It is mandatory to have a legal proceeding certificate (LPC) as primary evidence of any entry made in the Trademarks Register. In case of India for Trademark registration a registration of certificate is provided to the applicant, however, it is not required at the time of legal proceedings. At that time a Legal proceeding certificate is required which is issued by the Registrar of Trademarks and is for the use of Legal proceedings only.
Thus legal proceeding certificates could be filed prior to the commencement of the trial and not necessarily along with the plaint. In this regard, the important decision of Bombay High court in a case of Pidilite Industries Limited Vs Poma Ex products (2017 (72) PTC 1 BOM). in this case the court observed that at a preliminary stage, a certificate of registration can be filed for determining its evidentiary value and a LPC can be submitted at the stage of the trial.
However, on August 27, 2019, the Delhi High Court in a case of Amrish Agarwal V Venus Home Appliances Pvt Ltd (CM (M) 1059/2018), Ruled that filing of LPC is mandatory to be filed along with the complaint alleging Trademark infringement. In this case a LPC was filed at the stage of final arguments in the lawsuit. Arguments were made on behalf of both the parties. It was argued that it was impermissible to allow the LPC to be submitted at the stage of final arguments. A counter argument was made that the renewal certificate will be put on record and duly exhibited. The court held that in a Trademark infringement matter the court ought to be able to see the mark and therefore either a LPC or a certificate of registration along with the journal extract must be submitted at the initial stage itself. While allowing the LPC to be taken on record the court imposed cost of Rs. 50,000/- on the respondent for the late submission.
The court also held that where LPC is not available at the time of the Trademark suit, then applicant can also submit its certificate of registration, a copy of trademark journal along with the latest status sheet from the website of the Trademark registry can be filed. If any mark is opposed by the opposite party then in that case the Party must file the LPC prior to the commencement of trial if any aspect of Trademark registration if disputed.
This case is also important because the court held that, at the time of admission/denial, parties will not be allowed to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from the online records maintained by the Registry.
Contact BIAT Legal LLP for any Trademark queries.