In a recent judgment, the Delhi High Court clarified that its Intellectual Property Rights Division Rules, 2022, do not prohibit the filing of additional documents after the respondent submits a reply or counter-statement to a rectification petition. The ruling came in response to applications filed by Respondent 1, E! Entertainment Television, LLC, seeking to introduce a YouTube video clip as evidence in support of its trading style dating back to the early 1990s.
Brief Facts:
The petitioner, Bennett Coleman and Company Limited filed two rectification petitions under Section 57 of the Trade Marks Act, 1999 in the Delhi High Court. The petitions sought the removal of a registered trademark held by the respondent, E Entertainment Television LLC. The petitioner claimed that these registrations should be rectified by removing the mentioned marks from the trade mark register. In response, the respondent asserted that it had been using the trademark as part of its trading style since the early 1990s. As evidence, the respondent referred to a YouTube video titled "E Entertainment TV 1993 Year in Review" available at a specified URL link.
During the proceedings, the respondent moved applications under Order XI Rule 1(10) of the Code of Civil Procedure, seeking to introduce additional evidence in the form of a YouTube video clip corresponding to the mentioned URL link. The petitioner opposed these applications, arguing that such requests were not maintainable in rectification petitions under Section 57 of the Trade Marks Act.
The primary contention of the petitioner was that the applications were not permissible under the Intellectual Property Rights Division Rules, 2022 (hereinafter referred to as the “IPD Rules”). The petitioner emphasized that Rule 7(ii) of the IPD Rules requires all relevant documents to be filed along with the respective pleadings. The Respondent argued that the Commercial Courts Act, 2015, and its amendments, including Order XI Rule 1(10) of the CPC, applied to original petitions.
Observations by the Court:
The court, presided over by Justice C. Hari Shankar, held that the amendments to the Code of Civil Procedure under the Commercial Courts Act, 2015, are applicable to rectification petitions filed under Section 57 of the Trade Marks Act. Justice Shankar emphasized that the court's focus should be on substantial justice, and in this case, denying the filing of additional documents would be a travesty of justice.
“Even if it were to be assumed, arguendo, that Rule 7 of the IPD Rules requires, by implication, documents in support of the counter-statement/reply to the rectification petition to be filed with the counter-statement/reply, such a requirement would only correspond to Order I Rule 1(7) of the CPC as amended by the Commercial Courts Act. Order XI Rule 1(10) of the CPC provides for an additional opportunity to file documents, in addition to the right to file documents with a written statement. It does not, therefore, conflict with Order I Rule 1(7). Neither, per corollary, could such a right be said to conflict with the requirement of filing documents with the counter-statement/reply to the rectification petition, assuming any such requirement can be read into Rule 7 of the IPD Rules. There is no provision in the IPD Rules which proscribes taking of additional documents on record after the reply/counter-statement has been filed by the respondent.”
“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 judgment clarified that the Intellectual Property Rights Division Rules do not explicitly prohibit the introduction of additional documents and that the Commercial Courts Act provisions should be followed in such matters. The court granted permission to the respondent to file the video clip, provided an advance copy to the petitioner, and reserved the petitioner's right to contest its validity and relevance.
The decision of the Court:
Consequently, the court held that the applications for additional evidence were maintainable.
Case Name: Bennett Coleman And Company Limited V. E Entertainment Television Llc And Anr
Coram: Hon’ble Mr. Justice C Hari Shankar
Case No.: C.O. (COMM.IPD-TM) 86/2022
Advocates of the Petitioner: Mr. Hemant Singh, Ms. Mamta Rani Jha, Ms. Akansha Singh, Ms. Soumya Khandelwal and Ms. Pragya Jain, Advs
Advocates of the Respondent: 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
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