Case: Shalimar Chemical Works Ltd Vs. Surendra Oil &amp; Dal Mills (Refineries) &amp; Others

1. This is theappeal arising from a suit for permanent injunction based on allegations of infringement of its registered trade mark. The appellant is a company incorporated and registered under the Companies Act. The case of the appellant is that from the year 1945 it is engaged in the business of manufacture and sale of high grade coconut oil used for cooking as well as manufacturing of various toilet products under the distinctive trade markThe appellant claims to be the registered owner of the trade markin Class 03 in respect of coconut hair oil and in Class 29 in respect of all edible oils included in that class. Alleging that the respondents were marketing their product in infringement of its registered trade mark, the appellant filed a suit (OS No. 1 of 1995) before the Third Additional Chief Judge, City Civil Court, Hyderabad, seeking permanent injunction restraining the defendants from marketing or offering for sale edible oil products bearing the nameon containers, labels or wrappers, or using any name identical or deceptively similar to thetrade mark.2. In course of the trial, the appellant produced before the Court photocopies of registration certificates under Trade and Merchandise Marks Act, 1958 along with the related documents attached to the certificates. The photocopies submitted by the appellant wereby the trial Court as Exs. A1-A5,to objection of proof andAt the conclusion of the trial, the Court dismissed the suit of the appellant by judgment and order dated September 28, 1998 inter alia holding that the available evidence on record did not establish the case of the plaintiff and there was no prima facie case in favour of the plaintiff nor the balance of convenience was in favour of the plaintiff. The trial Court arrived at its findings mainly because the appellant did not file the trade mark registration certificates in their original. In that connection, the trial Court made the followingthe above documents i.e. Exs. A1-A5 are marked subjectto objection of proof andadmissible (sic admissibility) and also mention so in the deposition of PW1. PW1 is his cross-examination has admitted that all the above documents are xerox copies. He has also admittedly not filed legal certificate for the same.Section 31 of Trade and Merchandise Marks Act, 1958 specifically reads as follows—Sec. 31(1) ‘In all legal proceedings relating to a trade mark registered under the Act, the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validitythe plaintiff has to file the original of the registration or the certified copies thereof. Exs. A1-A4 are xerox copies. It is well settled law that xerox copies are not admissible in evidence. Once those documents are not held admissible, the plaintiff cannot be permitted to rely on it. These documents Ex.A1-A4 are basic documents of Trade Mark and Merchandise Act.Against the judgment and decree passed by the trial Court, the appellant filed appeal (CCC Appeal No. 17 of 1999) before the Andhra Pradesh High Court. In that appeal, the appellant also filed an application under Order 41 Rule 27 (CMP No. 2972 of 2000) for accepting the originals of the trade mark registration certificates and the allied documents (of which Xerox copies were filed before the trial Court) as additional evidence. A learned Single Judge of the High Court took up the application for additional evidence along with the hearing of the appeal. He allowed the application and, together with it the appeal, setting aside the judgment and decree passed by the trial Court and allowing thesuit granting decree of permanent injunction against the defendants/respondents.4. The respondents filed an intra Court appeal (LPA No. 111 of 2001) against the judgment and decree passed by the Single Judge. The division bench of the High Court took the view that there was no occasion or justification for admitting the original trade mark registration certificates at the appellate stage as additional evidence. Referring to the provisions of Order 41, Rule 27 of the Civil Procedure Code (hereafterthe Division Bench made the followingthree circumstances production of additional evidence can be allowed by the Appellate Court. Firstly, the Trial Court had refused to admit evidence which ought to have been admitted. Secondly the party who wanted to produce additional evidence had exercised due diligence and such evidence was not within his knowledge or reach during the trial of the suit. Thirdly, the additional evidence can be ordered to be produced if the Court feels that a document was necessary for pronouncing of the judgment. Neither of these three conditions were satisfied in this case. The original documents were all along in possession of the plaintiff. At no stage the Trial Court had refused to admit them in evidence. Since the documents were all along in the possession of the plaintiff, therefore he could not fill up the lacuna by producing them in the Appellate Court. It may also be necessary to mention that production of these documents and allowing of the application under Order 41 Rule 27 of the Code while disposing of the appeal has also caused a prejudice to the defendants because when the cross-examination of P.W.1 which were not admissible in evidence.Once the original trade mark registration certificates were taken off the record of the case, thesuit was bound to be dismissed. And that is how the Division Bench dealt with the appeal. It allowed the appeal of the defendant-respondent by judgment dated April 25, 2003 setting aside the judgment of the learned Single Judge and restoring the judgment passed by the trial Court.6. The appellant has now brought this matter in appeal before this Court by grant of a special leave.

Reasoning: 12. On a careful consideration of the whole matter, we feel that serious mistakes were committed in the case at all stages. The trial Court should not haveas exhibits the Xerox copies of the certificates of registration of trade mark in face of the objection raised by the defendants. It should have declined to take them on record as evidence and left the plaintiff to support its case by whatever means it proposed rather than leaving the issue of admissibility of those copies open and hanging, by marking them as exhibits subjectto objection of proof andadmissibility The appellant, therefore, had a legitimate grievance in appeal about the way the trial proceeded. The learned Single Judge rightly allowed theplea for production of the original certificates of registration of trade mark as additional evidence because that was simply in the interest of justice and there was sufficient statutory basis for that under Clause (b) of Order 41 Rule 27. But then the Single Judge seriously erred in proceeding simultaneously to allow the appeal and not giving the defendants/respondents an opportunity to lead evidence in rebuttal of the documents taken in as additional evidence. The Division Bench was again wrong in taking the view that in the facts of the case, the production of additional evidence was not permissible under Order 41 Rule 27. As shown above the additional documents produced by the appellant were liable to be taken on record as provided under Order 41 Rule 27(b) in the interest of justice. But it was certainly right in holding that the way the learned Single Judge disposed of the appeal caused serious prejudice to the defendants/respondents. In the facts and circumstances of the case, therefore, the proper course for the Division Bench was to set aside the order of the learned Single Judge without disturbing it insofar as it took the originals of the certificates of registration produced by the appellant on record and to remand the matter to give opportunity to defendants/respondents to produce evidence in rebuttal if they so desired. We, accordingly, proceed to do so. The judgment and order dated April 25, 2003 passed by the Division Bench is set aside and the matter is remitted to the learned Single Judge to proceed in the appeal from the stage the original of the registration certificates were taken on record as additional evidence. The learned Single Judge may allow the defendants/respondents to lead any rebuttal evidence or make a limited remand as provided under Order 41 Rule 28.