In the High Court of Judicature at Madras Dated 19.05.2011 Coram The Honourable Mr. Justice T.MATHIVANAN C.M.P.No.8 of 2011 and A.S No.769 of 2004 Mayil Traders, Registered Firm rep.by its Partner Tmt.Vedhambal 85/88 R.Pudupalayam Village, Rasipuram Taluk, Salem District. ... Appellant ..vs.. Thiyagarajan ... Respondent Appeal under Section 96 of Civil Procedure Code, against the judgment and decree dated 26.08.2003 and made in O.S.No.207 of 1994 on the file of the Court of Additional District and Sessions Judge, Salem. For Appellant Mr. K.Chandramouli Senior Counsel for Mr. S. Viswanathan For Respondent : Mr.Ramesh Venkatachalapathy .. .. .. JUDGMENT This appeal by the plaintiff is directed against the Judgment and decree dated 26.08.2003 and made in O.S.No.207 of 1994 on the file of the learned Additional District and Sessions Judge, Salem. 2. The legal status of the parties to the suit need not be changed and it may be continued in this appeal as it is in the suit. 3. The excerpt of the case of parties to the appeal is being detailed as under. Plaintiff is a registered firm under the name and style of MAYIL TRADERS, represented by it's partner Mrs.Vedambal, doing business in manufacturing and selling high quality cigars in the registered Trade mark "RATHAM" both in device and words and "RATHAM" in Tamil script " ujk; " under clause 34 on an all India basis under the Trade and Merchandise Marks Act 1958. The Plaintiff has been doing this business for over 55 years and earned good reputation in the market. 4. On account of wide sales promotional network and the high standard and quality maintained by the plaintiff, the trade and public have come closer to associate the said trade mark exclusively with the cigars originating from the plaintiff. The plaintiff is doing good business under the said trade mark in Salem, Trichy, Dharmapuri and South Arcot districts. The turnover in business which was 3 lakhs in 1979 has now been risen to over 20 lakhs. 5. The plaintiff came to know that the defendant has started manufacturing cigars under the name of "RAGAM" "ufk;" and doing business under the name and style of "KUDIL TRADERS". It can easily be inferred at a glance of the labels of the plaintiff and the defendant, that the Tamil words "RATHAM' "ujk;" and "RAGAM" "ufk;" are deceptively similar. The get up of this label is exactly similar to the label of the plaintiff. 6. Further the defendant has printed the name "RAGAM" (ufk;) device in the label which is similar to the device "RATHAM" (ujk;) of the plaintiff. Therefore, the slavish imitation is patent. In the ring label also the device "RAGAM" (ufk;) is printed similar to the device of "RATHAM" (ujk;). 7. The get up of the wrapper of the defendant would clearly show that it is intended to deceive the consumers and traders and cause confusion in the trade. A casual look by anybody would show that the get up of the wrapper of the plaintiff and that of the defendant are exactly similar. Except printing the word 'kudil' instead of 'Mayil' the other things are copying of the plaintiff's wrapper. A look at the ring label of the plaintiff and the one used by the defendant would clearly show that it is impossible to distinguish the two. Instead of choosing any other name, the defendant has chosen the word "RAGAM" (ufk;) i.e only the middle letters are changed and that change cannot be easily seen and distinguished by an unwary and mostly illiterate villagers who are the main consumers. The cigars manufactured by the defendant is of an inferior quality using an inferior tobacco and he is passing off the same in the market as the well known and reputed goods of the plaintiff to make unlawful gains at the expense of the plaintiff. 8. The plaintiff received complaints about the colourable imitation of his registered trademark and made enquiries and found that the defendant is doing such colourable imitation and marketing the same as that of the plaintiff and deceived the public at large. since the device "RATHAM" (ujk;) is the registered trademark of the plaintiff firm, nobody else can use the said device for the cigars. Hence this suit." 9. The defendant has contended in his written statement that the copies of documents No. 2,3 & 4 annexed along with the plaint list do not contain the representation said to have been annexed to the Trade Mark No. 386231 or 386230 or 348427. Copies only state as follows: " Certified that the Trade Mark of which a representation is annexed hereto has been registered in Para B of the Register in the names of R.Padmanabhan, V.Vedhambal, Kamaraj and Sumathi, Trading as Mayil Traders, Pudupalayam Post, Rasipuram Taluk, Salem District, Tamil Nadu in class 34 under Certificate No.386231 as on date 9.2.1982. " This certificate is issued on 14.3.1986. It is also stated in the certificate, as follows. " This certificate is not for use in Legal Proceedings or for obtaining Registration Abroad." 10. There is absolutely no proof placed on record that the plaintiff has got registered his Trade Mark with the emblem "RATHAM" ujk; RUl;Lfs;. There is also no resemblance between the plaintiff's emblem and the defendant's emblem. The following differences are obviously seen in the two pictures, even to the naked eye :- ------------------------------------------------------------ In the Plaintiff's In the Defendant's package / Emblem: Package / Emblem: ------------------------------------------------------------ 1. The "Ratham" is having two There are No wheels wheels and 2 cloth 'Kunjams' and no 'Kunjam' of a cylindrical form hanging on either side. 2. There is only one opening There are as many as six openings. 3. There are No Letters There are the following within the 'Ratham' letters "VCT-KUTIL- (Chariot) CHEROOTS" in a Bold form. 4. There are No other words The following words are excepting "25 RUl;Lfs;" there in a bold form:- maximum Prince Rs.6-50. "ufk; 1 Foy; RUl;Lfs;" and also there is a Trade Mark. 5. The address of the plaintiff The address of the is clearly given as defendants are clearly 'Mayil Traders' given as 'Kudil Traders' 6. On the backside of the On the backside of the package, there are No package, the emblem is other words excepting printed in two colours, the 'Ratham' figure. Yellow, Violet & four such emblems are printed in between the word "Foy; RUl;Lfs; " & Kudil Traders is boldly mentioned. 7. The size is about 2" to 2 = "The size is 4"in Width & in Width and about 4" in 4"in Height. Height. 8. The 'Ratham' is in Dark violet The'Kudil'(Hut)is printed Colour, the words (Ratham) in light violet, Blue and " ujk; RUl;Lfs; " is in Dark White and only the other Red, the address of the colour is used as Yellow. plaintiff is in Blue and the Registered Trade mark Number is mentioned in Yellow colour. 9. The package is printed The Package with emblem in four colours. is printed only in three colours. ------------------------------------------------------------ 11. As a matter of fact while the plaintiff is trading in the name of "Mayil Traders" and the said name is also printed on the sides of the plaintiff's package with a bold picture of a 'Peacock', there is no such bold emblem on the defendant's package. The defendant's package only contains the address of the 'Kudil Traders'. 12. The plaintiff goods are totally different from the defendant's goods. The defendant has sent an application to register his Trade Mark "Kudil Cheroots" with the label under application No.634110. The said application has been filed long ago and it is pending consideration before the Registrar of Trade Marks. 13. An application was also filed by the defendant through his Attorney at Madras to search and find out whether there is any Registered Trade Mark similar to the defendant's proposed label. The Registrar of Trade Mark, Bombay had sent a letter to the defendant's attorney stating that there was no registered Trade Mark similar to the Trade Mark applied for by this defendant with the label. Under these circumstances, the Registrar of Trade Mark had impliedly held that there is absolutely no similarity between the plaintiff's label and Trade Mark and the defendant's label and Trade Mark, as the plaintiff's Trade Mark is admittedly registered long before this defendant's application for the Registration of his Trade Mark. 14. The defendant has been manufacturing and selling Cigars under the name 'Kudil Cheroots' " ufk; 1 " and his label has acquired a wide repute. He is doing considerable business for the last 5 years under his label in the Districts of Salem, Coimbatore, Kollegal in Karnataka, Dharmapuri District, Tiruppur and Kerala. The defendant's label contains the translation in 'Malayalam' as well as 'Kannada'. No such thing occurs in the plaintiff's label. 15. There is a wrapper around the cigar in both the plaintiff's bundle as well as in defendant's bundle. The colours used by the plaintiff in the ring around the cigar are yellow, light green, blue and in some cases, yellow light violet and white. In the Ring to the cigar used by the defendant to wrap around the cigar, he uses only the colours of light violet and Yellow. Nobody can miss these colours and nobody can be deceived. 16. The word " ufk; " used in the defendant's label only means 'quality'. The ' ufk; 1 ' means ' first quality'. It has nothing to do with the word 'Ratham' used by the plaintiff. 'Ratham' means a 'Chariot'. It is impossible to confuse the chariot with the adjective 'quality'. The defendant is printing only a 'Kudil' in his label. A 'Kudil' is a hut with openings. This cannot be confused with a crariot which is in complete without wheels. The plaintiff's device is not identical with the defendant's device. The get-up of the wrapper is totally different in both the cases. 17. There is no motive whatsoever for this defendant to imitate from the plaintiff's label. This defendant has been doing the business from 1989 onwards and has established a market for himself. The plaintiff having secured a trade mark in 1982 or 1986 never took any action against this defendant from 1989 and has come forward with this suit only after his workmen deserted him and joined this defendant. Hence, the claim of the plaintiff that he had suffered with damages on account of the defendant's action to the tune of Rs.5,000/- cannot be admitted. 18. The plaintiff has not produced the partnership deed to show that one Padmanabhan is the managing partner of Mayil Traders. This defendant understands that Padmanabhan is no more and unless the partnership deed is produced, it cannot be heard to say that the plaintiff's firm is still in existence. 19. Based on the pleadings of the parties to the suit, the Trial Court has formulated as nearly as four issues which are detailed as under; 1. Whether the defendant is copying the Trade Mark of the plaintiff ' Ratham' using the word 'Ragam' to appear similar to the Trade Mark of the Plaintiff? 2. Whether the plaintiff is entitled to destroy the impeaching labels, wrappers, ring labels and marks used by the defendant? 3. Whether the plaintiff is entitled to get the cost of Rs.5000/- from the defendant? 4. To what relief the plaintiff is entitled? 20. In order to substantiate their respective cases one Varadharajan who is the husband of Vedhambal was examined as PW1. During the course of his examination Exs.A1 to A12 were marked. On the other hand, the defendant had examined himself as DW1 and during the course of his examination Exs.B1 to B4 were marked. 21. On appraising the evidences both oral and documentary and on considering the related facts and circumstances the learned District & Sessions Judge, (FTC 1) Salem has found that the plaintiff had not produced any acceptable legal evidences, and ultimately has dismissed the suit on the following grounds :- 1. There is no similarity between the plaintiff's wrapper and that of the Defendant causing confusion in the minds of the buyers. 2. The Mayil Traders is a partnership firm and that the name of the partners have not been disclosed. 3. The plaint has been signed by Vedambal alone and hence the suit is not maintainable. 4. The Defendant has come to know that one of the partners Padmanabhan had passed away and hence the partnership has come to an end. 5. One of the partners Vedambal who has signed and verified the plaint has not entered the witness box and only her husband alone has entered and given evidence. 6. The Certificate issued by the Trade Marks Registry to the Plaintiff is for a period of 7 years only and is not for use in legal proceedings. Further the validity of the certificate expired before the institution of the suit on 29.11.1994 and hence the plaintiff cannot maintain the suit under the Trade Marks Act. 22. Being aggrieved by the judgment and decree of the trial Court, the plaintiff stands before this Court with this appeal. 23. Pending disposal of the appeal, the plaintiff has filed a Civil Miscellaneous petition in CMP No.8 of 2011 under Order 41 Rule 27 of C.P.C to receive the certificate dated 14.12.2010 issued by the Deputy Registrar of Trade Marks, Chennai as an additional evidence, on the side of the plaintiff. In the affidavit filed in support of the petition, the petitioner has stated that in order to establish their case, the plaintiff had filed documents to prove the registration of their trademark before the trial Court. The Registration of trademark was renewed periodically, however, the trial Court has held that the certificate issued itself would reveal that this certificate is not for use in legal proceedings and on the date of filing of the suit the period was expired by 08.02.1989. 24. Exs.B-2 and B-3 were filed to show the registration of the Trade mark and the subsequent registration certificates were not filed. In view of the finding of the Trial Court that the validity period was expired, it is imperative on the part of the plaintiff to prove that the trademark is in force till date, and therefore, the plaintiff had applied to the Deputy Registrar of Trade Marks, Chennai for issuance of certified copy of the certificates of renewal. In compliance with the request of the plaintiff the Deputy Registrar of Trade Marks has also issued certificate of registration for use in legal proceedings and that the certificate issued by the Deputy Registrar of Trade Mark clearly indicates that the registration was renewed for a period of 7 years from 7th December, 1989, again from 9th December, 1996 and further from 9th February, 2003 for a period of 7 years. 25. In this connection, the learned counsel for the plaintiff would submit that the license was last renewed for a period of 10 years from 09.02.2010 and that it was clearly established that the Registered Trade Mark was in force right from 1982, including on the date of suit. The learned counsel for the petitioner would further submit that the certificate dated 14.12.2010, which was issued by the Deputy Registrar of Trade Mark was absolutely necessary for proving the contention of the plaintiff that the respondent had infringed the plaintiff Trademark. The learned counsel has also contended that the certificate dated 14.12.2010 issued by the Deputy Registrar of Trademark was not filed earlier as the plaintiff had thought that the first certificate was sufficient to adjudicate the dispute between the parties concerned. He has also adverted to that the document which was now sought to be produced was very much essential and unless the aforesaid document was received as an additional documentary evidence, the plaintiff would be put into irreparable loss and hardship. 26. On the other hand, the learned counsel for the respondent /defendant has contended that the petitioner/appellant had not given any reason for not renewing the certificate within the stipulated period and therefore there was absolutely no explanation given as contemplated under Order 41 Rule 27 to permit the appellant to file the documents. He has added further that the appellant having suffered a decree of dismissal was not entitled to cover up the latches by producing the certificate at the belated stage. He has also maintained that the averments in the application were casual in nature and that the appellant could not be allowed to substantiate his case in the appeal by producing a document which was after the date of filing of the suit. He would further submit that the very fact that the certificate issued under the Act could not be relied on in a legal proceedings which would go to show that the said document would have no evidentiary value and on that ground also it was liable to be rejected. He has also adverted to that PW1 was cross examined in July 2003 and after his cross examination, he was again recalled and several documents were marked and in such view of the matter, the petitioner / plaintiff ought to have filed the certificate, which was sought to be produced, at the time of trial after giving an opportunity to the respondent to cross examine on the said document. Exs.B2 and B3 were filed to speak about the fact that when the respondent applied for registration of his trademark, there was no existing trademark issued by the authority. Even in the certificate, which is now sought to be produced, it is clearly stated that the registration of this trademark shall give no right to the exclusive use of expression L-4 No. 1 / 77 and L2 No.4 / 75 and therefore the petitioner / appellant cannot rely on the said documents; the learned counsel for the respondent argued. 27. This Court has carefully considered the submission made on behalf of both sides. 28. It is apparent that the trial Court while dismissing the suit has held that the certificate issued itself would go to show that it was not for use in legal proceedings and on the date of filing of the suit the period had expired by 08.02.1989. This view was taken by the trial Court on the basis of Exs. B2 and B3 which were filed on behalf of the respondent / defendant. 29. It is significant to note here that the learned counsel for the petitioner / plaintiff has fairly admitted that on the basis of the findings of the trial Court and in order to prove that the trademark was in force till date of filing of the suit, the plaintiff had applied to the Deputy Registrar of Trademark, Chennai for issuance of a certificate for renewal and in pursuant to their request the Deputy Registrar of trademark had also issued a certificate of registration, which is now sought to be produced as an additional documentary evidence. A perusal of the document i.e certificate issued by the Deputy Registrar of trademarks reveals the history data as follows: " R. Padmanabhan, Vedhambal, Kamaraj and Sumathi trading as Mayil Traders, Pudupalayam Post, Rasipuram Taluk, Salem District, Tamil Nadu. It is also revealed that the registration was periodically renewed for a period of 7 years from 21st April, 1986, again for a period of 7 years from 21st April, 1993, and for a further period of 7 years from 21st April, 2000 and advertised in journal No. 1227. Registration was also renewed for an another period of 10 years from 21st April, 2007 and advertised in journal No. 1371. 30. From the above certification it can be understood that the plaintiff's registered trademark has been in force right from 1982 till date including the date of suit and it is also understood that the registered trademark will be valid up to 21.04.2017. In this connection, the learned counsel for the petitioner / plaintiff would submit that Section 137(1) of the Trade Marks Act, 1999 contemplated that a copy of any entry in the Register or of any document referred to in sub-section (1) of Section 148 purporting to be certified by the Registrar and sealed with the Seal of Trade Marks Registry should be admitted in evidence in all Courts and in all proceedings without further proof or production of the original. He would further submit that in the interest of justice and to take fair decision in this case, it was very much essential to receive the document which was sought to be produced. 31. In support of his contention, he has placed reliance upon the decision in Hasan Abubucker Vs. Kottikulam St., Mohideen Pallivasal Therkku Mohindeen Pallivasal 2000(III)CTC 193. In this case, K.P.Sivasubramaniam.J. has held that the ultimate aim of a judicial proceeding is to render justice and technicalities including under Order 41, Rule 27 CPC are only hand maids of justice and it is not possible for the judicial mind to shut out or close its eyes when an important piece of evidence is brought to its notice." 32. On coming to the instant case on hand, it is pertinent to note here that the certificate dated 14.12.2010 issued by the Deputy Registrar of Trademark, Chennai is important piece of documentary evidence to establish the case of the petitioner / plaintiff. It is obvious to note here that this document is of recent origin and takes genisis for the first time to be introduced in the suit. It is established that the period of registration was expired by 08.02.1989. The petitioner has fairly admitted that based on the findings of the trial Court, he had applied to the Deputy Registrar of Trademark, Chennai for the issuance of certified copy of the certificate of renewal and only on the basis of his request the certificate dated 14.12.2010 came to be issued by the Deputy Registrar of Trademark, Chennai and as such it cannot be construed that it is going to introduce a new set of facts in this case, instead, it is going to establish the fact that the date of registration of plaintiff's trademark is 21.04.1979 and it is valid upto 21.04.2017 and that the registration was renewed for a period of 7 years from 21st April 1986, again for a period of 7 years from 21st April, 1993 and further for a period of 7 years from 21st April 2010 and lastly for a period of 10 years from 21st April 2007 which will be valid upto 21.04.2017. 33. It may also be relevant to note here that under Order XLI, CPC, the appellate Court is a Court of appeal in facts also. It has the power of jurisdiction to reappraise the evidence and come to its own conclusion on basis of materials. It is obvious that clauses (a), (aa) and (b) of sub-rule (1) of Rule 27 of Order XLI refer to three different situations. Power of the appellate Court to pass any order thereunder is limited. For exercising its jurisdiction thereunder, the appellate Court must arrive at a finding that one or the other conditions enumerated thereunder is satisfied. A good reason must also be shown as to why the evidence was not produced in the trial Court. 34. As adumbrated supra, the document, which is sought to be produced may be new, but at the same time, it is to be seen that it is not going to introduce a new case. The appellant/ plaintiff has also given a satisfactory account about what necessitated him to apply for the certified copy of the document, which is sought to be produced in this appeal. Therefore, this Court is of the considered view that the appellant / plaintiff has emphatically supplied adequate reason for the production of this document at the appeal stage. As discussed infra, this Court, being the appellate court, has convinced that the conditions enumerated under the clauses of Order XLI Rule 27 have been complied with and hence there may not be any impediment in allowing this