In an important judgment of the Bombay High Court, Justices A.K. Menon and S.J. Vazifdar have clarified the scope of parties’ right to adduce evidence at appellate stage proceedings in the IPAB. They held that the IPAB, though not bound by the CPC, is still bound by the principles behind Order 41, Rule 27 of CPC. Therefore, while the IPAB need not “indiscriminately permit parties to lead further evidence in an appeal”, it may at any stage determine on its own whether additional evidence is required.
The case concerned the registration of trademarks viz China Grass. The petitioner filed an opposition to the trademark registration of the respondent, claiming that the latter’s trademark was deceptively similar to the petitioner’s trademark (details are not relevant to the given judgment). The Registrar had rejected the petitioner’s opposition as the petitioner had not filed any evidence regarding his prior usage of the impugned mark. The petitioner appealed this decision before the IPAB.
The petitioner then filed a Miscellaneous Application before the IPAB seeking leave to produce the evidence that he had not produced before the Registrar. He had claimed that he had been under the bona fide belief that he was not required to produce evidence before the Registrar. The IPAB had dismissed his application. This dismissal was appealed before the Bombay High Court.
The issue before the Bombay High Court was whether the IPAB ought to have allowed the interim application to lead further evidence. This was to be decided based on an interpretation of Sections 91 and 92 of the Trademarks Act, and Rules 2(l) and 8 to 13 of the IPAB (Procedure Rules), 2003.
S. 92 of the Trademarks Act specifies that the IPAB is not bound by the CPC, and is instead bound by principles of Natural Justice and the rules made under the Act. Further, the IPAB shall have the same powers as are vested in a Civil Court under the CPC while trying a suit in respect of matters including receiving of evidence.
Further, R.2(l) of the IPAB Rules includes appeals under the definition of “pleadings”, and R.8(1) allows the applicant to file evidence in the form of affidavits in support of an application. R.10 allows for the filing of counter statements by the respondent.
The petitioner argued that a plain reading of these provisions allows for the applicant to file fresh evidence, as there would be no need for affidavits or counter statements if the appeal were carried out based entirely on the affidavits filed in front of the Registrar.
However, the Court rejected this argument by pointing out that the IPAB hears both original applications and appeals. The rules relating to filing of affidavits and counter-statements applied only to cases where it was hearing an original application.
With respect to appeals, the Court held that while the IPAB has the power to permit a party to lead additional evidence, this does not mean that a party has the right to lead new evidence at the appellate stage.
As for the applicability of Order 41, Rule 27 of the CPC, the Court held that this rule is based on justice, equity and good sense. Therefore, though the IPAB is not strictly bound by the CPC, it has to follow the principles behind this Rule.
Here, the Court made a distinction between Order 41 Rule 27 (aa) and Rule 27 (b). While Rule 27 (aa) speaks of the party being allowed to adduce evidence because they could not do so at the time of trial, Rule 27 (b) speaks of the Court itself coming to the conclusion that additional evidence is necessary.
The High Court held, “Although we uphold the rejection of the petitioner’s application on the grounds akin to those under clause (aa) of Order 41 Rule 27(1), it would be open to the IPAB to consider the failure to adduce any evidence as a factor while considering whether the IPAB itself requires the documents to pronounce judgment or for any other substantial cause.”
The Court stressed on this because of the public interest that is at stake in a trademark dispute. In the present case, it is necessary for the Court to examine whether consumers will be deceived by the impugned trademark. For this reason, the IPAB may require additional evidence at some later stage in the proceedings, and it must have the power to call for it.
Prior to this decision, there was ambiguity in the law regarding appeals before the IPAB. This decision has clarified the extent to which the principles behind the CPC guide the procedure before IPAB. When it comes to adducing evidence at the appellate stage, it has now been held that Order 41, Rule 27 applies almost with full force to the IPAB, as it is a reasonable rule that balances the capacity of the IPAB with the public interest at stake.
We thank the anonymous source who brought this case to our attention.