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14 July 2015
This article will highlight some practical do’s and do-not’s in a typical trademark litigation in India. The focus will be on peculiar points only and not on standard information and therefore, by no means, is this a comprehensive listing of things to do or avoid doing. The irst installment, which covered afidavits, witnesses and local commission proceedings, appeared in the April 2015 issue of Asia IP.
Documents
One of the most important precautions to take at a trial is to produce original documents for proper exhibit marking. If the document is an admitted one, it is normally numbered as Exhibit P1, P2, P3, etc. or if it pertains to the defendant’s documents, it is Exhibit D1, D2, D3, etc. If it is a document proved by a witness by iling the original, then it is given a marking like Exh. PW1/1 or PW1/2, the irst numeral suggesting the plaintiff’s irst witness.
It is not essential to ile original documents, but they may be produced at the time of the trial and can be shown and taken back. If this is done, then the copy on the court record will be marked as “original seen and returned.”
If the document pertains to something in a government ofice like the Registrar of Companies or the Registrar of Trademarks, a certiied copy can be filed.
The probative value of documents in a descending order is as follows: admissions (included admitted documents); responses of the opponents to legal notices; newspapers or other publications that have circulation amongst large sections of public; court orders or orders of Tribunals like IPAB, Patent Office, Trademarks Registry, etc.; certiied records of the Registrar of Companies (RoC) or the Trademark Office or the Patent Office; assessment orders of sales tax or excise or income tax departments (Section 56 of the Evidence Act); sales invoices and orders placed on the company by third parties, because these involve an external party from whom the facts are veriiable; annual reports of a company, particularly if these have been iled with the RoC (annual reports are particularly helpful to prove the sales turnover of foreign companies which usually cannot provide audited statements of accounts certiied by chartered accountants, as this is not required in their home countries); and internal documents like internal memoranda, point-of-purchase (POP) materials, undated brochures, etc.; are of the least probative value.
Mode of Proof
To prove the turnover of a company, one should ideally ile an audited report. One could include the turnover in the evidence afidavit, but if crossexamination is on a particular turnover entry, it would be essential to rely upon an audited report or an extract from the annual report.
In the past, witnesses would have to carry books of accounts and show entries in the same, but now, no one actually insists on this, nor would a court take the absence of such a proof as of any serious consequence.
Exhibiting a document does not actually prove the document, but only identiies the same; to prove the document, it is important that it should be admissible and that the mode of proof is a proper one. If the originals are not available and secondary evidence has to be led, it is not necessary to move a separate application to the court, but a paragraph in the afidavit evidence explaining the absence of the original and details of who had the last possession of the same and the efforts made to locate the same will help.
If at the time of executing an Anton Piller order the court commissioner had prepared a report, then it is a good idea to exhibit the report as well.
Electronic documents such as those downloaded from the internet can be proved by filing a Section 65B afidavit of the person who downloaded the document verifying to the effect that the machine on which such downloading took place was in working order and the contents have not been tampered with. It is very useful to prove passing off based on internet downloads as originals are often very dificult to obtain in a world where foreign companies scan documents and destroy the originals due to space limitations.
Web archives are a very important source to obtain documents which were once active but are not in active portion of the internet.
Final Arguments and Other Issues
It is a good idea to make a list of points on which you scored well and then summarize the questions and answers on those points. Such an analysis will help prepare the inal arguments in the case. Always use as many assisting techniques as possible such as list of dates, PowerPoint presentations or animations, graphics to show family charts or comparison of infringing marks with the original or pictures demonstrating a mode of display, etc.
Favourable orders are most persuasive for judges. At the end of the day, judges, like each of us, love stories, love pictures, and love colour so always make the case graphic, colourful and vibrant with the right amount of dramatization!
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