The Supreme Court has ruled that a defendant in a trademark infringement case cannot be barred from questioning the plaintiff about when the disputed brand was first used merely because the defendant’s written statement has not yet been taken on record.
A Bench comprising Justice JB Pardiwala and Justice K Vinod Chandran set aside a High Court order that had directed the removal of a question from the cross-examination, holding that the issue fell outside the permissible scope of questioning.
The dispute arose from proceedings initiated by Dharampal Premchand Limited, which sought a permanent injunction against alleged infringement of its trademarks, trade dress and packaging, besides other reliefs including damages and declarations concerning its intellectual property rights.
During cross-examination, the defendant sought to put a specific question to the plaintiff:
“Is it correct that you have no document to show that since when mark BABA is being used?”
The plaintiff objected to the question, pointing out that the defendant’s written statement had not been brought on record. The High Court accepted the objection and concluded that the question could not be asked in cross-examination.
The Supreme Court took a different view.
The Bench observed that the plaintiff itself had placed the alleged use of a similar brand name, packaging and trade dress by the defendant at the centre of its infringement claim. It had also asserted rights arising from its registered trademark and copyright.
Against that backdrop, the Court found that asking the plaintiff to identify documentary proof concerning the period of use of the brand was directly relevant to the dispute.
The Court held that even in the absence of a written statement on record, the defendant was entitled to question the plaintiff about documents relied upon to establish when it began using the brand name.
The Supreme Court therefore restored the disputed question and directed the trial court to recall the plaintiff and record an answer to it.
At the same time, the Bench made it clear that allowing the question did not amount to deciding whether the plaintiff or defendant would ultimately succeed in the trademark dispute. All substantive claims and defences were left open for determination by the trial court.
The appeal was accordingly allowed.
