Of trademarks and photocopy evidence

One would not ordinarily expect a discussion on the evidentiary value of photocopied documents to reach the highest court of a country. As it turns out, this just happened in the world of trademarks, where the Supreme Court of India, in a sound judgement, returned a trademark infringement case to a lower court to accept the original versions of the photocopies as additional evidence and decide accordingly. (Image from here)

The curtain-raiser

Shalimar Chemical Works Ltd. (‘Shalimar’) [the original plaintiffs, and the appellants in the present suit] are the registered owners of the trademark Shalimar for coconut hair oil (class 3) and all edible oils (class 29). They filed a trademark infringement suit in 1995 against Surendra Oil & Dal Mills (Refineries) (‘Surendra’) in Hyderabad, seeking, among other things, a permanent injunction on their use of the word Shalimar. During trial, Shalimar submitted photocopies of trademark registration certificates.

Scene 1: The trial court — Third Additional Chief Judge, City Civil Court, Hyderabad

The trial court “marked” the photocopies as exhibits “subject to objection of proof and admissibility”. In 1998, the trial court dismissed the suit on grounds that the available evidence on record did not establish Shalimar’s case. This was mainly because the trademark registration certificates were not filed in original, with reference to Sec.31 of the Trade and Merchandise Marks Act, 1958. (Image from here.)

(For reference, Sec.31(1) “In all legal proceedings relating to a trade mark registered under the Act, the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.”)

Scene 2: Single Judge Bench, Andhra Pradesh High Court

Shalimar then went in appeal to the Andhra Pradesh High Court, where it also filed an application under Order 41, Rule 27 of the Civil Procedure Code (CPC) (production of additional evidence in Appellate Court) to accept the original registration certificates as additional evidence. The single judge bench hearing the matter allowed the originals and the appeal, and granted the permanent injunction against Surendra.

Scene 3: Division Bench, Andhra Pradesh High Court

Surendra, aggrieved by both the accptance of the additional evidence, and the eventual decision of the single judge, went in further appeal to a division bench (DB) of the High Court. The DB observed that there was no justification to admit the original certificates at the appellate stage, and referring to Order 41, Rule 27, CPC, noted that additional evidence could be allowed only in three circumstances, as follows:

• The Trial Court had refused to admit evidence which ought to have been admitted.
• The party who wanted to produce additional evidence had exercised due diligence and such evidence was not within his knowledge or reach during the trial of the suit.
• The additional evidence can be ordered to be produced if the Court feels that a document was necessary for pronouncing of the judgment.

“Neither of these three conditions were satisfied in this case. The original documents were all along in possession of the plaintiff. At no stage the Trial Court had refused to admit them in evidence. Since the documents were all along in the possession of the plaintiff, therefore he could not fill up the lacuna by producing them in the Appellate Court.”

With the originals taken off the record, Shalimar’s case was bound to be dismissed. In 2003, the appeal was allowed, and the trial court order (of injunction refused) was restored.

Scene 4: The Supreme Court of India

Shalimar, represented by senior advocate P.P. Rao, wreachedthe Supreme Court in 2005, where they argued that the DB had taken a very narrow view of the CPC. Towards this, Mr Rao cited what the Supreme Court termed “the illuminating and perennially relevant passage from the judgment of Vivian Bose, J. in Sangram Singh vs. Election Tribunal, Kotah, Bhurey Lal Baya, 1955 (2) SCR 1 (at page 8) :

“Now a code of procedure must be regarded as such. It is procedure, something designed to facilitate justice and further its ends: not a penal enactment for punishment and penalties; not a thing designed to trip people up. Too technical a construction of sections that leaves no room for reasonable elasticity of interpretation should therefore be guarded against (provided always that justice is done to both sides) lest the very means designed for the furtherance of justice be used to frustrate it.”

On their part, Surendra, represented by senior advocate P.S. Narasimha, argued that the original registration certificates were the primary evidence in the case, and in their absence, the trial court had no choice but to dismiss the suit. Surendra also pointed out that the single judge (Scene 2) after taking the originals on record had straightaway pronounced the final judgment in favour of Shalimar without allowing an opportunity of rebuttal.

The dénouement

The Supreme Court candidly observed that “serious mistakes were committed in the case at all stages,” and then went on to list them one by one:

1. The trial court should not have “marked” the photocopies as exhibits in view of Surendra’s objections. It should have declined to take them on record and left Shalimar to support its case by whatever means it proposed, rather than leaving the admissibility issue copies open and hanging, by marking them as exhibits subject to objection of proof and admissibility.
2. The single judge rightly allowed Shalimar’s appeal to produce the original certificates as additional evidence because that was in the interest of justice and sufficiently justified under clause (b) of Order 41, Rule 27. But the judge erred in proceeding to allow the appeal and not giving Surendra an opportunity to rebut.
3. The DB was wrong in deciding on the additional evidence. But it was right in holding that the way the single judge disposed of the appeal caused serious prejudice to Surendra.

The Supreme Court then went on to order what it said the DB ought to have done, i.e., set aside the single judge’s order without disturbing it insofar as it took the originals on record. It also set aside the DB order and remanded the matter to the single judge, directing the bench to give Surendra an opportunity to produce evidence in rebuttal, and proceed accordingly.

Endnote

Given the tone of comments that this blog has been increasingly receiving over the past few days, we do need to lighten the atmosphere a little. So I take this opportunity to crack a very bad photocopy joke, which goes something like this —

• Q. What did X do after taking a photocopy? (plug in your preferred name/s)
• A. She compared it with the original document for spelling mistakes.

Copy that? For those whose sense of humour isn’t tickled, you can read up on the xerox trademark, and speculate on genericised trademarks, which, like the joke, has absolutely nothing to do with this post. (Image from here)