India: "Production Of Documents For Additional Evidence Allowed If Shown That The Same Could Not Be Produced Despite Exercise Of Due Diligence"

Last Updated: 24 May 2011
Article by Sonam Lhamu Bhutia

When an Appeal is preferred before the Intellectual Property Appellate Board (IPAB) from a decision of the Registrar of Trade Marks, the law does not allow the Appellant to produce any evidence that was not placed on record before the Registrar while passing the original order. However, in cases where the evidence is crucial for the adjudication of the matter and if it was not possible for the Appellant to produce the same earlier, it becomes difficult for the Board to ignore the same. It is for this reason that the Bombay High Court in Sudhir Bhatia Trading as M/s. V. Bhatia International v. Central Government of India, Through Ministry & Ors, held that additional evidence could be produced even at the appellate stage if the parties were able to establish that they were not in a position to produce the same earlier despite the exercise of due diligence.

Brief facts of the case:

The Petitioner, Sudhir Bhatia and the third Respondent, Midas Hygiene Industries Pvt. Ltd. were involved in a row over the registration of the Trade Mark 'Lakshman Rekha' before the Assistant Registrar of Trade Marks.

When the matter was taken up in appeal before the IPAB, the Petitioner moved a miscellaneous application for filing of various documents. He pleaded that the documents were not in his possession when the appeals were preferred and could only be secured by the provisions of the Right to Information (RTI) Act with great effort. He further said that the documents were necessary and relevant for the proper adjudication of the matter and particularly for showing how the third Respondent, by concealment of material particulars and manipulation of the records, had succeeded in making out a case based on false information before the Registrar of Trade Marks.

On the other hand, Midas Hygiene contended that the documents sought to be produced were irrelevant and despite the same being in the knowledge of the appellant, he had made no mention of the same in his pleadings. Further, the maintainability of the Application for the production of additional evidence was also questioned particularly with reference to Rule 8 of the IPAB (Procedure) Rules, 2003, which deals with the documents that are to accompany the Appeal.

The IPAB observed that as per the Rules of 2003 though there was no express provision for tendering additional evidence at the appellate stage, by virtue of Section 92 of the Trade Marks Act the principles of natural justice were to be adhered to. Thus, for the purpose of discharging its functions under the Act, the Board found it fit to take recourse to Order XLI Rule 27 of the Civil Procedure Code (CPC), which envisages certain circumstances when additional evidence can be adduced and also relied on the case of Mahavir Singh & ors v. Naresh Chandra & anr. [2001 (1) SCC 309] wherein the Honourable Supreme Court expounded the same principles.

The IPAB, taking into account Clause 1 (aa) of Rule 27, declared that the Appellant had not averred that the subject matter was not in his knowledge, but had only stated that the same were not in his possession when he preferred the appeal. Furthermore, he had failed to specify whether he has exercised due diligence in his effort in obtaining copies of those documents from the concerned authorities. The IPAB also pointed out that the appellant had failed to indicate that he had mentioned about the non-availability of the documents and had reserved his right to produce it as and when it came to his possession.

The Board dismissed the Application by highlighting that the Appellant had not complied with Clause 1 (aa) of Rule 27, since he had filed the appeals in the first half of the year 2004 whereas he sought to produce additional evidence in the second half of the year 2005, and this was a clear lack of 'due diligence' on his part.

The Bombay High Court stated that the observations made by the learned Board were erroneous. The contingencies spelt out in Order XLI Rule 27 had to be considered by the Board and as per these provisions it was sufficient for the parties seeking permission to produce the evidence to establish that notwithstanding the exercise of due diligence, such evidence was not within its knowledge or could not, after the exercise of due diligence, be produced at the time when the decree appealed against was passed.

The Appellant had already brought it to the attention of the IPAB that some of the documents sought to be produced were not in his possession and that they could only be secured by resorting to the provisions of the RTI Act, 2005. Since the orders of the Registrar were passed and the appeal was preferred before the RTI Act came to be enacted, the Appellant was in want of an effective tool for securing the documents from the concerned quarters. The Bombay High Court therefore held that the IPAB ought to have allowed the production of public documents on record with the aid of Order XLI Rule 27, CPC. In doing so, the Court made a distinction between the documents that could have and those that could not have been in the Appellant's possession before the coming into effect of the RTI Act. It stated that the production of the latter ought to have been allowed by the IPAB only and thus partly allowed the Petition.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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