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