Implication of disclaimer "This certificate is not for use in legal proceedings” on Trademark Registration Certificate
Ever looked closely at your Trademark Registration Certificate If not, it’s important that you do now.
The footnote of every trademark registration carries a disclaimer “This certificate is not for use in legal proceedings or for obtaining Registration abroad”. The disclaimer points out the fact that in infringement proceedings one cannot use the certificate as a proof of trademark registration. A Legal Proceeding Certificate (LPC) to be mandatorily submitted to the court. Rule 56(2) of the Trademark Rules, 2017 in this regard states that:
The certificate of registration referred to in sub-rule (I) shall not be used in legal proceedings or for obtaining registration abroad. The certificate issued under section 137 shall be used for these purposes.
The next question people are posed with is when to submit such certificate in a trial, this question was dealt in depth in case of Amrish Agarwal v. M/S Venus Home Appliances Pvt. Ltd., [CM (M) 1059/2018] the trial court by its order dated 4th August, 2018 has taken on record the Legal Proceedings Certificate relating to the trademark 'VENUS', aggrieved by the said order a petition was filed in Delhi High Court challenging its validity. The objection by the petitioner was that since the evidence stage is concluded the respondent should not be allowed to file the said documents at the stage of final arguments.
The court observed that “In matters involving trademark infringement, there is no doubt that the trademark registration itself is a matter of public record, and can be accessed by visiting the Trademark Registry's website itself. However, in order for the Court to consider the registration, documentary evidence in the form of either the trademark registration along with the journal extracts or the Legal Proceeding Certificate ought to be placed on record. In the present petition, initially, except the renewal certificate no other document was filed and the ld. Trial Court has taken the Legal Proceeding Certificate on record at the final stage. Though the documents are public record, usually the normal course, which is adopted, is to obtain certified copies of the said public record in order to rely on the same in suit proceedings or other proceedings. In the present case, neither was done by the Plaintiff. The Defendant, thus, opposes allowing the Legal Proceeding Certificate to be taken on record”.
The court finally in light of substantive justice, allowed the Legal Proceeding Certificate to be taken on record, subject to payment of Rs.50,000/- as costs to be paid to the Defendant.
The court in its judgment pointed out that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:
- Legal Proceedings certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc.,
- If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licences and assignments ought to be pleaded;
- Usually, at the time of admission/denial, parties ought not to be permitted to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from public record online. However if any aspect of the trade mark registration is being disputed by the opposite side, the party ought to file the LPC prior to the commencement of the trial,
The court had also directed the Controller General of Patents, Designs and Trade Marks and the Joint Secretary, DPIIT to issue the applied LPCs without delay and in any case within a period of 30 days.