Issues of Jurisdiction in IP laws

Intellectual property law is the rising sun of India. Churping of birds attract the human attention in morning, like wise, issue of Jurisdiction in IP cases attract the attention of legal fraternity.The issue of Jurisdiction is Venus in the galaxy called 'IP laws'.

Let me discuss the issue of Jurisdiction in IP laws in accordance with the respective Acts.

1) TRADEMARKS ACT,1999.

(A) Suit for Infringement of Trademark 

 Illustration

Mr. A is a registered proprietor of a Trademark 'X' for goods 'Y' in Ahmedabad.  The case of Mr. A is that Mr. B carrying on business in Mumbai, is using identical and/or deceptively similar Trademark for the identical goods  and thereby Mr. B is infringing the statutory rights of Mr. A.

Mr. A is willing to file a suit for infringement of Trademark.  Which court has jurisdiction to entertain and adjudicate the case of Mr. A. ?

Answer of this question is district court of Ahmedabad has jurisdiction to entertain and adjudicate the suit for infringement of Trademark as the words " the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain " are used   the provisions of section 134 (2) of the Trademarks Act,1999. Further, section 134(2) begins with the words " For the purpose of clauses (a) and (b) of sub- section (1), District Court having jurisdiction .."  Hence what section 134(1) says is  required to be seen. 

Section 134 (1) says, " No suit 

(a) for the infringement of a registered trademark ; or

(b) relating to any right in a registered trade mark ; or 

(c) for passing off arsing out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trademark ,whether registered or unregistered. shall be instituted in any court inferior to a District Court having jurisdiction to try any suit. 

Now if the provisions of 134(1) and (2) of the Act are required to be read combinedly.  Such combined reading establishes that clause (c) of section 134 (1)  is not incorporated in  the provisions of section 134(2). Only (a) and (b) of sub section 1 are incorporated. Hence section 134 is applicable only for infringement of registered trademark and not for passing off action, hence Mr. A of the above-mentioned illustration is entitled to file a suit of infringement of his registered Trademark in Ahmedabad District Court.

(B) Suit for Passing off Action

As far as passing off action is concerned, the provisions of section 134 of the Act, is not applicable.

In that case  if Mr. A of illustration is willing to take action of passing off action in Ahmedabad, he has to establish that the goods of Mr. B under the impugned trademark is being sold in Ahmedabad at the time of file of suit for passing off action. That means his action is based on the terms " where the cause of action is arisen". It means section 20 of CPC is invoked because section 134 of Trademarks Act is silent about the terms "where the cause of action arises". Hence the help of section 20 of CPC is required to be taken for filing a suit in Ahmedabad Court by Mr. A for passing off action along with infringement action. 

Suppose the goods of Mr. B is not being sold in Ahmedabad,  then ? 

Under such circumstances, Mr. A is only entitled to file a suit for infringement action in Ahmedabad Court and not for passing off action.  A suit for passing off action is to be filed in Mumbai where Mr.B resides, carries on business or works for personal gain or cause of action arises in view of section 20 of CPC. 

(C) Suit for groundless threat u/s.142 of the Trademarks Act,1999:

The plain reading of section 134 read with 142 of the Trademarks Act, does not invoke the provisions of section 134 as it is silent about the filing of suit for groundless threat as mentioned in section 142 of the Act. Meaning thereby, suit for groundless threat can not be filed on the basis of the terms " the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain " as mentioned in section 134 of the Act, but it can be filed on the basis of the (1) cause of action being arisen and (2) where the defendant resides or  carry on business or works for personal gain in accordance with the provisions of section 20 of CPC. Section 142(4) only speaks about instituting the suit in District Court but it is silent about which District Court.

2) THE COPYRIGHT ACT,1957

(A) Suit for infringement of Copyright:

Example: 

Mr. A is an author and owner of a book, residing in Ahmedabad. Mr. B, a resident of Mumbai makes a substantial and material reproduction of the book of Mr. A for sale of it in Mumbai and thereby infringes the Copyright of Mr. A. Which District Court has jurisdiction,  Ahmedabad Court or Mumbai Court ? 

The wordings of the provisions of section 134 of Trademarks Act, 1999 are similar to that of the provisions of Section 62 of the Copyright Act,1957. Meaning thereby, whenever there is infringement of Copyright, suit is filed in the court where plaintiff resides or carries on business or works for personal gain. Hence, the answer is Ahmedabad District court has jurisdiction as per section 62 of Copyright Act, of course, Mumbai Court has also jurisdiction to entertain and adjudicate the suit on the basis of ' cause of action being arisen' as per section 20 of CPC.

(B) Suit for groundless threat:

Section 60 of the Cooyright Act,1957 talks about the legal proceedings for groundless threats. The question is arisen that  whether the term " or the infringement of any other right " as mentioned in section 62(1) includes the right to file a suit for groundless threat? If yes, then ,as per  section 62 (2), the suit for groundless threat can be filed where the plaintiff of that suit actually or voluntarily resides or carries on business or personally works for gain. The proceeding of groundless threat is considered as civil proceeding arising under chapter 12 I.e. civil remedies of the Copyright Act.

3) The Designs Act, 2000

A) Suit for infringement of Copyright in Design:

Illustration:

Mr. A, being situated in Ahmedabad, is a registered proprietor of a design of an article and has copyright in design of that article.  The design of that article  is infringed by B who is situated in Kolkatta. 

Which court has jurisdiction to entertain and adjudicate the suit for infringement of registered design in this case ? 

Answering this question, let the second proviso of provisions of section 22 (2) of the Designs Act,2000 be referred. This second proviso says that suit seeking relief under S. 22(2) shall be insituted in the court of District Judge. This provision is client about the institution of the suit of which court, either the court where plaintiff is situated or the court where the defendant is situated or the court where the cause of action is arisen. Section 22 of the Act has no such wordings as  "the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain "  which are provided in section 134 of the Trademarks Act,1999 and in section 62 of the Copyright Act, 1957. 

Hence, it is established that the intention of legislature is very clear that suit for infringement of design is not filed in the District Court where the plaintiff is situated or is residing or carrying on businesd or is working for personal gain, otherwise the above mentioned terms should have been mentioned in section 22 of the Designs Act. 

Under such circumstances, the person, who is registered proprietor of a design, has two options for  instituting a suit for infringement of registered design against the defendant in the District Court  (1) where a defendant resides or carries on business or personally works for gain or (2) where the cause of action arises in view of provisions of section 20 of CPC.

(B) Suit for groundless threat:

Section 23 of The Designs Act,2000 is related to the issue of groundless threat. This provision is based on the provision of section 106 of the Patents Act, 1970 as per the provisions of secrion 23 itself.  Further, section 23 is silent for issue of instituting the suit for groundless threat in respect of jurisdiction. In other words, which District court has jurisdiction for filing suit of groundless threat is not mentioned in the entire Act.  As section 23 is based on section 106 of the Patents Act, it is required to be read with section 104 of the Patents Act, for issue of jurisdiction which says that District Court has jurisdiction for  a suit for declaration under section 105 or for any relief under section 106 or for infringement of a patent. Further, here in this provision of 104, the word 'district court' is used, hence we need to reply upon the definition of 'district court' defined in section 2(e) of the Patents Act. This definition says, " district court has the meaning assigned to that expression by the Code of Civil Procedure, 1908." Meaning thereby the provisison of CPC which enlightens the definition of district court is required to be seen. It is provided in definition clause  section 2(4 )of CPC. I.e. "district" means the local limits of the jurisdiction of a principal Civil Court of original jurisdiction (hereinafter called a "District Court"), and includes the local limits of the ordinary original civil jurisdiction of a High Court.

4) The Patents Act, 1970

(A) Suit for infringement of Patent:

The Patents Act is silent about filing of a suit of infringement of Patent either in a court where pantee is situated or in a court where the defendant is situated. Section 104 of the Patents Act only speaks that suits for declaration or for infringement of Patent shall be insituted in District Court. Hence, such suit can be filed with the help of the provisions of CPC as the special statute is silent about the fact that which District Court has jurisdiction to entertain and adjudicate the suit for infringement of Patent.

(B) Suit for groundless threat:

Section 106 of the Patent Act is invoked for instituting the suit for groundless threat. This section is to be read with section 104 of the Act for issue of Jurisdiction as the provision of section 104 is for Jurisdiction as discussed in earlier paragraph.

So neither the designs Act or the Patents Act says about the intitution the suit likewise the provisions of section 134 of the Trademarks Act or the provisions of 62 of the Copyright Act.  In otherwords, both the designs Act and patents Act are silent about such terms which have been provided in s.134 (2) of the Trademarks Act and S.62(2) of the Copyright Act. 

5) The Geographical Indications of Goods (Registration and Protection) Act, 1999:

(A) Suit for infringement and Passing Off Action:

The provisions of Section 66 of this Act is as equal as the provisions of Section 134 of the Trademarks Act,1999. Hence the same rule of jurisdiction  is applicable what has been stated earlier for infringement of trademarks and for passing off action. 

(B) Suit for Groundless threat: 

Section 73 of the Act deals the the provisions of groundless. S. 73(4) says that a suit for groundless threat is insituted in District Court. Hence S.73(4) is read with the definition of district court defined in S.2(d) of the Act. We find approximately the same wordings of definition clause as are provided in S. 2(e) of the Patents Act.

6) The Protection of Plat Varieties and Farmers' Rights Act, 2001: 

Infringement of a registered variety:

Section 65(2)  of this Act clearly establishes that suit for infringement a variety registered under this Act is insituted in a District Court within the local limits of whose jurisdiction the cause of action arises. In this section there is omission  of the term the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain "  or  "where the defendant resides or carries on business or personally works for gain". 

It is found that this section gives important to the cause of action being arisen, irrespective of place of plaintiff or defendant.  The term ' passing off action ' is not mentioned in the Act.

7) The Semiconductor Integrated Circuits Layout-Design Act,2000

There is no civil remedy available under this Act. A complaint in writing by registered proprietor or the registered user of a layout design for infringement is filed in competent criminal court. Section 56 read with S.18 of the Act.

8) The Biological Diversity Act, 2002:

There is no role of civil court  as no civil remedy is available in this Act. 

9) OTHER ISSUES PERTAINING TO JURISDICTION IN IP LAWS: 

a) Whether a jurisdiction of a court can be invoked on the basis of accessibility of website ? 

The asnwer of such question is in negative. Because internet can be accessed from any corner of the world, so the plaintiff can not invoke the jurisdiction of any court, provided that substantial sale transaction of infringing goods is being sold through website. For answering this issue i am quoting  the following paragraph.

"Para no. 58 of the judgement of Hon'ble Delhi High Court (DB) in the case of Banyan Tree Holding (P) Ltd. Vs. A. Murali Krishna Reddy & Anr. Question (i): For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, in what circumstances can it be said that the hosting of a universally accessible website by the Defendants lends jurisdiction to such Court where such suit is filed ("the forum court")?

Answer: For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the Plaintiff would have to show that the Defendant "purposefully availed" itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state."

b) Whether a court has jurisdiction on the basis of establishment of  Trademark Registry ?

If the TM Registery is situated in Ahmedabad, and the defendant has applied his trademark before Ahmedabad TM Registey, can the jurisdiction of Ahmedabad Dist Court invoke on the basis of establishment of TM Registey in Ahmedabad ? 

The answer is in negative. There is no such provision available in IP Acts. 

c) Whether jurisdiction of Court can be invoked on the basis of IP lawyer is practising in particular court ?

The answer is in negative. 

d) Whether Court has jurisdiction for composite suit ?

Yes composite suit is maintainable if all cause of action occure at one place. 

e) Whether both the parties to the suit are situated in Ahmedabad, can the jurisdiction of Delhi Court be invoked by the plaintiff in that suit ? 

The answer is in negative, provided that goods of the defendant ought to be sold in substantial and material form in Delhi for invoking the jurisdiction of Delhi Court.

f) Whether a court, having jurisdiction for infringement of Trademark can have jurisdiction for passing off action? 

Yes. 

g) Whether the provisions of Order 7 Rule 11 of CPC are applicable to  IP statutes? 

Yes they can be. For adjudication of an application u/O7.R.11, only averments made in the plaint are required to be considered. 

Chirag Bhatt

Advocate 

Whether the registration of a trademark of the defendant is a relevant factor to decide the case of passing off action?

Let me begin this article by way of giving an illustration.

Mr. A is a plaintiff who is a registered proprietor of a trademark X and Mr. B is a defendant who is also a registered proprietor of a trademark X1. Both Mr. A and Mr. B are engaged in the identical business under the above mentioned trademark X and X1 respectively.

Mr. A has filed a suit for passing off action against Mr. B seeking relief to restrain the defendant i.e. Mr. B from using the registered trademark i.e. X1. 

Mr. A is a prior user of the trademark X. Mr. A being plaintiff has fulfilled all the criterias of passing off action.

Under such circumstances whether Mr. A is entitled for injunction against Mr. B who is a registered proprietor of the trademark X1 in a case of passing off action.

When the case is for passing off action and not for infringement action, under such circumstances whether section 28(3) is applicable? Whether registration of the defendant’s trademark has relevancy in a case of passing off action? Whether the defence of registration of the trademark X1 taken by the defendant is sustainable or maintainable?

Answering the above mentioned question in respect of  passing off action first of all it is required to be considered what is passing off action. Passing off action is a common law remedy. It is not a statutory remedy and the ingredients of passing off action are required to be considered. They are (1) Goodwill and reputation established by the plaintiff under The Trademark Acts, (2) Misrepresentation made by the defendant under the trademark X1 in the course of trade, (3) occurrence of damage in the part of plaintiff, (4) prior use of the trademark by the trademark by the plaintiff.

If above mentioned criterias or ingredients are satisfied by the plaintiff in the case of passing off action the plaintiff is entitled for the relief of injunction against the defendant. Now the question as mentioned hereinabove whether registration of a trademark of the defendant is a relevant factor to adjudicate the case of passing off action.

Answering the same question I’d like to rely upon the judgement of Hon’ble Delhi HC(DB) in the case of

1. Century Traders vs Roshan Lal Duggar Co. reported in AIR 1978, Delhi 250(15).

1. In para no. 9 of the said judgement was held by Hon’ble DB, “In a passing off action registration of the trade mark is immaterial.” “.............it is clear that registration of the mark in the trade mark registry would be irrelevant in an action for passing off. Furthermore, it will be clear that in deciding whether a particular mark is common to the trade use of that mark would be extremely relevant. Mere registration would not be enough.”

2. In para no. 11 of the said judgement the case of Consolidated Foods Corporation v. Brandon and Co., Private Ltd. was cited wherein it was held that, “Registration itself does not create a trade mark. The trademark exists independently of the registration which merely affords further protection under the Statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.” 

3. In para no. 14 of the said judgement. “Thus, the law is pretty well-settled that in order to succeed at this stage the appellant had to establish use of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trademarks.”

2. S. Syed Mohideed vs P. Sulochana Bai

1. In this case Hon’ble SC in para no. 23 held that “the registration is no defence to a passing off action and nor the Trade Marks Act, 1999 affords any bar to a passing off action.”

2. Further in para no. 23 of the said judgement Hon’ble SC held “that registration is merely a recognition of the rights pre-existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognized in the form of the registration by the Act.”

3. Intex Technologies (India) Ltd & others vs M/S Az Tech (India) & Another, Delhi HC

In para no. 18 it was held that, “It is also evident that insofar as a registered trade mark is concerned, the property exists in the mark, but in the case of passing off, the property is not in the mark but in the goodwill.” 

4. Geoscope Exim Pvt. Ltd. vs SNJ Distillers Pvt. Ltd., Madras HC dated 08/06/2022

In this case both the plaintiff and the defendant are the registered proprietor and they are engaged in the identical business. The plaintiff has filed the suit for passing off action seeking relief to restrain the defendant from using identical and/or deceptively similar trademark HOBBS to that of plaintiff’s trademark HOBSONS. Hon’ble Madras HC in para no. 10 of the order held that “there is some similarity between the two registered word marks HOBSONS and HOBBS but such similarity should be balanced against the fact that the wordmark HOBBS is registered. Even in a passing off action, in my view, this is a relevant though not controlling criterion and should be reckoned along with other aspects.” Hence, injunction is not granted to the  plaintiff.

5. Ranjit hosiery mills vs MANOHAR C MURJANI TRADING AS V M HOSIERY(AO no. 101/2022 Gujarat HC(DB))

The plaintiff has filed the suit for passing off action before Commercial Court Ahmedabad against the defendant. The plaintiff’s trademark is Ranjit Rocky and the defendant trademark is Rockley. Both are engaged in the hosiery business. Plaintiff is a prior user of the trademark Ranjit Rocky then that of the defendants trademark Rockley. The defendant is a registered proprietor of the trademark/word Rockley. Hon’ble Commercial Court has not granted injunction hence, plaintiff has preferred appeal from order before Hon’ble Gujarat HC as it is the order of Commercial Court appeal was heard by DB as commercial appellate court. Having heard both the advocates of the respective parties at length, Hon’ble Gujarat HC has restrained the respondent/defendant from using the label containing the word Rockley but not from using the word Rockley as the word Rockley is registered in the favour of the defendant.

Author’s Opinion:

In passing off action registration of the trademark has no relevance, neither can the defendant take the defence of the registration of his trademark as it is settled principle laid down by Hon’ble SC and Hon’ble Delhi HC(DB) in the above mentioned judgements in view of the judgement of Hon’ble SC and Hon’ble Delhi HC(DB) whether the order passed by Madras HC and the order passed by Gujarat HC(DB) respectively are contrary to the settled principle of law. In para no. 10 of the order passed by the Madras HC though it was a case of passing off action registration of the defendant’s trademark has been considered a relevant factor for not granting an injunction to the plaintiff. With profound respect to the Hon’ble Madras HC whether this view taken by it can’t be contrary to the principle laid down by the apex court and Hon’ble Delhi HC(DB) that in passing off action registration has no relevance and registration is not a defence? Further when the plaintiff before Madras HC is prior user and when the plaintiff and the defendant both are engaged in the similar business and when the Madras HC has observed the similarity between the two trademarks HOBSONS and HOBBS, is it not the case where the injunction ought to be granted at the stage of adjudication of injunction application filed under Order 39 Rule 1 and 2 of CPC?

As far as the order of Gujarat HC(DB) is concerned there is a case of passing off action, plaintiff is a prior user, plaintiff has established ingredients of passing off action, defendant is admittedly a subsequent user, defendant has taken the defence of registration of his trademark Rockley. With immense respect to Hon’ble DB of Gujarat HC, Hon’ble Gujarat HC has considered the registration of the defendant in the case of passing off action, is it true justification in the case of passing off action. As the registration of the trademark doesn’t give any new right to the registered proprietor. The registration gives proprietary right to the trademark but in passing off action the property is not in the mark but in the goodwill. So when the goodwill has been established by the plaintiff, prior use has been established along with all ingredients of passing off action as well as Order 39 Rule 1 and 2, should the Hon’ble DB have considered the registration of the trademark of the defendant in passing off action which is otherwise contrary to the settled principle of law and the said registration has already been challenged by the plaintiff therein?

Considering the above mentioned judgements of various courts, my opinion is that in passing of action registration of the trademark has no relevance and the same is not a valid defence in the eyes of law.

Chirag Bhatt
Advocate

   

Trademark AMUL is protected

There is a slap on the face of infringers who are using the trademark AMUL with or without knowledge  by  way of the judgement delivered by Honb'le Kolkata High Court on 1st September,2022 in the case of Kaira District Cooperative Milk Producers Union Ltd. & Anr.Vs. Maa Tara Trading Co. & Ors. (CS no..107 / 2020).

The plaintiff has filed a commercial suit for infringement and passing off action for its registered trademark AMUL  against the defendants as the defendant is using the trademark AMUL for candle. 

None appeared on behalf of the defendants. The defendants were engaged in different business. The defendants were using the trademark AMUL for different goods i.e. Candle. The plaintiff was engaged in the business of milk and dairy products at national and international markets. The trademark AMUL is registered since 1958 in favour of the plaintiff. 

 Two issues of law are involved in this judgement.

Issue no. 1 :  Whether the plaintiff is entitled to restrain the defendants for the identical trademark which is being used by the defendants for different goods.i.e.the goods for which the trademark AMUL has not been used by the plaintiff?

Issue no. 2 :  Whether the Courts should grant judgement and decree invoking the provisions of Order 8 Rule 10 of Code of Civil Procedure, 1908(CPC)?

Let me discuss these issues here.

Issue No.1: Issue number one is related to the infringement of The trademark for the goods for which the plaintiff is not the registered proprietor. In other words the defendant is using the Trademark for different goods under such circumstances whether the plaintiff is entitled to be protected if his registered trademark is being used by the defendant for the different goods or services and such goods or services have not been used by the plaintiff.

Section 29(4) of The Trademarks Act plays very important role in this regard which says that A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trademark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or reputation of the registered trademark.

For better understanding of this section, I have made a specific video on my youtube channel C.Bhatt-law study which is titled as Infringement of Trademark for dissimilar goods or services. In the provision of section 29(4) three criterias are provided by the legislature for invoking section 29(4) for the protection of registered trademarks in the case of infringement for dissimilarity of goods and services. The three criterias as mentioned in section 29(4) must be satisfied wholly unless they are satisfied wholly, section 29(4) is not applicable. Further if either of such criteria or conditions is satisfied, section 29(4) is not applicable.

Section 29(4)(a) says that the infringing mark must be identical with or similar to the registered trademark.

29(4)(b) says that the infringing mark must be used in relation to the goods or services which are not similar to the registered trademark.

29(4)(c) is very important which says that

(i)  The registered trade mark has a reputation in India;

(ii)and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or reputation of the registered trademark.

The above mentioned criterias mentioned in provisions of section 29(4)(c) must be satisfied by the plaintiff along with the criterias mentioned in 29(4) (a) and (b).

In the present case before Hon’ble Calcutta HC whether the plaintiff has satisfied the criterias of section 29(4)?

Replying to this question first of all the trademark Amul used by the defendant is identical with or similar to the registered trademark is required to be considered. The answer is in affirmative because the word Amul has been used by the defendant in exactly the same fonts as is used by the plaintiff.

Secondly the defendant has used the registered trademark Amul of the plaintiff in relation to different goods i.e. candles.

The third criteria has also been satisfied by the plaintiff as the registered trademark Amul of plaintiff has a reputation in India and thus use of the said mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of registered trademark.

Hence, the criterias mentioned in section 29(4) have been satisfied by the plaintiff. It is pertinent to note that the trademark Amul of plaintiff has been listed at number 66 in the list of well known trademark by trademark registry in the year 2013 IPAB has considered the trademark Amul as well known in the case of M/s. Kaira District Co-Operative Milk Producers Union Limited v/s Deputy Registrar of Trade Marks & Others OA/56/2011/TM/KOL and Miscellaneous Petition No. 150 of 2011 decided on 7th march 2013.

Issue No.2:

The issue no 2 is related to Order 8 Rule 10 of CPC. As the suit is filed in commercial division of Kolkata High Court, and the defendant has not remained present before the Court after being summoned, nor has he filed written statement in the case, the plaintiff has invoked the provisions of Order 8 Rule 10 of CPC which says that,

“ Procedure when party falls to present written statement called for by Court.- Where any party from whom a written statement is required under rule 1 or rule 9 fails to present the same within the time permitted or fixed by the Court, as the case may be, the Court shall pronounce judgement against him, or make such order is relating to the suit as it thinks fit and on the pronouncement of such judgement a decree shall be drawn up”.

As per the latest amendment in CPC in view of Commercial Courts Act, the defendant is not entitled to file written statement beyond the period of 120 days as per the proviso of Order VIII Rule 1. The proviso of Rule 10 of Order VIII says that “ [Provided that] no Court shall make an order to extend the time provided under Rule 1 of this Order for filing of the written statement.”.

Having read the section and proviso thereof it emerges out that

(1) It is the discretionary power of the court to pronounce the judgement against the defendant in absence of filing of written statement.

(2) The defendant is not permitted to file written statement beyond the period of 120 days in the commercial cases. ( That is not the issue in the present case).

Hon’ble Kolkata High Court has relied on the judgement of Hon’ble SC in the case of C.N. Ramappa Gowda vs. C.C. Chandergowda reported in{ (2012) 5 SCC 265 paras 25,26,27 }, has held that the present suit is a commercial suit under the Commercial Courts Act, and it it the clear intention of the legislature to dispose of the suits, having commercial nature expeditiously without being lingered. Further , The Court has also satisfied with the averments made in the plaint and the documents and affidavit produced by the plaintiff.

Hence, as per the opinion of the Court it is the fit case to invoke the provisions of Order VIII Rule 10 of CPC and accordingly the decree has been passed in terms of the prayer paras in favour of the plaintiff and against the defendant.

Author’s Opinion:

1) The protection of a well known mark is inevitable when all legal criteria are satisfied otherwise the motto of the declaration of a well known mark as mentioned in the Trademarks Act, 1999 becomes infructuous. Further in the present case the trademark AMUL has a well established reputation not only in India but beyond the border of India. Though the defendant has used the trademark AMUL for different goods, perhaps the plaintiff has not used its registered trademark for the said different goods, but non use of the plaintiff’s registered trademark, is not the criteria or defence for not satisfying the provisions section 29(4) of the Trademarks Act, 1999. When Legislature has with good intention of protection has incorporated the provisions of S. 29(4) in the Trademarks Act, 1999, the registered trademark must be protected if all the three conditions mentioned therein have been satisfied by the plaintiff. Hence, the decision of Hon’ble Kolkata High Court is just, apt and appropriate. It is noted that the trademark AMUL has satisfied all the conditions beyond the limit as it is declared as a well known mark. To be a well known mark is not the condition but a registered trademark having reputation in India is the condition. There is a difference between a well known mark and a registered trademark having reputation. The definition of a

well known trademark as provided in S.2(1) (zg) of the Trademarks Act, 1999 is silent about words used by the Legislature in Section 29 (4) ( c ) i.e. the registered trademark has a reputation in India. Hence it is possible that the well known trademark may not be registered as registration of trademark is not the criteria for being a well known trademark as per the definition of it but use of the mark is a must. In the present case AMUL is a registered and a well known trademark, hence, the

Hon’ble High Court has rightly protected it.

2) As far as Order 8 Rule 10 of CPC is concerned, in the present litigation scenario, it ought to be invoked by the Courts in the genuine cases when there is no written statement , when the defendant has never come up before the Court after the summons being served. The Courts ought to avoid pedantic approach to conduct the Trial by the plaintiff ex parte in the cases like AMUL to expedite the genuine commercial litigation with the more judicial consciousness based on the plaint and documents produced by the plaintiff.

Author

Chirag Bhatt 

Advocate.

Khadi under IP protection

The history of our nation witnesses that khadi has made revolution in the era of renaissance in our country. ‘Khadi’ became an epitome of the nation at that time.

Once again ‘Khadi’ is in the news in the field of intellectual property laws. There was a legal battle between Khadi and Village Industries Commission and Raman Gupta and others before Delhi High Court(CS (Comm) 133 of 2022 & I.A. 3299 of 2022 dated 26-7-22).

The brief factual matrix is that ‘Khadi’ and Village Industries, being plaintiffs, have filed a suit for infringement of Trademark ‘Khadi’ along with other ancillary reliefs against Raman Gupta and others i.e. defendants. The plaintiff is the registered proprietor of the mark ‘Khadi’ and its variants in several classes, along with the ‘Charkha Logos’. The said trademarks are also registered in various countries like the U.K, China, Australia, USA, Bhutan, Mexico, New Zealand etc. The plaintiff has its own websites www.kviconline.gov.in, www.ekhadiindia.com which sells over 50,000 products ranging from food products, grocery products, oils to diyas, woollen products, cosmetics, etc. The plaintiff has also manufactured and sold various medical products, such as hand wash, hand sanitizers, etc. A mobile Application is launched by plaintiff under the name Khadi India. It is also the case of the plaintiff that the trademark Khadi along with ‘Charkha logo’ is licensed to several third parties. Products of Khadi are sold on e-commerce platforms. The trademark ‘Khadi’ has been protected in earlier legal proceedings.

The defendants are using the trading style ‘Khadi by Heritage’ and also the mark Khadi and charkha logos. The defendants are using the impugned trademarks for PPE kits, hand sanitizers, fireballs through their website.

Hon’ble Delhi High Court granted ex parte ad interim injunction in favour of the plaintiff and against the defendant as the use of the word Khadi by the defendant as a trading style or as a trademark is illegal and unlawful. The defendant is also restrained from using the domain name www.khadibyheritage.com and its variants.

Hon’ble Delhi High Court has perused the record of the case and thereafter came to the conclusion that plaintiff is the registered proprietor of the trademark Khadi and its variants since the year 2014 and has used them since 1956. Perusal of the record and considering the facts of the case of the plaintiff in para no. 13 of the judgement, Hon’ble Delhi HC is of the opinion that the use of the mark and name ‘Khadi by Heritage’ by the defendant would result in causing irreparable confusion to the consumers and such use also creates illusion in the minds of the people that the defendant must be associated with the plaintiff. And therefore Hon’ble Delhi HC has granted a decree of permanent injunction in terms of the prayer paragraphs of the plaint against the defendant.

Hon’ble Delhi HC has also passed an order for the award of damages and cost in favour of the plaintiff and against the defendant observing that the use of the trademark/logo/domain name by the defendant is deliberate/conscious and malafide in nature.

Author’s Opinion:

● Awarding damage in favour of the plaintiff is embodied in section 135 of The Trademarks Act, 1999. If such damage is asked in the form of relief.

● In the cases of intellectual property laws to prove damage may be very difficult during the Trial.

● Hon’ble Delhi HC has awarded damage of Rs. 10,00,000 and cost of Rs. 2,00,000 in favour of the plaintiff and against the defendant on the basis of deliberate, melafide and conscious use of the trademark by the defendant. It is a welcoming step taken by Hon’ble Delhi HC to protect the intellectual property rights in their real sense by way of awarding damages. As in the present case the plaintiff has been using the trademark Khadi and its variants since 1956 and the filing of trademark applications by the defendant deliberately establishes the dishonesty on the part of the defendant further in the examination reports of the trademark applications filed by the defendants the trademarks of the plaintiff have been cited as conflicting marks by the trademark registry. This fact also establishes that the defendant is well within the knowledge of the plaintiff’s registered trademarks and its variants. The defendant continued to use his trademark which establishes dishonesty on the part of the defendant.

● Hence, the order passed by the Hon’ble Delhi HC restraining the defendant from using the trademark Khadi and awarding the damages and cost is just an appropriate in the eyes of law.

● Such judgements passed by the courts become one of the best examples at national and international level to encourage more and more people not only to trust in Indian Judiciary but also to the development of their industries and business under the umbrella of intellectual property rights.

● In genuine cases, awarding damage and cost becomes inevitable for encouragement of protection of IPR so that justice in its real sense would be justified.

● It can be said that Khadi becomes an offbeat stuff to wear now-a-days but it had played a very important role during the time of our freedom and it also plays very important at present by way of getting it protected from Hon’ble Delhi High Court.

Author

Chirag Bhatt

Advocate.

Cbhattlawoffice 

Section 12A of the Commercial Courts Act, 2015

On 17th August 2022, Hon’ble Supreme Court delivered one judgement in the case of M/S. PATIL AUTOMATION PRIVATE LIMITED AND ORS. - APPELLANT(S) VERSUS RAKHEJA ENGINEERS PRIVATE LIMITED - RESPONDENT(S) wherein the issue is in respect of section 12A of commercial courts act 2015(Hereinafter referred as the Act). Whether statutory pre-litigation mediation as mentioned in that section is mandatory and whether the courts below have erred in not allowing the applications filed under order 7 rule 11 of CPC to reject the plaints.

Factual Matrix:

The factual matrix in a nutshell is that a commercial suit under order 37 of CPC was filed for recovery of more than one crore rupees along with 12% interest before District Court, faridabad. A written statement was subsequently filed by the defendant therein. The defendant also filed an application under Order 7 Rule 11 of CPC taking stand of the provisions of section 12A of the commercial courts act.

In the commercial suit filed before the District Court, Hon’ble District Court relying upon one judgement of Hon'ble Bombay High Court in the case of Gange Taro Vazirani vs. Deepak Raheja(2021) SCC online Bombay 195 while adjudicating an application filed by the defendant under order 7 rule 11 and observed that the aim and object of section 12A of the Act is to ensure that before a commercial dispute is filed before the court, the alternative means of dissolution are adapted so that genuine cases come before the court, the District Court further observed that though the provisions of section 12A is mandatory in nature, if the suit of the plaintiff is rejected it’d have catastrophe effect and that was not the intention of legislature and thereby the District Court have rejected an application under order 7 rule 11 filed by the defendant i.e. appellant before Hon'ble Supreme Court. However, it is pertaining to note that the division bench of Bombay High Court in the case of Deepak Raheja vs. Ganga Taro Vazirani reported in(2021) SCC online Bom HC 3124 has reversed the order passed by the single judge in the said case.

The defendant has filed a revision application before the Hon’ble High Court. The Hon'ble High Court has confirmed the order passed by the trial court and further held that “the purpose of referring the dispute to the mediation centre is to explore settlement. If the suit is filed without taking recourse to the procedure, it should not entail rejection of the plaint as this could not have been the intention of the legislature. It is further observed that an enactment is to be interpreted in a manner that it doesn’t result in delivery of ‘perverse justice’. Further the trial court has directed the parties to appear before secretary of district legal services authority for the purposes of mediation and meanwhile the civil suit shall be kept in abeyance”.  The Order of HC has been challenged before Hon’ble SC, hence this judgement. 

Therefore it is a need of hour to mention here the provisions of section 12A of the commercial courts Act. Section 12A was inserted on 3rd May 2018 in the Commercial Courts Act. Section 12A is embodied under chapter 3A under title pre-institution mediation and settlement which is as under.

“(1) A suit, which does not contemplate any urgent interim relief under this Act, shall not be instituted unless the plaintiff exhausts the remedy of pre-institution mediation in accordance with such manner and procedure as may be prescribed by rules made by the Central Government.

(2) The Central Government may, by notification, authorise the Authorities constituted under the Legal Services Authorities Act, 1987 (39 of 1987), for the purposes of pre-institution mediation.

(3) Notwithstanding anything contained in the Legal Services Authorities Act, 1987 (39 of 1987), the Authority authorised by the Central Government under sub-section (2) shall complete the process of mediation within a period of three months from the date of application made by the plaintiff under sub-section (1):

Provided that the period of mediation may be extended for a further period of two months with the consent of the parties:

Provided further that, the period during which the parties remained occupied with the pre-institution mediation, such period shall not be computed for the purpose of limitation under the Limitation Act, 1963 (36 of 1963).

(4) If the parties to the commercial dispute arrive at a settlement, the same shall be reduced into writing and shall be signed by the parties to the dispute and the mediator.

(5) The settlement arrived at under this section shall have the same status and effect as if it is an arbitral award on agreed terms under sub-section (4) of section 30 of the Arbitration and Conciliation Act, 1996 (26 of 1996).”

Having read the above mentioned section more specifically 12A(1) it establishes that a suit having commercial nature cannot be instituted unless the plaintiff seeks the remedy of pre-institution mediation as per the manner and procedure. This section has one condition precedent i.e., “which does not contemplate any urgent interim relief under this Act.” This establishes that if there is any urgent interim relief under the Act, the provision of section 12A(1) is not applicable.

Having analysed and observed the statement of objects and reasons of the Act, and referring to various judgements of Hon’ble SC, in para 53 Hon’ble SC observed that section 12A of the Act is mandatory in nature. Hon’ble Supreme Court further observed that mere use of the word ‘shall’ not be the reason for their opinion for section 12A. It was further observed that the object of section 12A is to conduct the mediation between the parties without any involvement of the court prior to the institution of the suit.

In para 54 of the judgement, it was observed that section 12 is the fastest route without for a moment taking the precious time of a court. It was further observed that section 12A of the Act is applicable only to the suit which does not contemplate any urgent interim relief. It was the observation of the court that in a suit where the urgent relief is short, the legislature has carefully vouch-safed immediate access to justice as contemplated ordinarily through the courts.

In para no. 63 while comparing with the provisions of section 80(1) of CPC it was observed that in section 12A of the Act also the bar of institution of the suit is applicable only in a case in which the plaintiff does not contemplate urgent interim relief.

The second issue is with regard to rejection of plaint:

Q. Whether the court can reject the plaint without the application U/O 7 rule 11 of CPC being filed?

                                           OR

Q. Whether it is mandatory to file an application U/O 7 rule 11 for rejection of a plaint?

Para 68 :- (C) of the judgement.

The answer of this question is given in para 68(C) of the judgement relying on the judgement of SC in the case of Madirajn Venkata Ramana Raju, Hon’ble SC held that in a clear case, where on allegations in the suit, it is found that the suit is barred by any law, as would be the case , where the plaintiff in a suit under the Act does not plead circumstances to take his case out of the requirement of section 12A, the plaint should be rejected without issuing summons. Undoubtedly, on issuing summons it will be always open to the defendant to make an application as well under order 7 rule 11. In other words the power under O.7.R.11 is available to the court to be exercised suo moto.

Mediation:

Para no. 74:  mediation is recommended by Hon’ble SC: 

Para no. 74 emphasises on the carving need of mediation in commercial disputes and the availability of highly skilled and trained mediators with respective issues in mediation. Hon’ble SC in the same paragraph further observes that there must be trained mediators and training program by experts should be held in state judicial academy in this regard, High Court may also undertake periodic exercise to establish a panel of trained mediators in District and Taluka levels as per need.

Para no.84 Section 12A of the Act is mandatory in nature: 

In para 84 Hon’ble SC declares that “section 12A of the act is mandatory and holds that any suit instituted violating the mandate of section 12A must be visited with rejection of plaint under order 7 rule 11. This power can be exercised even suo moto by the court as explained earlier in the judgement.” It is further clarified that section 12A of the Act becomes mandatory with the effect from 20-8-2022 so that concerned stakeholders become sufficiently involved. It is further directed by the SC that, “In case the plaints have already been rejected and no steps have been taken within the period of limitation, the matter can’t be reopened on the basis of this declaration.” Still further, if the order of rejection of the plaint has been acted upon by filing a fresh suit, the declaration of prospective effect will not avail the plaintiff. Finally, if the plaint is filed violating Section 12A after the jurisdictional High Court has declared section 12A mandatory also, the plaintiff will not be entitled to the relief. Thus, it is clarified in this paragraph by Hon’ble SC that no retrospective effect of the declaration of section 12A of the Act being mandatory is applicable to any case prior to the date of 20-8-2022. 

Appeal filed by appellant defendant was allowed by Hon’ble SC rejecting the plaint filed under order 37 of CPC.

Author’s Opinion:

In this judgement Hon’ble SC has majorly cleared three issues:

(i)   Section 12A of the commercial courts act is mandatory in nature.

(ii)  Courts have power to reject the plaint under order 7 rule 11 of CPC suo moto, application under order 7 rule 11 of CPC is not required.

(iii)  The applicability of provisions of Act is to the suits only wherein urgent interim relief is not sought.

Whether this judgement is boon or curse?

(A)  Boon

 To answer this,

1. The objects and reasons of the commercial courts Act are required to be considered and looked into.

2. The purpose of the commercial courts Act being enacted is only to develop and encourage commercialization and industrialization in the country with the faster and competent legal support in the era of technology and science.

3. The effect of this judgement may be at Global commercial level so that more and more Global investors come to India for commercial purposes.

4. This judgement of SC is a renaissance not only to the Indian judiciary but also to the business world in India as well as the foreign countries.

5. To encourage commercial mediation in the country as per para 74 of the judgement, such is a welcoming step towards making commercial utopian and peace fraternity and harmony. I think this is the original nature of our country.

6. To encourage mediators having sound knowledge of the particular subjects or issues involved between the parties to the mediation.

7. Period of mediation 3 months plus extention upto 2 months: Five months: This period even excluded from limitation period.

8. To restrain false and bogus litigation.

9. To lessen the burden of courts from annoying suits and arguments and to increase the productivity of the courts in respect of genuine creative and productive works.

    (B) Curse

1. The issue involved in this judgement is with regard to order 37 of CPC.

2. In section 2(i)(c) i.e. definition of the commercial dispute, there are 22 matters apart from money disputes i.e. order 37 of CPC summary suit. For example, disputes related to IPR, in the case of IPR, urgent relief is must otherwise the whole suit becomes infructuous.

3. This judgement of Hon’ble SC becomes land of law U/A 141 of constitution of India, and it is binding to all courts of India under such circumstances, whether District Courts where the IPR suit can be filed i.e.(original jurisdiction for filing suits related to IPR) can be considered that there is urgent relief in IPR case, hence this judgement is not applicable.

4. Issue involved in this judgement is related to O.37 of CPC and is not related to the issue of IPR.

5. Can this judgement become a boon for the commercial courts to issue urgent notice to the other side and to avoid ex parte injunction in the cases of IPR? However in my opinion it can not be as Section 12A excludes urgent relief or it is not applicable to urgent relief. It is pertinent to note that there is no specific definition of “URGENT RELIEF” and it can’t be, hence it may vary case to case basis.

6. Having read section 12A of the commercial courts Act, it is clear that a suit which contemplates any urgent interim relief under this Act(Commercial Courts Act), this provision is not applicable, however the term urgent interim relief under this act means an urgent interim 

relief under the commercials courts act. In that case urgent interim relief by way of order 39 R. 1 & 2 of CPC can be considered as under relief under commercial courts act, 2015? Answering this question, I rely on section 2 of the commercials Courts Act, which says that, “The words and expression used and not defined in this Act, but defined in the code of Civil Procedure, 1908(5 of 1908) and the Indian Evidence Act, 1872(1 of 1872) shall have the same meanings respectively assigned to them in that code and the Act.”

Considering the above mentioned discussion, it can be said that the judgement passed by Hon’ble SC will be a boon in the coming days and it can not be a curse, if it is interpreted in its real sense and just and proper manner.

Author

Chirag Bhatt

Advocate.

Cbhattlawoffice

Gujarat

Principle laid down 52 years back is reiterated by SC:

  In the case of Renaissance Hotel Holdings Inc versus B.Vijaya Sai  and others on 19th January 2022 Hon’ble Supreme Court  has reiterated the principle let down by it 52 years back in the case of Ruston & Hornsby Limited vs Zamindara Engineering Co.  and Hornsbury limited reported in AIR 1970 SC 1649 para no.7 wherein Hon’ble Supreme Court held that , “where the defendant’s trade mark is identical with plaintiff’s trademark, the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion.” The said principle has been reiterated by  Supreme Court in the present case in para nos.47 and 54 of the judgement.  Along with the above mentioned issue of law, there are several other issues have been dealt with by Supreme Court in the present case of renaissance hotel. The issues are as under:  1 ) Applicability of section 29 (3) of the trademarks act 1999 is observed in paragraph nos. 48,51 and 71 of the judgement. Section section 29(3) says that when the identical mark is used for identical goods or services in the course of trade, the Court shall presume that there is likelihood of confusion on the part of the public at large. 2) Applicability of section 29 (4) of the trademarks act 1999:  Hon’ble Supreme Court has also observed the issue pertaining to applicability section 29 (4)  of the trademarks act 1999 in para number 50, 52, and 71 of the judgement. Section  29 (4) of the trademarks act 1999 says that there is an infringement if other person who is not either registered proprietor or permitted user is using the identical end or deceptively similar trademark for the goods or services which is different than that of the goods/services for which the trademark is  registered. 3) Applicability of section 29 (5) of the trademarks act 1999:The issue in respect of section 29 (5) of the Act is also dealt with in paragraph nos. 55 and 71 of the judgement. Section 29(5) is in respect of trade name or the corporate name. If anybody is using the registered trademark as a trade name or as a corporate name without any permission or consent from the registered  proprietor of the trademark, there is an infringement. 4) Applicability of section 29 (9) of the trademarks act 1999: The issue related to phonetical similarity is also dealt with in para nos.56  & 71. The issue  pertaining to phonetic similarity is provided in section 29(9) which says that when the mark is used in the course of trade and the said mark is phonetically similar  to the registered trademark, there is an infringement. 5) Applicability of section 30 (1) of the Trademarks Act 1999:  The issue related to honest practises in industrial or commercial matters in para no.59 of the judgement.  In that paragraph, SC observed that under which circumstances, the defence of section 30 (1) is available and applicable. SC observed that the benefit of S. 30(1) of the Trademarks Act is only available if the two conditions are fulfilled together. The conditions are (1) the use of the impugned trademark is in accordance with the honest practices in industrial and commercial matters and (2) that such a use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trademark as the word ‘and’ is used between clause (a) &(b) of Section 30(1) of the Act. If either of these two conditions is taken as a defence, such defence under S.30(1) can not be  considered by the court.  6) The principle of interpretation of statute and provisions therein is also discussed in paragraph no. 60 by relying upon one judgement of Supreme Court in the case of Reserve Bank of India versus peerless general finance and investment company limited and others reported in 1987 1 SCC 424 para no.33. 7) Principle laid down in Midas case: Supreme Court in the case Midas Hygine Industries private limited versus Sudhir Bhatia. The principle laid down by  Supreme Court in paragraph no.5 of the said judgement was that , “it is well settled law that in the case either of trademark or of copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction the grant of injunction. The grant of injunction also becomes necessary if it prima facie appears that they adoption of the mark was itself dishonest.” The said ratio laid down by Supreme Court in that case  is retreated in para nos. 64 and 65 in the present case of renaissance hotel where  in para no. 65, Supreme Court further  observed that the ratio laid down in Midas case can not be used as a ratio for the proposition that, if the plaintiff fails to prove that defendant’s use was dishonest, an injunction cannot be granted. 8) Ratio laid down in Khoday Distilleries is not applicable: Another issue was also dealt with by Supreme Court in respect of the ratio laid down by Supreme Court in the case of Khoday Distilleries.  In paragraph no.66 of the present case ,it is held that the ratio laid down in Khoday case   is not applicable for infringement of a trademark. The Khoday case was in respect of rectification of a trademark and was  not for infringement action.  To conclude it can be said that by way of this judgement of renaissance hotel holdings Inc Honb’le Supreme Court has observed and clarified several issues of law in respect of trademarks act. 

 Author Chirag Bhatt 

IP Advocate 

9824025041 

Email: bhatt7@yahoo.com  

When injunction should be granted in trade mark infringement and passing off cases:

Granting an injunction (including ex-parte) is a discretionary power of the court.

Section 135(2) of The Trade Mark Act, 1999 says that order of injunction may include ex-parte injunction. Now, if Section 135(2) is read with section 29(3) of The Trade Mark Act, 1999.

Section 29(3) says that the court shall pressure that it is likely to cause confusion on the part of the public provided that the case falls under section 29(2)(c). So, we need to read section 29(2)(c) which says that a registered trade mark is infringed by a person who used in the course of trade, a mark which is identical with the registered trade mark for identical goods. It is clear that when the identical mark is used for identical goods in the course of trade, section 29(3) is invoked. 

Reading of both Section 135(2) and Section 29(3) of the Act increases the chances of obtaining the EX- parte injunction as there is command of legislature for courts to presume that there is likelihood of confusion on the part of the public when the identical mark is used in the course of trade for identical goods by an infringer or by a defendant. 

I would like to refer the landmark judgments of Hon’ble Supreme Court in respect of ‘identical marks’. What Hon’ble Supreme Court held when the mark of the defendant is identical to that of the plaintiff in the case of infringement and passing off action is as under. 

1. Kaviraj Pandit Durga Dutta Sharma v. Navaratna Pharmaceutical Laboratories reported in AIR 1965 980 where the two marks are identical, no further questions arise, for then infringement is made out (Para No.20). In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated.  (Para No.21).

2. In the case of Parle Products (P) Ltd. v. J. P. & Co., Mysore reported in AIR 1972 SC 1359, In paragraph no.8, Hon’ble Supreme Court reiterated principle laid down in paragraph no.21 in case of Kaviraj Pandit Durga Dutta Sharma v. Navaratna Pharmaceutical Laboratories reported in AIR 1965 980.

3. ) Ruston & Hornsby Ltd. v. Zamindara Engineering Co. reported in AIR 1970 SC 1649 – Para No.7.   In an action for infringement where the defendant’s trade mark is identical with the plaintiff’s mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion.

4. Supreme Court in the case of Laxmikant Patel v. Chetanbhai Shah – It is a case of passing off action. Para No.14 – wherein Supreme Court held that “once a case of passing off is made out, the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary.”

To conclude it can be said that, considering the ratio laid down by Hon’ble Supreme Court in the above mentioned cases, and in accordance with the facts of the case, injunction including ex-parte injunction should be granted if it is a just, proper and fit case to grant injunction. 

Chirag Bhatt 

 IP Advocate 

9824025041

 

 

              

Whether an absconder is entitled for anticipatory or regular bail?

  I am told to write an article or to make a blog on the topic, titling, “whether an absconder is entitled for anticipatory or regular bail? “Hence, this article / blog. 

 So first of all, it is required to know that who can be considered as absconder or what is the definition of absconder?  

There is no specific definition given or defined in Cr. PC in respect of the term “absconder”.   

Section 82 of Cr. P C says about the proclamation for the person absconding and section 299 says about record of evidence in absence of accused.  

 As per dictionary meaning –  (a) Abscond means to go away suddenly and secretly in order to escape from somewhere (dictionary – Cambridge.org).  (b) According to merrian-webster.com observed means to deport secretly and hide oneself.  

1) Proclaimed Offender:  

As per section 82(4) of Cr. P.C. if a case falls under the sections of IPC mentioned in section 82(4), the court may declare an accused as a proclaimed offender and not otherwise.  Thus, when a criminal case does not invoke the sections mentioned in section 82(4) of Cr. P.C., the accused of that case cannot be considered as a proclaimed offender.  The judgment in this regard is –   Arunkumar Parihar v/s State (Govt. NCTD) High Court of Delhi Cri. M.C. No.863/2021 date of decision 26/03/2021 para no.2 .   

2) Proclaimed offender is not entitled for anticipatory bail   

The following judgments say that the proclaimed offender is not entitled for anticipatory bail.

• Hon’ble Supreme Court in the case of Lavesh v/s State (nct of Delhi) 2012 (8) SCC 730 in para No.10 has held that “an absconder or the proclaimed offender is not entitled for anticipatory bail and observed that from these materials and information, it is clear that the present appellant was not available for interrogation and investigation and declare as absconder.  Normally, when the accused is absconding and declared as a proclaimed offender, there is no question of granting anticipatory bail.  We reiterate that when a person against whom a warrant has been issued and is absconding or concealing himself in order to avoid execution of warrant and declared as a proclaimed offender in terms of section 82 of The Code is not entitled the relief of anticipatory bail.”  •

 In the case of State of Madhya Pradesh v/s Pradeep Sharma, AIR 2014 SC 171, Hon’ble Supreme Court reiterated the principle laid down in Lavesh case and held that “if any one is declared as an absconder / proclaimed offender in terms of Section 82 of The Code, he is not entitled for anticipatory bail.  The High Court failed to appreciate that it is a settled position of law that where the accused has been declared as an absconder and has not co-operated with the investigation, he should not be granted anticipatory bail.  •

 Jagtar Singh v/s Satendra Kaur @Bhavana Grover 2002 (Cr. L R (SC) 807 para No.2. “…………Normally, when the accused are absconding, there is no question of granting anticipatory or regular bail.”  •

 Relying upon the above mentioned judgments Chattisgarh High Court in the case of Rakesh Khare v/s. State of Chattisgarh rejected the anticipatory bail. • 

The following are the judgments on the same line.

Jayesh G. Ramani v/s State of Gujarat reported at 2004 (3) GLH 270. • 

Dharmapriyadasji (Bapu Swamy) v/s Ajendraprasad Cri. Misc. Application (for cancellation of bail) No.2210 of 2014 Gujarat High Court – para Nos. 6, 7, 11 & 12. • 

 Arun Ghisalal Varma v/s Stateof Gujarat Cri.Misc. Application No.10757 of 2011. • Dilipsingh Bachubha Rana v/s State of Gujarat – Cri. Misc. Application No.18050 of 2012.  

3) Proclaimed offender is entitled for anticipatory bail  

In the case of Mahender Kumar vs. State of Himachal Pradesh, Cr.MP(M) No. 1682 of 2020, decided on 26th October,2020, para-11, reported in 2020 SCC OnLine HP 2119. Hon’ble Himachal Pradesh granted anticipatory bail to absconder by giving reasons and interpreting the judgment of Hon’ble Supreme Court in Lavesh case. I quote the few sentences of para no. 11 here. Para 11.” Section 82 of Cr.P.C. neither creates any riders nor imposes any restrictions in the filing of anticipatory bails by proclaimed offenders. Even in Lavesh’ case, while laying down the on anticipatory bails to absconders, Hon’ble SC structured the pronouncement by the words,” Normally”, ………..(fact of the case is discussed) The case maxim Domus sua curque est tutissimum refugium, aptly describes the plight of the accused which means every man’s house is his safest refuge. Thus, the circumstances cannot be termed as normal for the accused and he makes out a special case for bail. A balance approach would work as an incentive, a catalyst for proclaimed offenders to surrender to the Court of law, speeding up, the process and bringing the guilty to Justice and Justice to the guilty.” 

Chirag Bhatt 

Advocate 

9824025041

Applicability of S.29(4) of the Trademarks Act, 1999

Section 29(4) of the Trademarks Act,1999 (in short the Act) is nectar for the plaintiff in the suit for infringement of a trademark.  The beauty of the provision of S.29(4) is enchanting to the logic and reason. It is an essay in the form of poetry of a few lines. Let me discuss it in details with regard to the applicability of this provision. 

To enjoy the anatomical beauty of the provision of Section 29 (4) of the Act, it is requisite to discuss the provision of Section 28 in nutshell. S. 28 throbs the rights of the registered proprietor by way of  valid registration of a trade mark. The registration of a trademark gives exclusive right to use of that trademark in relation to the goods or services for which the trademark is registered and to obtain relief in case if such trademark is infringed. 

Plain reading of section 28(1) establishes that (1) the registration of a trademark must be valid (2) it gives exclusive rights to the registered proprietor to use the Trademark (3) for goods or services in respect of which it is registered (4) for obtaining relief of infringement as provided in the Act.

It means that if a trademark is not registered for a particular goods or services, there is no infringement in that case as per provision of Section 28 (1) and plaintiff is not entitled to claim relief of infringement unless it is registered for the goods or services and no exclusive right to use of that trademark is claimed.

Section 28 (3) says when there are two registered proprietors of Trademarks, neither of them takes action for infringement of his trademark against each other, however, they can take action against the third party who is not registered proprietor or registered user of the trademark in dispute. 

Section 29 beautifies the action in case of infringement of registered trademarks. It informs that understand which circumstances,  an infringement of  registered trademark can be considered. 

Now coming back to the subject matter of this blog i.e. section 29 (4)(b) of the Act, the moonlight of  this provision is that a registered trademark is infringed if a mark which is used to goods or services which are not similar to those for which the trade mark is registered.

 That means, is  Section 29(4)  contrary to section 28 and rest of the provisions of section 29 of the Act ? The answer is No. It is not contrary to them but Legislature may think that registered proprietor of a trademark ought to be protected even if a mark is used for dissimilar goods or services to those for which the trademark is registered. This is the beauty of the provision of Section 29 of the Act, however, this walk path has certain limitations or condition precedents.

Let me discuss those condition precedents for applicability of section 29 (4) of the Act

1) the trade mark of the plaintiff must be registered. 

2) the trademark of defendant is identical and/or deceptively similar to the registered trademark of the plaintiff.

3) the goods or services of the defendant must be dissimilar to that of plaintiff who is a registered proprietor.

4) the important condition is that the registered trademark of the plaintiff has a reputation in India. 

5) the use of mark, by the defendant without due cause, takes unfair advantage of the registered trademark of the plaintiff.

6) the use of a mark of defendant is detrimental to the distinctive character or repute of the registered trademark.

It is pertinent to note that all the above mentioned criterias have to be satisfied together and not individually by the plaintiff to restrain the use of a mark by the defendant for dissimilar goods or services. Unless these conditions are satisfied by the plaintiff in his case, section 29 (4) is not applicable.

Section 29 (4) & Section 28 (3) of the Act:

If the trademark of the defendant is registered, then can section 29(4) is applicable ? 

The answer is NO. 

Reasons: 

1) one registered proprietor can not file a suit for infringement against another registered proprietor as per Section 28 (3) of the Act.

2) the plaintiff must be registered proprietor of the trade in dispute for applying section 29 (4).

3) the defendant must not be registered proprietor of a mark.

4) if plaintiff is not registered proprietor in and defendant is registered proprietor of a trademark for the goods or services used or provided by the defendant, section 29 (4) is not remotely applicable. 

(5) if plaintiff has failed to prove his USE of the trademark for the goods or services in respect of which the defendant is using the trade mark as a registered proprietor, section 29 (4) is not at all applicable. 

The main object is Trademarks Act is to protect the use of the Trademarks  of a proprietor and the public interest at large. When there is no use of  a mark in trade,  there is no protection. Mere registration of a trademark does not protect the registered proprietor at all. 

Chirag Bhatt

Partner

Y.J.Trivedi & Co.

9824025041

IN THE INTEREST OF JUSTICE

This article is based on hard practical realities being prevailed in the courts of Justice in the interest of Justice. The age of case is longer than that of period of generation in our country due to the ' in the interest of Justice ' system.

Unfortunately there is no provision in the Law to restrain or curtail the custom of adjournment ' in the interest of Justice'. In civil litigation, Litigation is given as a gift to the second or third generation in heritage due to the system.

Whether the interest of Justice is really fulfilled by the term ' in the interest of Justice'  or whose interest is satisfied  for obtaining Justice after the span of two decades or longer than that period. Sometimes the case is older than the period of practice of advocate who handles it and the same scenario is with bench as well. As a lawyer I have observed the pitiable plight of the litigants who come to the Courts with the hope that Justice will be given to them but at the end of the day, month, year or years, they obtain a 'date ' in the interest of Justice but not Justice. The litigants are already sufferer before knocking down the doors of the Court, they become more sufferer after entering into the court. They are mentally, physically, socially and financially ruined in the interest of Justice.

The litigants, sometimes, compel themselves to settle their cases, though their cases are genuine, they think that though their cases are genuine, though they are right, cases are unnecessarily dragged or prolonged more and more years, it is better to settle the cases with the other side, how much he is at the fault is irrespective. Kasab case, expenses behind that case is the best example of" in the  interest of Justice" .

Sometimes, an unborn child is gifted litigation when it is in the womb of its mother, before it comes to this beautiful world. In such a case who is responsible ? the society, people, system, custom of ' in the interest of Justice'. 
The system or custom-  in the interest of Justice , is the mother of Lok Adalat, Arbitration, conciliation and such other settlement mode in the law. If the Justice is made within stipulated time, no such mode of settlement is required.
The accused in criminal case and the defendant in civil case enjoy this system and the genuine complainant or the plaintiff is crushed with no fault of him. For the complainant or plaintiff as the case may be, court is a temple, Justice is 'Aaradhya Dev', but the irony is that that God ( Aaradhya Dev) is always pleased with the accused or defendant by giving 'prasad' i.e. adjournment. In the name of Justice the poor devotee i.e. complainant or the plaintiff is reciting all types of prayers to please that God who is known as Justice but in vein. When the Justice is not pleased within time, his prayer becomes futile and after his death, his legal heirs have to stand in a queue for the same Justice. The question arises in my mind is that whether it is the fruit of karma of that person who had been standing in a queue for justice for two to three decades or it it the fruit of ' in the interest of Justice'.
A society has three main poles. (1) education (2) medical and (3) judicial system. When either of these three poles become cripple, the social balance of the society will not be at its axis and it will be trembling and thereafter tumbling. We have watched and heard from Hindi movies, that Goddess of Justice has tied a black ribbon before her eyes so that nothing wrong can be done and she is not influenced by anyone, however, she is listening the cries of litigants or she is deaf is a question of fact or she may be listening only one voice i.e. voice of adjournment.  in the interest of justice as if a toy,having key which starts playing or reciting something until its capacity, and recites the jingle Bell jingle bell i.e. adjournment .... adjournment...in the name and interest of Justice... adjournment... This Goddess of Justice does not listen the cries of litigants, the voices, pain and agony of the litigants or she listens them provided that they have genuine evidence for their cries, pain and agony.  The generation is changed till the time when the stage of evidence comes in the cases. The poor next generation,due to the lack of complete knowledge of the case, becomes cripple in the court of Justice and most of the time lose the case. In this situation, the advocate of the defendant feels pride and says his client, " see, I have defeated them and won the case". - but after the span of twenty years or more than that, and of course, that victory is not due to the hard work of that lawyer but misfortune of the plaintiff or it is due to the lack of personal knowledge of the next generation which has been gifted litigation in heritage.

Sometimes the advocate passes away, though he is advocate,  he is mortal. The newly appointed advocate knows nothing about the case in detail. It may be due to short time or due to the lack of knowledge of next generation , so again the custom of adjournment is commenced and continued in that case. Is the element of interest of justice not vapoured  or justice not faded away from the case  after certain long period due to ' in the interest of Justice system?
If the case is completed and is kept for order or judgment, the Judge who is competent to adjudicate the case, has not given verdict for few months or sometimes for a year and the dilemma of system is that one fine morning, the litigants come to know that judge is transferred to another place. Again in the interest of Justice , rehearing of the entire case has to be made before new judge and the case is pending in the department until the appointment of new judge.  The cases are in the storage of department of courts for years and years thereafter  one fine morning the case is allotted/ cases are allotted to new judge who tries to be strict saying that, " why the matter is pending since long, I would dismiss it unless it is processed". At that time it seems that  that judge is alien with the system being prevailed in the courts.

Who is responsible for such situation.?.- bar, bench, litigants, police, administrative staff of courts or either of them or all of them or none of them or WE,the people of India ?  The preamble of constitution of India begins with " WE the PEOPLE OF INDIA".
To conclude it can be said that the true reasons for non proceedings of  the case are many but the important reason is that the case is put up in the court of Justice to obtain the justice but 'in the interest of Justice' , justice and interest both ought not to be  vanished from the court of Justice as Court of Justice is considered as temple of justice. People have much faith in judiciary.  As an advocate and officer of the court, it is my moral and professional duty to honour the judiciary first and to maintain the decorum of judiciary system first and that's why it's my humble request to all the legal fraternities NOT to take and not to grant unnecessary adjournment 'in the interest of Justice' otherwise the purpose of the term 'in the interest of Justice' becomes infructuous as the 'Bar & Bench'  is the throbbing heart of our Nation.

Note: The purpose of writing this article is NOT to speak anything wrong or to hurt any person of Bar and Bench directly or indirectly. 

Chirag Bhatt
Advocate
9824025041

Whether a decree is followed by decision taken by Charity Commissioner U/S. 50-A of The Gujarat Public Trust Act ,1950 ?

One fine morning, my very good friend Advocate Pratik Chaudhari discussed with me various provisions of The Gujarat Public Trust Act, 1950 ( herein after referred  as the Act). One interesting point  discussed between us was related to the provisions of section 50-A read with section 72 of the Act. That discussion became the source of inspiration to write this article. Let me discuss it in detail.

The interesting point was that decision taken by the Charity Commissioner under Section 50-A of the Act required a Decree to be drawn. To  elaborate this issue, it is obvious to discuss about the provisions of Section 50, 50-A and 72 of the Act and the definition of Decree provided under section 2(2) of Code of Civil Procedure (in short CPC).

Section 50 embodies suit relating to the public Trusts which says that suit is instituted for the various reliefs mentioned in that section. Such as  order of recovery of the possession of suit property, removal  or appointment of any trustee or manager, vesting any property in a trustee, a direction for taking account or making certain inquiries, declaration as to what proportion of the Trust property or of the interest therein shall be allocated to any particular object of the Trust, a direction authorising the whole or any part of the Trust property to be let, sold, mortgaged or exchanged, the settlement or alterations in a scheme already settled or granting such other relief as the nature of the case may require.

As per the second proviso of Section 50 of the Act, the Charity Commissioner has two options. (1) he may institute a suit or (2) he may make an application to the Court for a variation or alteration in a scheme already settled.

Perusal of Section 50-A of the Act, it transpires that Charity Commissioner has power to frame a scheme for the management or administration of public Trust. Section 50-A is used for the subjects mentioned in sub section 2(A) of Section 50-A such as the number of the trustees, the mode of appointment of trustees which includes appointment of first trustees, vesting the trust property in the trustees so appointed, mode of filing  vacancy of a trustee, the remuneration of a trustee or manager of the Public Trust or a clarification of the objects of the Public Trust.

Section 50-A (4) of the Act is very much important to answer the question mentioned in the title of this Article. 

Section 50-A (4) says that the scheme framed under sub section (1) or (2) or modified u/s (3) shall have effect as a scheme settled or altered, as the case may be, under a decree of a court under section 50 , subject to the decision of the competent court under section 72.

Now the definition of Decree provided in Section 2(2) of CPC speaks about formal expression an adjudication of a Court which conclusively determines the right of the parties with regards to all or any of the matters in controversy in the suit.  It is clear by this definition that Decree is drawn after completion of the suit and not an application.

Section 72  of the Act says to file an application is required to be filed within sixty days before a court to set aside  the decision taken by the  Charity Commissioner and not the suit as mentioned in the definition of Decree.

Considering the above mentioned legal scenerio, my answer of the issue whether a Decree is followed by the  decision of Charity Commissioner under section 50 -A of the Act  is as under:

Section 50 -A (4)  is in connection with section 50  and section 72 of the Act, however, section 72 is only in connection with section 50-A and not with s.50.
Section 72 is applied in respect of the decision taken by Charity Commissioner under Section 50-A and Section 50-A is read with Section 50 for the purpose of a Decree with regards to get the scheme effected. Section 72 says that an aggrieved person may file an application to the Court to set aside the decision taken by Charity Commissioner u/s. 50-A. The scheme framed by Charity Commissioner shall be effective only under a decree of a Court u/s.50 of the Act.
Section 72(4) plays an important role as it says that an appeal shall lie to the High Court against the decision of the Court under sub section (2) as if such decision was a decree from which an appeal ordinary lies. Now the question is why the word 'as if' is mentioned in section 72 (4) by the Legislature or what should be the intention of them to place the word 'as if' in that section. The reasons are as under.
1) S. 50-A does not speak about suit proceedings.
2) It does not speak about Court proceedings.
3) It speaks about power of Charity Commissioner qua framing the schemes.
4) Section 50-A (4) says that a scheme framed  or modified under S.50 (1),(2) and (3) respectively shall have effect as a scheme under a Decree of a court u/s. 50.
5) S.72 says about application and not for suit. 
Hence the term 'as if' is mentioned by the Legislature.

To conclude , I am of the  considered opinion that  a decision of framing the scheme taken by Charity Commissioner is followed by a Decree in accordance with the  reading of Section 50-A (4) with Section 50 and Section 72.  Further, as per Section 76 of the Act, the provisions of Code of Civil Procedure shall apply to all proceedings before the Court under the Trust Act and appeal is against the decision of the Court under section 72(2), however,  the legal  dilemma is that if the decree is not executed for a certain period of time, what would be the legal and factual situation is a question and the purpose of section 50-A becomes vitiated.

Chirag Bhatt
Advocate
9824025041

ADVERSE POSSESSION

Involving in a case of adverse possession inspires me to write this article.

Latin maxim 'Nullum tempus occurrit regi ( no time runs against the King) is the root of the doctrine of adverse possession.  Adverse possession means a possession of an immovable property without having title of such property. A person, not having legal title of ownership of an immovable property can claim for immovable property.

1) Historical Background:

It is interesting to know the fact from where the Doctrine of Adverse Possession is begun to apply. For this purpose, let our vision be taken to the historical events. For this, I rely upon the certain paragraphs of the judgements of Hon'ble Supreme Court in a case of State of Haryana vs. Mukeshkumar and others, in petition for Special Leave to Appeal (Civil) no. 28034 of 2011 wherein Hon'ble Supreme Court has enlightened the historical back ground of doctrine of adverse possession. I would like to quote the relevant paragraphs of it.

paragraph no. 30:  '' The concept of adverse possession was born in England around 1275 and was initially created to allow a person to claim right of "seisin" from his ancestry. Many felt that the original law that relied on "seisin" was difficult to establish, and around 1623 a statue of limitations was put into place that allowed for a person in possession of property for twenty years or more to acquire title to that property. This early English doctrine was designed to prevent legal disputes over property rights that were time consuming and costly. The doctrine was also created to prevent the waste of land by forcing owners to monitor their property or suffer the consequence of losing title"
seisin means possession, more particularly of a land.

paragraph no. 31: "  The concept of adverse possession was subsequently adopted in the United States. The doctrine was especially important in early American periods to cure the growing number of title disputes. The American version mirrored the English law, which is illustrated by most States adopting a twenty-year statue of limitations for adverse possession claims. As America has developed to the present date, property rights have become increasingly more important and land has become limited. As a result, the time period to acquire land by adverse possession has been reduced in some States to as little as five years, while in others, it has remained as long as forty years. The United States has also changed the traditional doctrine by preventing the use of adverse possession against property held by a governmental entity."

paragraph no. 32: "During the colonial period, prior to the enactment of the Bill of Rights, property was frequently taken by states from private land owners without compensation. Initially, undeveloped tracts of land were the most common type of property acquired by the government, as they were sought for the installation of public road. Under the colonial system it was thought that benefits from the road would, in a newly opened country, always exceed the value of unimproved land."

2) Example of Adverse possession:

'A', having title of an immovable property, is an owner of that property. Accepting the fact that 'A' is the owner of the property, 'B' has possessed that property of 'A' long, openly, peacefully, continuously and uninterruptedly for the period of at least more than 12 years  and this fact is well within the knowledge of 'A' but 'A' has not taken any action for getting the possession back from 'B'. 'B' is entitled to claim for this property on the basis of the doctrine of adverse possession.

3) Ingredients of Adverse Possession:

It is very essential to know what are the ingredients of adverse possession. How one can justify that it is the case of adverse possession or on what grounds the adverse possession are justified or which ingredients are proved for establishing the case of  adverse possession.  The following ingredients of adverse possession are required to be satisfied by a person who institutes a suit for adverse possession.
a) The possession of the suit property  with the plaintiff must be established.
b) Animus possidendi ( intention to possess) adverse to the knowledge of the real owner.
c) possession is adverse or hostile to that of the true owner.
d) wrongful dispossession of rightful owner
e) plaintiff has to establish by evidence that permissive possession over the property becomes adverse to the interest of the real owner.
f) plaintiff has to establish perfect title of a suit property by way of adverse possession.
g) nec vi, nec clam, nec precario means an adverse possession is proved only when possession is peaceful, open, continuous and hostile.

The essentials of adverse possession were succinctly summed-up by Hon'ble Supreme Court in Karnataka Board of Wakf v. Govt. of India (2004) 10 SCC 779  as  “In the eye of the law, an owner would be deemed to be in possession of a property so long as there is no intrusion. Non-use of the property by the owner even for a long time won't affect his title. But the position will be altered when another person takes possession of the property and asserts a right over it. Adverse possession is a hostile possession by clearly asserting hostile title in denial of the title of the true owner. It is a well-settled principle that a party claiming adverse possession must prove that his possession is "nec vi, nec clam, nec precario", that is, peaceful, open and continuous. The possession must be adequate in continuity, in publicity and in extent to show that their possession is adverse to the true owner. It must start with a wrongful disposition of the rightful owner and be actual, visible, exclusive, hostile and continued over the statutory period. (See S.M. Karim v. Bibi Sakina (AIR 1964 SC 1254), Parsinni v. Sukhi (1993) 4 SCC 375 and D.N. Venkatarayappa v. State of Karnataka (1997) 7 SCC 567). Physical fact of exclusive possession and the animus possidendi to hold as owner in exclusion to the actual owner are the most important factors that are to be accounted in cases of   (2004) 10 SCC 779 Civil Appeal No. 2238 of 2016 Page 19 of 25 Page 20 nature. Plea of adverse possession is not a pure question of law but a blended one of fact and law. Therefore, a person who claims adverse possession should show: (a) on what date he came into possession, (b) what was the nature of his possession, (c) whether the factum of possession was known to the other party, (d) how long his possession has continued, and (e) his possession was open and undisturbed. A person pleading adverse possession has no equities in his favour. Since he is trying to defeat the rights of the true owner, it is for him to clearly plead and establish all facts necessary to establish his adverse possession. [Mahesh Chand Sharma(Dr.) v. Raj Kumari Sharma (1996) 8 SCC128)."

4) Mere possession of property is not amount to adverse possession:

In a case between Ram Nagina Rai & Anr. Vs. Deo Kumar Rai(Deceased) by Lrs. (civil appeal no. 7266 of 2013 ), Hon'ble Supreme Court in paragraph no. 15 of the judgement held, " there is no absolute requirement to deem the mere possession of the suit property by the defendants to amount to adverse possession over the suit property. This would be in clear violation of the basic rights of the actual owner of the property. There is nothing on record to show that the defendants' permissive possession over the property became adverse to the interest of the real owner, at any point of time...."

5) Plaintiff has to admit the ownership of the true owner:

As per the judgement of Hon'ble Supreme Court in a case between Dagadabai (Dead) by L.Rs. vs. Abbas@ Gulab Rustum (Civil Appeal No. 83 of 2008) , it was held in paragraph no. 21, "it is a settled principle of law of adverse possession that the person, who claims title over the property on the strength of adverse possession and thereby wants the Court to divert the true ownership rights over such property, is required to prove his case only against the true owner of the property. It is equally well-settled that such person must necessarily first admit that ownership of the true owner and the true owner has to be made a party to the suit to enable the Court to decide the plea of averse possession between the two rival claimants."

 6) When Owner's right to property is extinguished:

If the owner of the property is not vigilant for his legal rights. Law does not protect to those who sleep  over their rights for  many years. Law helps only to those who are vigilant for their rights. Section 27 of the Limitation Act is the negative safeguard for the protection of rights of an owner of the property. It indicates the red light to the owner of the property to control the rights of the person (except owner of the property) who is in possession of such property.
Section 27 of the Limitation Act,1963

Generally remedy is closed due to the bar of limitation and nor rights, however, section 27 of limitation Act extinguishes the right of property as this section is exception to the general rule.

Section 27 restrains the owner of the property to vacant the possession from the person who has been possessed such property peacefully, uninterruptedly and extensively for a period of more than 12 years. This section ends the title of the property of a person who does not care of his ownership rights qua the property. 

Para 57 of the latest judgement of Hon'ble Supreme Court in a case of Eureka Builders vs. Gulabchand reported in (2018)4 SCC (Civ)9 says that "Section 27 of the Limitation |Act deals with extinguishment of right to property. It says that the determination of the period prescribed in the Act for any person to institute a suit for possession of any property, his right to such property shall be extinguished. Articles 64 & 65 of the Schedule provide 12 years' period for filing a suit to claim possession of any immovable property. The period of 12 years prescribed in these two articles is required to be counted from ''the date of dispossession" (Article 64) and "When the possession of the defendant becomes adverse to the plaintiff" (Article 65)."

7) Time from which period begins to run  for adverse possession:

As per Article 65 of the Limitation Act, the time commences for adverse possession is from the day when the possession of the defendant becomes adverse to the plaintiff. The period of limitation is of Twelve years. In the case of Hanamgowda vs. Irgowda  reported in [AIR 1925 Bom. 9], it has been held that in cases of adverse possession, the starting point of limitation does not commence from the date when the right of ownership arises to the plaintiff but it commences from the date when the defendants' possession became adverse. (Vasantiben Prahladji Nayak v. Somnath
Muljibhai Nayak (2004) 3 SCC 376). paragarph no. 77).

8) No adverse possession among the members of one family:

It is well settled principle that there can not be any adverse possession among the members of one family. A case between Nanjegowda alias Gowda(Dead) by Legal Representatives and another vs. Ramegowda reported in (2018) 1 SCC 574/ (2018) 1 SCC (Civ)417, wherein, the defendants(appellants) and the plaintiff (respondent) are the members of one family. They are first cousins from their father's side. The dispute is in respect of ancestral properties including land owned by the family. The Suit was filed by the plaintiff inter alia seeking relief for declaring the plaintiff as an owner of the suit land and for permanent injunction restraining the defendants(appellants) from interfering in his possession over the suit land on the basis of oral partition. The defendants(appellants) took a plea of adverse possession over the suit land and claimed that they became owner of the suit land by way of adverse possession due to their long, peaceful and continuous possession. The defendants admitted that the family relationship with the plaintiff along with the plea of the plaintiff regarding oral partition. It was held in paragraph no. 19 the judgement that ........"the plea of adverse possession was wholly misconceived and untenable. It is settled law that there can be no adverse possession among the members of one family for want of any animus among therm over the land belonging to their family." 




Chirag Bhatt
Advocate
9824025041