Recently in the twin cases of Registrar of Trade Marks vs Kapoor Saws Manufacturing Co & Ors ; and Registrar of Trade Marks vs Sonik Industries & Ors, the Registrar of Trademarks was issued a summons in the original suit before the trial court, to produce certain records of the office. However, the same was not complied with by the Registrar of Trademarks.
Since the Registry failed to comply, a proclamation under Order XVI Rule 10 of the Code of Civil Procedure, 1908, was passed, by which the Registrar was required to be physically present before the Court to produce the requisite records. The Registrar then filed the present revision petition in the Delhi High Court against this proclamation order, arguing that since the proclamation order was issued, certified copies of the records had been sent to the Respondents, i.e. Kapoor Saws Manufacturing Co and Sonik Industries (Petitioners to the original suits).
The Counsel for the Registrar of Trademarks further stated that a joint interpretation of Sections 137 and 138 of the Trademarks Act, 1999 makes it clear that, certified copies of records are enough as evidence, without requirement of original records or the appearance of the Registrar as witness. As it is, the Office of the Registry of Trademarks are situated at different locations in the country and are very small with skeletal staff whose work is affected if they are also required to appear as witness before the courts.
The Counsel for the Respondents argued that in countless instances the application for certified copies remains pending before the Registrar’s office for long periods, causing serious inconvenience to litigants and also making it necessary to summon records as evidence.
The Court after hearing all the concerned parties Hon’ble Justice Rajiv Sahai Endlaw issued the following guidelines to the Office of the Registrar of Trademarks –
- If not already in place, nominate one Nodal Officer of each branch to receive applications for certified copies and to issue certified copies.
- To, within two months of today, announce on the website of the Registrar of Trade Marks, the particulars i.e. name/designation, address, phone number/s and email address of the Nodal Officer responsible for accepting and entertaining applications for certified copy and to issue certified copies for each office of the Registrar of Trade Marks.
- To, within six months of today, make a provision, if not already in existence, for making online applications for certified copies.
- To, within six months of today, make a provision on the website of the Registrar of Trade Marks for disclosure of the status of the applications for certified copies including any deficiency or defect therein required to be remedied by the applicant and/or the date when it will be ready for collection.
- To, till the aforesaid is functional, as an interim measure, make a provision for sending intimation, to the applicant/s for certified copies, of deficiencies / defects required to be rectified via e-mail, SMS and other modes of communication.
- To, endeavour to make provision for online payment of the fee and other charges if any for certified copies.
- To issue certified copies within one month of the receipt of a duly completed application.
- To indicate on the certified copy, whether it has been prepared from the original of the document or from a copy of the document.
- To explore the possibility of making an endorsement of “original seen and returned” on the copies on the record, originals of which are returned.
- To ensure, that the certified copies are legible and wherever the original / copy on the record of the Registrar of Trade Marks has any colour other than black and white, the certified copy reflects such colour.
- To, if the documents of which certified copies is sought have been lost or misplaced, intimate the same to the applicant within one month as aforesaid of the application for certified copy having been made.”
Justice Endlaw concluded by saying, “Once the Registrar of Trade Marks has implemented the aforesaid, it is expected that neither will any of the parties to the litigation nor any of the Courts, where such litigations are pending, would mechanically issue summons to the Registrar of Trade Marks as witness, requiring it to produce records unless reasons are recorded as to why the purpose of summoning cannot be served by obtaining certified copies and tendering the same in evidence.”