Haldiram India Pvt. Ltd. vs Union Of India And Anr.
2011 Latest Caselaw 1998 Del

*       IN THE HIGH COURT OF DELHI AT NEW DELHI
#21
+               W.P. (C) 12505/2009 & CM 10327/2010 (for impleadment)

        HALDIRAM INDIA PVT LTD                  ..... Petitioner
                     Through: Mr. Amarjit Singh, Advocate.

                        versus

        UNION OF INDIA AND ANR              ..... Respondents
                      Through: Mr. A.S. Chandhiok, ASG with
                      Mr. Ruchir Mishra, Advocate for R-1 & 2.
                      Mr. C. Mukund with
                      Mr. Amit Kasera, Advocates for intervenor/
                      Applicant in CM No. 10327/2010.

         CORAM: JUSTICE S. MURALIDHAR

        1. Whether Reporters of local papers may be
            allowed to see the order?                      Yes
        2. To be referred to the Reporter or not?          Yes
        3. Whether the order should be reported in Digest? Yes

                                 ORDER

06.04.2011

1. Is it possible that the Trade Marks Registry (`TMR‟) in this country can

lose over 44,000 of its files and not realise that it has for over five years?

Unfortunately, it appears it is. Pursuant to stringent orders by this Court in

the present petition, the TMR discovered in February this year that 44,404

files of trademark registrations have gone missing from its five branches in

Mumbai, Delhi, Chennai, Kolkata and Chennai. What is disconcerting is that

even the TMR has no real answer yet to the many questions that arise: who

caused these many files to go missing, when exactly they went missing,

whether these missing files can be recovered and if not, whether they can be

reconstructed. The consolation, if any, is that the TMR has placed before the

Court a plan of corrective and preventive action which it has promised to

sincerely implement. Whether in fact that happens remains to be seen.

2. A brief recounting of the background events is necessary to begin with.

The Petitioner, a company having its registered office in New Delhi, stated

that the its predecessor-in-interest adopted the trademark HALDIRAM

BHUJIAWALA somewhere in 1941-42 in respect of sweets and namkeens

and used the mark in the course of trade under the name and style of M/s

Chandmal Ganga Bishan. The present proceedings are an off-shoot of the

disputes arising from the application No. 285062 made with the Registrar of

Trade Marks, New Delhi for grant of registration of the trademark

HALDIRAM BHUJIAWALA as represented in a V-shaped logo device in

Class 30 on 29th December 1972. On the said application being published in

the Trade Marks Journal in accordance with the provisions of the Trade and

Merchandise Marks Act 1958, an opposition, numbered as DEL 2106 was

filed by a firm M/s. Haldiram Madanlal. On 31 st July 1980 the Registrar of

Trade Marks („Registrar‟) dismissed the opposition DEL 2106 and directed

the application No. 285062 to proceed to registration for the entire territory

of India except West Bengal. Later the firm M/s. Chandmal Ganga Bishan

was dissolved. In 1987 orders were passed by the Registrar for recordal of

the names of the sons of late Mr. Moolchand Aggarwal as proprietors of the

aforementioned registered mark. The sons later formed the Petitioner

company which was recorded as the proprietor of the mark. The Petitioner

states that litigation commenced in December 1991 between the Petitioner‟s

predecessor-in-interest and the family of Mr. Kamla Devi Aggarwal, an ex-

partner of M/s. Chandmal Ganga Bishan. In the said proceedings Mr. Kamla

Devi Aggarwal claimed to be the registered proprietor of an identical

trademark registered under No. 330375 in Class 30. It appears that an

opposition CAL 1048 was filed to application No. 284166B filed by M/s.

Haldiram Bhujiawal to grant of registration of the trademark HALDIRAM

MADANLAL BHUJIAWALA. The Petitioner filed another application for

registration of the trademark HALDIRAM (logo) under No. 559875 in Class

30 which was also opposed by the family members of Rameshwar Lal

Aggarwal/Mrs. Kamla Devi Aggarwal and the opposition proceedings were

designated as DEL-T-2488, DEL-T-2489, DEL-T-2490 and DEL-T-2515.

The Petitioner in 1999 filed CAL 629 for rectification of trade mark No.

330375.

3. It is stated that in the course of the ongoing litigation between the parties,

the Petitioner filed the following six requests with the TMR for issuance of

certified copies of several documents:

"a) Request for supply of two sets of certified copies of the documents relating to the filing of registered trademark no. 285062 in class 30.

b) Request for supply of two sets of certified copies to the documents relating to the filing of registered trademark no. 330375 in class 30.

c) Request for supply of two sets of certified copies to the documents relating to no. CAL 1048 to application no. 284166 in class 30.

d) Request for supply of two sets of certified copies to the documents relating to Opposition no. DEL-T-2488 to application no. 559875.

e) Request for supply of two sets of certified copies to the documents relating to Opposition no. DEL-T-2489 to application no. 559875.

f) Request for supply of two sets of certified copies to the documents relating to Opposition no. DEL-T-2490 to application no. 558975.

g) Request for supply of two sets of certified copies to the documents relating to Opposition no. DEL-T-2515 to application no. 559875."

4. The Petitioner states that when it approached the Office of the Registrar

for supply of above certified copies, it was informed that the files relating to

application Nos. 285062 in Class 30, Trademark No. 330375 in Class 30,

Opposition No. DEL 2106, Opposition No. CAL 1048, rectification petition

No. CAL-629, and opposition petitions DEL-T-2488, DEL-T-2489, DEL-T-

2490 and DEL-T-2515 were not traceable. The Petitioner‟s apprehension

was that the said files might have been deliberately misplaced and/or

concealed in the office of the Registrar and/or destroyed by third parties in

collusion with some officials of the TMR. It is in the above context that the

present petition was filed for a direction to the TMR to give the Petitioner an

inspection of the above files.

5. This Court was informed on 22nd March 2010 that in respect of three of

the cases in Delhi records were unable to be traced. As regards two

registrations at Kolkata and Mumbai, it was stated that the records "may be

available at those offices". Meanwhile Mr. Ashok Kumar Aggarwal filed

CM No. 10327 of 2010 seeking impleadment in the present petition. He

claimed that since the parties were in litigation, no order should be passed

without giving him an opportunity of being heard.

6. On 13th May 2010, learned counsel for the Petitioner contested the

statement made on behalf of the TMR that some of the files could not be

traced. This Court then directed the TMR to file an affidavit setting out the

efforts made to trace out the files and status of each of the files in which the

inspection was sought. The direction issued on 22nd March 2010 for

reconstruction of the files was kept in abeyance.

7. On 16th December 2010 this Court noted the contents of the affidavit dated

4th October 2010 filed by Mr. U.L. Barve, Senior Examiner in the TMR. It

was stated that on construction of the Intellectual Property Building at

Mumbai in 2006, the office of the TMR was shifted there and "consequently,

all manual registered and pending trade mark record/ applications were

transferred to the new premises in the year 2006." It was stated that "it may

be possible that in transportation of the record, the aforesaid registered file

must have been misplaced". It was further stated that on decentralization of

the work including process of registration from 2006-07, all registered files

were sent to the respective branch Registries. However, the file of the trade

mark No. 285062 did not appear in the register through which the files were

sent to the TMR, New Delhi. Certain other affidavits of the staff members of

the TMR were also filed.

8. This Court, in its order dated 16th December 2010, recorded its

dissatisfaction with the affidavit filed by Mr. Barve about the circumstances

under which the files went missing. It was observed that if several other files

had also gone missing, then the TMR ought to have initiated an inquiry in

the matter. The Court also noted that there was no clarity of the procedure

adopted for reconstruction of files that had gone missing from the TMR.

Consequently, by its order dated 16th December 2010 the Court directed that

the matter should be examined at the level of the Secretary, Department of

Industries, Government of India. He was asked to personally supervise a full-

fledged enquiry into the issue by a senior level official of the Ministry and

have a report prepared and submitted to the Court with an affidavit within a

period of three months. In particular, it was directed that the affidavit would

indicate "whether it is only the files in question or files of other cases as well

that have gone missing, the corrective action that the Trade Marks Registry

has taken in the matter including but not limited to filing FIRs and the

procedure to be adopted for the purposes of reconstruction of missing

original records."

9. Pursuant to the above order, an affidavit of compliance has been filed by

Mr. Sanjay Kumar Lal, Under Secretary in the Department of Industrial

Policy and Promotion (`DIPP‟), Ministry of Commerce and Industry, New

Delhi on 5th April 2011. As regards the inquiry into the issue of missing files,

the affidavit states that a Senior Director in the DIPP conducted a detailed

inquiry. She visited all the branch offices of TMR at Chennai, Kolkata,

Delhi, Ahmedabad and Mumbai between 16th and 26th February 2011 and

inspected the record rooms at each branch. The major findings of the Inquiry

Officer were as follows:

(a) The total registered and missing files at the time of the visit of the officer

in the five branch registries were initially estimated at 60,052.

(b) Despite serialization and a comprehensive attempt to locate the files

relating to the Haldiram case under Registration No. 285062 and application

No. 559875 (including opposition Nos. DEL-T-2988 and DEL-T-2515 from

which the relevant documents were sought), the said files could not be

traced. Accordingly, a complaint was filed at Police Station, Dwarka North,

New Delhi on 15th March 2011 and an FIR was registered on 1st April 2011.

Likewise, an FIR was lodged at Police Station, 24 Parganas (North), West

Bengal on 1st April 2011 in relation to the file concerning Registration No.

330375 which could not be traced.

(c) In the absence of adequate documentation in the e-register (as documents

have not been uploaded or verified), it was difficult to build the physical file.

However, with the information available in the trademark journals and

history of e-record, it was possible to list out the actions taken by the TMR

during the life cycle of the trademark.

(d) The decentralization of the TMR which was earlier headquartered at

Mumbai was one of the major reasons for the large number of files going

missing. It was pointed out that till the work got decentralized, the physical

files would travel to and from TMR Mumbai to the concerned registry and

no systematic record of the movement of files was kept either at TMR

Mumbai or the Branch Registry. As a result the branch offices were unaware

about the physical presence of the files in their registry.

(e) The shifting of the files to the respective branches in 2006 possibly

resulted in some of the files getting lost.

10. It is stated that a meeting chaired by the Secretary, DIPP was held

thereafter on 1st March 2011 to review the steps taken to comply with the

order dated 16th December 2010 of this Court. The meeting was informed

that the 50,872 files were unaccounted for in the four branches, other than

Mumbai which subsequently reported 9180 files missing. After reviewing

the exercise conducted by the TMR it was observed that the main reason for

a large number of missing files was the lack of scientific record-keeping

practices in the branch registries as well as lack of due diligence by the TMR

staff. The Controller General of Patents, Design and Trade Marks

(`CGPDTM‟) was directed to take prompt action in all cases where

malafides were suspected. The CGPDTM was directed to adopt the

following procedure:

"i) Immediately file an FIR in the Police Station with jurisdiction about the missing Haldiram file, which had important documents relating to ownership of the mark.

ii) Where a file is located with missing papers on suspected tampering, a quick enquiry should be conducted and if the malafide is established prima facie, an FIR should be lodged.

iii) Where the file is not traceable and possibly misplaced but no malafide is suspected, departmental action should be taken to fix responsibility for negligence.

iv) To ensure that the misplacement of files does not recur, steps should be taken to adopt scientific record keeping practices

at each branch registry. If necessary, professional advice should be taken for corrective steps. Further physical audit of all files in the registry should be undertaken every three months by the Records in-charge and every six months by the registry head."

11. The CGPDTM informed the Committee that the computer reconstruction

of the missing files was not possible as documents submitted by the parties

could not be replaced. However, information on a registered trademark could

be obtained from the Trade Mark Journal in which it was published prior to

registration. The information including documents that had been

electronically uploaded could also be used to recover essential data relating

to the missing files.

12. As regards the procedure to be adopted for recovery of the missing files,

it is stated that the branch registries have updated their list of missing files.

The latest position of missing files has been set out in para 14 of the affidavit

dated 5th April 2011 as under:

                    DEL    MUM CHEN KOL                   AHM      TOTAL
   Registered       224810 279446 103834 64001            50023    722114
   Files as on
   3rd January

   Number of
   files where
   physical
   files are not
   available           7291   9180      15557 10179        2197     44404

13. In para 15 of the affidavit, the corrective action proposed is as under:

"(a) About 3.8 lakh Trade mark files have been digitized and electronically uploaded but awaits in-house verification. This will be verified and placed in public domain within six months.

(b) TMR has 279 CDs containing about 2 lakh scanned records of old registered files and these will be uploaded in the main server and linked with corresponding electronic record within three months.

(c) The complete trade mark records have already been made open on the official website to ensure that if there are any discrepancies it would be brought to notice of the Registry for corrective action.

(d) After completion of the above exercise, a Public Notice will be issued regarding the files not accounted for requesting the right holders to provide wherever necessary documents to enable reconstituted amendment/updation of records.

(e) An IT Policy has been formulated and displayed on the official website of IPO and the Registrar is committed to totally digitize its complete IP records by 31st March, 2012 positively."

14. It is further stated that the CGPDTM has engaged the services of a

professional service provider as a consultant to make a detailed assessment

of the record management system prevailing at TMR. A final report would

be submitted by 31st May 2011 and further steps would be taken on the basis

of the said report. Further, it is stated that quarterly audits of trademark

records have been ordered which would be monitored directly by the

Registrar. It is stated that the physical audit of all the files in the record

rooms shall be undertaken by the Record In-charge every three months and

by the Head of the Office once in every six months and both shall report on

the audit to the Controller General. It is stated that the Record In-charge shall

also take necessary steps to reconstruct the missing files "based on the digital

data available on the system, journal publications and wherever possible

requisitioning it from the registered proprietor." A third plan of action is to

amend the Trademark Rules to provide for e-filing of applications through

electronic mode. It is expected that this will obviate the problem of data

storage and retrieval as well as data entry mistakes.

15. While this Court appreciates the steps taken by the DIPP to have an

inquiry conducted into the issue of the missing files, it is alarming that as

many as 44,404 files of trade mark registrations (not accounting for

opposition files) have gone missing since 2006 and this fact remained

unknown to the TMR and the DIPP till an enquiry was ordered by this Court.

Also, the holders of the concerned trade mark registrations and those who

have filed oppositions and applications for rectification of those marks

possibly do not yet know that the said files are missing.

16. Mr. Amarjit Singh, learned counsel appearing for the Petitioner

submitted that the contents of the above affidavit and in particular the details

of the files that have gone missing, should be made public. Mr. A.S.

Chandhiok, the learned ASG refers to para 15 of the affidavit which has been

extracted hereinbefore and states that after conclusion of the exercise of in-

house verification of the trademark files a public notice will be issued

regarding the files not accounted for.

17. This Court directs that the fact the above files have gone missing, the

procedure for recovery of the missing files and the corrective action by the

TMR as detailed in the affidavit dated 5th April 2011 should be immediately

placed on the website of the TMR and given as wide publicity as possible.

The above information should also be displayed forthwith on the notice

boards of each of the branches of the TMR at Delhi, Mumbai, Kolkata,

Chennai and Ahmedabad. The Secretary, DIPP will call for a compliance

report in this regard from each branch to be filed with him by 30 th April

2011.

18. It is next submitted by Mr. Amarjit Singh that the above procedure

outlined in the affidavit applies only to the files concerning trademark

registrations and not the oppositions. It is confirmed by Mr. Chandhiok,

learned ASG that the same procedure would be adopted in regard to the

missing files concerning oppositions.

19. It is then submitted by Mr. Amarjit Singh that a detailed enquiry should

be undertaken by the DIPP to fix responsibility on the officials of the TMR

both serving and retired who were entrusted with the responsibility of

ensuring the safety of the files. In para 8 of the affidavit dated 5th April 2011

the Under Secretary, DIPP has set out the proposed corrective measures.

This Court directs that the said measures should be strictly implemented. In

particular where a file is not traceable and/or possibly misplaced

departmental action should be taken to fix the responsibility for negligence,

and where malafide is prima facie established, an FIR should also be lodged.

20. The last submission is that this Court should fix the modalities for

reconstruction of the Haldiram case files. How in each of the cases

concerning the Petitioner on the one hand and the applicant in CM No.

10327 of 2010 on the other, and in the other connected cases, the original

trade mark registration and opposition/rectification files should be

reconstructed, is not for this Court to decide. That will have to be decided by

the courts and other fora where the cases are pending.

21. This Court would expect the TMR branches to be streamlined on the

lines of what has been stated in the affidavit dated 5th April 2011 of the

Under Secretary, DIPP without unnecessary delay. In the event the steps

proposed in the said affidavit are not implemented and corrective action not

taken, it would be open to any of the parties to apply to this Court for

directions.

22. The writ petition is disposed of in the above terms. The application

stands disposed of.

23. Order dasti.

S. MURALIDHAR, J APRIL 06, 2011 akg