, 103, 104, and 105 of the Trade Mark Act, 1999.

Advocate Sachin Vasavada, representing the applicant, presented two main arguments. Firstly, he contended that according to Section 115(4) of the Act, read with Rule 110 of the Trade Mark Rules, it is mandatory for the Investigating Officer to seek the Registrar's opinion on the infringement of the Trademark before filing an FIR under section 103 and 104 of the Act. Since the Investigating Officer failed to obtain the required opinion, there was a breach of the statutory provision, it was argued.

Secondly, he argued that based on a plain reading of the FIR, it was not evident that selling duplicate spare parts of Hyundai Motor Company would fall under the offence specified in sections 101 to 105 of the Act. He further asserted that proceeding with the case based solely on the FIR would be an abuse of the legal process, as it did not align with the provisions of the law.

Advocate Apurava Dave, representing the original complainant, and APP Asmita Patel, representing the State, submitted that the issues raised could be thoroughly examined during the trial. They also pointed out that the investigation had already been completed, and a criminal case was pending before the court. Therefore, they urged the court not to quash the FIR at this stage and to dismiss the petition.

The court observed that the investigation did not reveal any contractual agreement between IPR (Vigilance) and Hyundai Motor Company, authorizing the complainant to search for and report on the selling of duplicate auto parts.

It also said the charge sheet papers indicate that investigation has been carried out by a PSI of Naranpura Police Station, Ahmedabad. "Once again statutory provision of law is breached. Thus such submission also merits," said the court, while agreeing with the contention that it is only police officer not below the rank of DSP or equivalent who can investigate the offence.

Case Title: Mihir Surendrabhai Shah Versus State Of Gujarat & 2 Other(S)

Case Citation: 2023 LiveLaw (Guj) 129

Case No. R/Special Criminal Application No. 694 Of 2014

Appearance: Appearance: Mr Sachin D Vasavada(3342) For The Applicant(S) No. 1 Mr Samrat N Mehta(3949) For The Applicant(S) No. 1 Mr Apurva A Dave(3777) For The Respondent(S) No. 2 Ms Asmita Patel, APP For The Respondent(S) No. 1

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