Interviews

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March 18, 2021 0Comments 312Views

“The IT infrastructure available with District Courts must be upgraded to enable effective and smooth functioning of the hybrid system via VC hearing.” – Satyam Thareja

Satyam Thareja is a post-graduate of Indian Law Institute, New Delhi (2015) & graduate of...

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February 18, 2021 0Comments 426Views

‘The Indian Arbitration framework is moving towards a new institutional arbitration-friendly regime. However, with respect to Investment Arbitration, we are still a long way from becoming an encumbrance-free jurisdiction.’ – Anubhab Sarkar

Anubhab Sarkar is the Founding Partner at Triumvir Law which he started three years ago...

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January 28, 2021 0Comments 715Views

‘None of us chose litigation to sit behind computers and argue. But we need to be aware of the realities. Covid still does not have a cure, nor is the vaccine readily available.’ – Shivani Luthra Lohiya

Ms. Shivani Luthra Lohiya is a practicing Advocate in New Delhi. She graduated from Amity...

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November 13, 2020 0Comments 259Views

‘In the past decade there have been many changes in the laws, but these have unfortunately not been properly absorbed in smaller metropolitan regions where lawyers are still likely to face courts that are not exactly aware of these changes.’ – Vibhanshu Srivastava

Vibhanshu Srivastava specializes in dispute resolution and has diverse experience in handling a vast array...

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November 5, 2020 0Comments 408Views

“Legal systems have been built to fit national boundaries. On the cyberspace, transitional is the ‘new normal’. Coping with this legal pluralism in the absence of appropriate cross-border frameworks is a challenge for developed and developing countries alike.” – Dr Subhajit Basu, FRSA

Dr Subhajit Basu, FRSA is Associate Professor in Information Technology Law (Cyberlaw) at the University...

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October 13, 2020 0Comments 574Views

‘In the practice of white-collar crime in India, there is an increasing realization among professionals that the system lacks the mechanism to grant a pardon or some form of leniency.’ – Faisal Sherwani

Faisal Sherwani is Advocate-on-Record, Supreme Court, and is currently a Partner in the Dispute Resolution...

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October 1, 2020 0Comments 296Views

‘Corporate litigation can go on for years with negligible results, which can be difficult and frustrating for a company, especially one looking to recover debts. It can be challenging to keep the client’s morale up.’ – Tania Ahlawat

Tania Ahlawat is Co-Managing Partner, Ahlawat & Associates. She is a corporate generalist who leads...

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October 1, 2020 0Comments 329Views

‘Anything that makes a product or service cheaper, faster, more convenient, a better experience will be welcome in the post-Covid world… Laws must enable businesses, not stifle them.’ – Kunal R. Sarpal

Kunal R. Sarpal is an award-winning practising Company Secretary and Lawyer. One of the youngest in...

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September 28, 2020 0Comments 295Views

‘Technology is making a lot of legal skill sets redundant. You can get due diligence done by bots instead of lawyers. We may also have bots who will predict the outcome of a case on the basis of precedents and various other inputs.’ – Debanshu Khettry

Debanshu Khettry is a Principal Associate of the law firm Leslie & Khettry. Q. There...

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September 16, 2020 0Comments 413Views

“In the post-pandemic world order, mediation should be one of the most preferred modes for dispute redressal.” – Nandini Gore

Nandini Gore is Advocate on Record, Supreme Court and Partner, Karanjawala & Company Advocates. She...

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Constitutional Validity of the Appointment of Non-Member of the Legislature as Chief Minister: A Critical Analysis in Light of the West Bengal Elections, 2021 – By Pawan Reley

May 5, 2021 0Comments 220Views

May 5, 2021

The Election to the Legislative Assembly of West Bengal was held between March 27 to April 29, 2021 for 292 Constituencies where the AITC secured 213 seats and won the election. The turning point came when the leader of the AITC Ms. Mamata Banerjee lost the election in her Constituency and could not become a member of the Legislative Assembly. She, however, decided to be sworn in as the state’s Chief Minister. It gives rise to the following questions of law:

Whether a non-member of the Legislature can be appointed as Chief Minister under the Constitution of India?
If the answer to the said question is in the affirmative, then what is the time period for a non-member of the Legislature to be permitted to become the Chief Minister?
Whether the appointment of a person, who is not a member of the House, as Chief Minister will not be against the democratic principles and national interest?
If the answer to the said questions is in the affirmative, then whether a non-member, who fails to get elected during the period of six consecutive months after he is appointed as a Minister or while a Minister has ceased to be a legislator, can be reappointed as a Minister, without being elected to the Legislature after the expiry of the period of six consecutive months?

Article 164 (4) of the Constitution of India provides that a Minister who for any period of six consecutive months is not a member of the Legislature of the State shall at the expiration of that period cease to be a Minister. This clause [originally taken from Section 10 (2) of the Government of India Act, 1935], provides that there is no bar for anyone who is not a member of Legislature to become minister. However, some important objections were raised in the Constitutional Assembly during the enactment of Article 164 (4) [Article 144(3) of the Draft Constitution], which is relevant to discuss before proceeding to deal with issue in hand. Prof. Shibban Lal Saksena in the Constituent Assembly Debates on 1 June, 1949 Part I (Volume III) suggested to change the word “Legislative Assembly” in place of “Legislature of the State” in Article 144(3) of the Draft Constitution. He opined that:

“That means that if a person is not a Lower House but is made a Minister, and supposing that the man fails to get elected to the Lower House on the basis of adult suffrage in six months, then under this article we are providing that he can still continue to remain a Minister if he is nominated to the Upper House by the Governor. I think it is undemocratic that our Ministers should be persons who cannot even win an election by adult suffrage. I have therefore suggested that we should say ‘Legislative Assembly’ instead of Legislature’ in this article. In the Assembly nobody is nominated and all Ministers shall therefore have to win an election by adult suffrage within six months of their appointment in order to continue to be ministers. Otherwise persons who are not representatives of the people but are favourites of the Premier may be nominated to the Upper House in the provincial Legislatures and they can continue to remain Minister under this clause (3) of the article. I desire that only members who are able the post of a Minister. Anybody who is not able to get elected by member of the Council of Minister.”

Another important objection was raised by Shri R. K. Sidhva (C.P. and Berar: General) in the Constituent Assembly Debates on 1 June, 1949 Part I (Volume III) in the following words:

“…I feel that this is merely a repetition or imitation of a clause which exists in the present Government of India Act of 1935. I do not think is necessary now, because, under the new Constitution, the number of members in the provincial legislatures will be ranging from 300 to 600 and I do not think we will be wanting in people to fill even special posts. I am opposed to an outsider who is not a member of the legislature, however highly qualified he may be, being called upon to hold the very responsible office of a Minister even for six months. From the experience we have gained, we find that in some cases where Ministers have been so appointed, eventually it has led to corruption. After the period of six months, somebody has to vacate a seat and it has so happened in one or two provinces that to make room for this Minister, that gentleman had to be provided with some job for which he was not qualified. Therefore, when we are going to have large Houses in which there will be members with vast experience, and experts in many respects, I feel that it is not proper, and it is not a very good principle to imitate what is existing in the Government of India Act, 1935, and say that if the Chief Minister feels that so and so who is not a member is required for expert advice, he should be taken as a Minister. Sometimes, the Chief Minister would like to favour somebody. In the name of the special qualifications that he may possess, he will be asked to become a Minister, and at the end of six months, he will have to be made a member of the legislature, because he cannot hold the office after six month. As I stated, Sir, some other member who will be asked to vacate will have to be offered something and this will lead to corrupt public life.”

Dr. Ambedkar rejected the said objections or any other proposal on the said article on two grounds:

It is perfectly possible to imagine that a person who is otherwise competent to hold the post of a Minister has been defeated in a constituency for some reason which, although it may be perfectly good, might have annoyed the constituency and he might have incurred the displeasure of that particular constituency. It is not a reason why a member so competent as that should be not permitted to be appointed a member of the Cabinet on the assumption that he shall be able to get himself elected either from the same constituency or from another constituency. After all the privilege that is permitted is a privilege that extends only for six months. It does not confer a right to that individual to sit in the House without being elected at all.

That the fact that a nominated Minister is a member of the Cabinet, does not either violate the principle of collective responsibility nor does it violate the principle of confidence, because if he is a member of the Cabinet, if he is prepared to accept the policy of the Cabinet, stands part of the Cabinet and resigns with the Cabinet, when he ceases to have the confidence of the House, his membership of the Cabinet does not in any way cause any inconvenience or breach of the fundamental principles on which parliamentary government is based. “

Ultimately after the long-drawn debate article 164 (4) was finalized. On a plain reading of Article 164 (4) or Article 75 (5), it is evident that the Constitution makers desired to permit a person who is not a member of either House to be appointed as minister for a period of six months and if during the said period she/he was not elected to either House, he/she would cease to be minister.

The ambit and scope of Article 164(4) has already been discussed by the Hon’ble in catena of its decision. The Constitution Bench of the Hon’ble Supreme Court in Har Sharan Verma v. Shri Tribhuvan Narain Singh, Chief Minister, U.P. and another, 1971(1) SCC 616 dealt with the similar issue in detail. The issue arose in connection with the appointment of Shri T.N. Singh, who was not a Member of either House of Legislature of the State of Uttar Pradesh, as Chief Minister of Uttar Pradesh. The Constitution Bench referred to the position as prevailing in England. It was observed that invariably all Ministers must be members of the Parliament but if in some exceptional case, a Minister, is not a member of the Parliament, he can continue to be a Minister for a brief period during which he must get elected in order to continue as a Minister. This Court, upholding the judgment of the High Court, rejected the challenge to the appointment of Shri T.N. Singh as Chief Minister in view of Article 164(4) of the Constitution. The Court opined that the Governor has the discretion to appoint, as a Chief Minister, a person who is not a member of the legislature at the time of his appointment; but the Chief Minister is required, with a view to continue in office as a Chief Minister, get himself elected to the legislature within a period of six consecutive months from the date of his appointment.

The said issue was once again raised in Har Sharan Verma v. State of U.P. and another, (1985) 2 SCC 48. However, a new argument of the qualification of the minister was taken that as per the changes brought in Article 173 (1) (a), a person shall not be qualified to be chosen to fill a seat in the Legislature of a State unless he-

(a) is a citizen of India, and makes and subscribes before some person authorised on that behalf by the Election Commission an oath or affirmation according to the form set out for the purpose in the Third Schedule.

However, the Hon’ble Supreme Court rejected the said argument and held that it is a settled position of law that a person who is not a member of the State Legislature may be appointed as a Minister, subject, of course, to clause (4) of Article 164 of the Constitution which says that a Minister who for any period of six consecutive months is not a member of the Legislature of the State shall at the expiration of that period cease to be a Minister.

The Hon’ble Supreme Court in the case of Har Sharan Verma Vs. Union of India and another, 1987(Supp.) SCC 310 made the important observation combining the effect of Article 75 (5) [Pari-Materia to Article 164 (4)] and Article 88 that the combined effect of these two articles is that a person not being a Member of either House of Parliament can be a Minister up to a period of six months. Though he would not have any right to vote, he would be entitled to participate in the proceedings thereof.

At this juncture it is important to note one more important decision of the Hon’ble Supreme Court in the case of S.P. Anand, Indore v. H.D. Deve Gowda and others, (1996) 6 SCC 734, where Shri H.D. Deve Gowda, who was not a Member of either House of Parliament was appointed as the Prime Minister of India. His appointment was questioned. The Hon’ble Supreme Court upheld the appointment of Shri H.D. Deve Gowda as Prime Minister and held that:

“…Therefore, even though a Prime Minister is not a member of either House of Parliament, once he is appointed he becomes answerable to the House and so also his Ministers and the principle of collective responsibility governs the democratic process. Even if a person is not a member of the House, if he has the support and confidence of the House, he can be chosen to head the Council of Ministers without violating the norms of democracy and the requirement of being accountable to the House would ensure the smooth functioning of the democratic process. We, therefore, find it difficult to subscribe to the petitioner’s contention that if a person who is not a member of the House is chosen as Prime Minister, national interest would be jeopardised or that we would be running a great risk…”

Another important issue was raised in the case of S. R Choudhary Vs. State of Punjab, (2001) 7 SCC 126 that whether a non-member, who fails to get elected during the period of six consecutive months, after he is appointed as a Minister or while a Minister has ceased to be a legislator, be reappointed as a Minister, without being elected to the Legislature after the expiry of the period of six consecutive months ?

The Hon’ble Supreme Court answering the question in negative held that:

“…The clear mandate of Article 164(4) that if an individual concerned is not able to get elected to the legislature within the grace period of six consecutive months, he shall cease to be a Minister, cannot be allowed to be frustrated by giving a gap of few days and reappointing the individual as a Minister, without his securing confidence of the electorate in the meanwhile. Democratic process which lies at the core of our Constitution schemes cannot be permitted to be flouted in this manner.”

The Hon’ble Supreme Court in the case of Ashok Pandey Vs. Km Mayawati, AIR 2007 SC 2259 reiterated the fact that person who is not a member of Legislative Assembly or Legislative Council can be appointed as Chief Minister or as a Minister. However, it should also be noted that the period of six months implies that the period must “continuously” and not even “intermittently” run.

Thus, the constitutional position in relation to appointment of Minister which includes Chief Minister is clear that even a non-member of Legislature can be appointed as Minister/Chief Minister but only for continuous period of 6 months. Within 6 months, a non-member has to become the member of the House. There are instances where a non-member of the Legislature has been appointed as Chief Minister. This took place in the case of Shri C. Rajagopalachari who was made the Chief Minister of Madras in 1952, or of Shri Anajiah, who was made Chief Minister of Andhra Pradesh, in 1980.

Thus, the appointment of Ms. Mamata Banerjee as Chief Minister of West Bengal despite her not becoming member of the Legislature is justified under the Constitution. However, after calculating the current facts of Covid-19 and politics, the important question arises here that what if the Election Commission in the coming six months orders that no by-election will take place in Kolkata due to Covid-19, and if Chief Minister does not be become member of the Legislature because of not holding elections (and not because of her losing in by-election or not participating in by-election) then whether she can continue as Chief Minister or she has to resign as per the mandate of Article 164 (4) of the Constitution of India? There are a few more similar questions which emanate from the combination of law and politics and cannot be answered at the moment but may pose serious challenge before the Judiciary to tackle them and pave the path for students of Constitutional law and politics to learn in the future.

****

Pawan Reley is an advocate practicing at the Supreme Court of India.

Columns

Domain Name Parking – Sufficient to Show Use of a Trade Mark in India? – By Sujata Chaudhri, Deeksha Anand & Amay Jain

April 27, 2021 0Comments 425Views

The role of Internet in trade and commerce, not only as a medium for doing business and increasing outreach but also as a platform for promoting brands, cannot be underestimated in today’s reality of the virtual world. It follows that domain names assume great importance in the world of brands and, consequently, in the contours of trade mark law.

Being a common law country, an aspect that centres around trade mark protection in India is its “use”. It is uncontentious that the incorporation of a trade mark as part of a domain name that resolves to an active website constitutes use of the mark under Indian law. Does the same, however, hold true even if the domain name in question is parked?

Domain name parking occurs when a domain name registrant deposits its domain name with a registrar or parking service provider who creates placeholder pages, as opposed to a fully functional and developed website.[1] In other words, the practice of a person or entity getting a domain name registration and simply holding it in his/her/its name, to the exclusion of others, without pointing it to an active website, is called ‘domain name parking’. While it is settled law that registration and use of a domain name which incorporates a mark identical or deceptively similar to someone else’s trade mark, can injure the rights of the owner of such a mark[2], this article aims to explore whether mere parking of a domain by the owner of a trade mark qualifies as “use” of the mark incorporated in the domain name.

“Use” of a Mark: Interpreting the relevant provisions of law in India and the US

India

In India, Section 2(2)(c)(i) and (ii) of the Trade Marks Act, 1999 (hereinafter the “TM Act”) defines use of a mark as follows:

“Unless the context otherwise requires, any reference to the use of a mark

(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;

(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services.”

The wording “in any other relation whatsoever” opens the above definition to wide interpretation. Indian courts, in numerous cases[3], have held that ‘use’ does not necessarily mean and imply actual physical sale; even mere advertisement without having even the existence of the goods can be said to be a ‘use’ of the mark.[4] Thus, the interpretation of ‘use’ of a mark, in India, as noted above, is wide enough to include advertisement and promotional activities within its ambit, without requiring actual physical use of the mark on goods. The above interpretation broadens the scope of trade mark protection to instances of use which may not essentially constitute use of a mark on the concerned goods in the literal/physical sense.

The ambit of trade mark protection in India, however, does not extend to a scenario where there is no bona fide intention to use the mark on or in relation to the concerned goods or services. In the case of Vishnudas v. The Vazir Sultan Tobaco Ltd.,[5] the Hon’ble Supreme Court of India held that, if a trader has no bona fide intention to trade in certain goods, he should not be permitted to enjoy monopoly over the trade mark in respect of those goods even if the trader owns a trade mark registration for a broad specification of goods covering those goods. Further. in the case of Unichem Laboratories Ltd. v. Ipca Laboraties & Ors.[6], it was held that “no court of law allows anybody to corner or traffic any trade mark with bare registration without bona fide intention to use”.[7]

From these cases, it is clear that mere registration of a trade mark, devoid of any bona fide intention to use it in respect of the goods and services covered by the registration, does not entitle the registrant to enjoy monopoly over the trade mark in respect of those goods and services.

The United States

In the United States, the understanding of use of a mark, embodied in the definition of “use in commerce”, is more expressly subject to a qualification that such use be commercial in nature. §1127 of the Lanham Act, 1946[8] defines “use in commerce” as only ‘bona fide use made in the ordinary course of trade, and not made merely to reserve a right in a mark.’ It follows that use of a trade mark is not bona fide if the underlying transactions are not genuinely commercial.[9]

Token Use

The term “token use” refers to uses of a trade mark that are purely for the purpose of securing rights in a mark, as opposed to use in furtherance of any true interest in or expectation of making commercial sales.^[10]

In Laboratoire De La Mer Trade Marks[11], the question for determination before the court was, what amount of use was required to prove that the mark was put to genuine use. It was held that, if the use was only slight, depending on circumstances, it might show that the trader was not genuine in its activities. If the main or principal motive was trade mark protection, rather than making sales under the marks, the use was not bona fide. The trade mark owner should demonstrate that use was not merely “colourable” or “token” but bona fide use of a mark in the ordinary course of trade.

All in all, it is apparent that use of a mark must be a bona fide one, and not a token or colourable one, merely to gain protection under trade mark law, in order for it to enjoy protection under the US trade mark law regime.

Commercial Magnetism

To support the contention that “use” must be a bona fide use or use in commerce, the doctrine of ‘commercial magnetism’ deserves a mention.

The doctrinal expression of the “commercial magnetism” principle underlying all of trade mark law is the requirement that a trade mark be used in commerce. This requirement permeates all facets of common law trade mark law and of the Lanham Act, and it holds that any conduct to which trade mark law is to apply must involve the use of a symbol in a way that consumers can perceive the symbol so that it can exert its commercial magnetism on them. The logic behind the requirement is simple: without use of a symbol, consumers cannot perceive it; without consumer perception, the symbol cannot exert whatever commercial magnetism it may have over consumers; without commercial magnetism, the symbol does not function as a trade mark.[12]

As per the doctrine of commercial magnetism, once the symbol is used in commerce, only then can there exist a “consumer attached to that trade mark” who can perceive the said mark. Once perceived, the mark can exert magnetism or attract the consumer towards the good(s) or service(s) that the mark pertains to. Simply put, the doctrine contends that a trade mark attains its identity only because of its perception, recognition and attractiveness to a consumer. In other words, a trade mark acts as a magnet to the consumer to buy a product. Undoubtedly, this utility of a trade mark can be said to be commercial in nature. It follows that “use” must be a bona fide use or a use in commerce to gain trade mark protection.

Analysis: Parked Domain Name

As noted above, a parked domain name is a registered domain name that is not linked to a website or email hosting service.^[13] In simpler words, a parked domain is just a name/address on the Internet owned by an individual or an entity. This is akin to a situation where a trader obtains a trade mark registration without any bona fide intention to use the trade mark. In such a situation[14], where apart from registration of domain name, no substantial steps are undertaken towards commercial use of the mark,[15] monopoly over the said parked domain name should not result in the registrant claiming exclusivity over the said domain name or trade marks identical or deceptively similar to the said domain name.

Considering both sub clauses of Section 2(2)(c) the TM Act mention “in relation to goods/services”, in order to constitute ‘use’ within the definitions provided under these provisions, there must be a connection between the instances of use of the mark being relied on, and the goods or services on or in relation to which such use is sought to be established. Clearly, mere parking of a domain name fails to establish any such connection with the goods or services. Hence, merely parking a domain name would not qualify the definition of “use” of a mark under the TM Act.

Thus, a parked domain can, at the most, be understood to be a token use, as opposed to a commercial one. Since a parked domain is not connected to any website or hosting service, thereby lacking any connection with goods or services, the requirements of ‘commercial magnetism’ cannot be said to be met. Further, no consumer can be said to be visiting the parked domain for any commercial reason.

Conclusion

In view of the above, unless proven otherwise, mere parking of a domain name should not fulfil the criterion of bona fide use of the trade mark it incorporates. Therefore, in order to secure rights in a trade mark, it must be used in a manner that it attracts commercial magnetism. Given this, in the authors’ opinion, mere parking of a domain name does not enable its registrant to claim ‘use’ of the trade mark it incorporates.

***

Sujata Chaudhri is the Founder, Owner and Managing Partner at Sujata Chaudhri IP Attorneys and specialises in IP litigation, enforcement, prosecution and transactions in the United States and India (particularly in the area of trade marks).

Deeksha Anand is a Principal Associate at Sujata Chaudhri IP Attorneys and specialises in trade mark and design prosecution, including prosecuting international applications filed through the World Intellectual Property Organization, and trademark opposition and cancellation actions.

Amay Jain works as an Associate at Victoriam Legalis Advocates & Solicitors, Mumbai.

[1] Elizabeth M. Flanagan, No Free Parking: Obtaining Relief from Trade mark Infringing Domain Name Parking, 2007 Minnesota Law Review (92) 498,

<https://www.minnesotalawreview.org/wp-content/uploads/2012/01/Flanagan_final.pdf >

[2] HT Media v. Brainlink International, Inc. CS COMM 119/2020, Delhi High Court; see also Maruti Udyog Limited. v. Maruti Software Private Limited Case No. D2000-1038, <https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1038.html >

[3] J N Nicholas Ltd v Rose and Thistle AIR 1994 Cal 43, para 20; Hardie Trading Ltd. and Anr. V. Addisons Paint and Chemicals Ltd. 2003 Supp(3) SCR 686

[4] Thilini Kahandawaarachchi, A Study of Indian and US Trade mark Law Relating to the Effect of ‘Non-Use’ of a Trade mark, 2007 JIPRS (12) 236-243

[5] 1996 (16) PTC 512

[6] 2011 (45) PTC 488 (Bom)

[7] Unichem Laboratories Ltd. vs. Ipca Laboratories Ltd. and Ors., 2011 (45) PTC 488 (Bom)

[8] § 45 (15 U.S.C. § 1127), https://www.uspto.gov/sites/default/files/trade marks/law/Trade mark_Statutes.pdf (last accessed on 17/02/2020).

[9] Thilini Kahandawaarachchi, A Study of Indian and US Trade mark Law Relating to the Effect of ‘Non-Use’ of a Trade mark, 2007 JIPRS (12) 236-243

[10] Margeth Barrett, Finding Trade mark Use: The Historical Foundation for Limiting Infringement Liability to Uses “in the manner of a mark”, 2009 Wake Forest Law Review (43)954, < http://wakeforestlawreview.com/wp-content/uploads/2014/10/Barrett_LawReview_12.08.pdf >

[11] 2002 F.S.R. 51

[12]Uli Widmaier, “Use, Liability, and the Structure of Trade mark Law”, Hofsta Law Review(Volume 33 Issue 2), 2004, page 606, <https://scholarlycommons.law.hofstra.edu/cgi/viewcontent.cgi?article=2433&context=hlr> (last accessed on 17/02/2020).

[13] Jamie, “What Is A Parked Domain? – Guide To Parked Domain Names”,

<https://makeawebsitehub.com/parked-domains/> (last accessed on 17/02/2020)

[14] Unichem Laboratories Ltd. vs. Ipca Laboratories Ltd. and Ors., 2011 (45) PTC 488 (Bom)

[15] Rajat Agarwal and Ors. v. Spartan Online Pvt. Ltd. and ORs. CS No. 35/2017, Calcutta High Court

Columns

Jaguar Land Rover Defender Trademark case: Shaping up the future? – By Yashvardhan Rana

April 22, 2021 0Comments 151Views

The first Land Rover Defender, which was intended for life on the farm, began its journey in 1949. The Defender model has had many admirers over the years. One of them was Sir Jim Ratcliffe, a Monaco-based British billionaire turned financier and industrialist and current CEO of the newly formed Ineos Automative, part of Ineos Industries Holding Limited (“Ineos”). Sir Jim recently set about creating his own “spiritual successor” to the Defender, which he named “the Grenadier.” Due to launch by early 2022, the Grenadier has the same rugged off-roader DNA as the Defender. Unsurprisingly perhaps, Ineos has been recently sued by Jaguar Land Rover (“JLR”) for trademark infringement.

JLR has been in for a long haul to protect its trademark rights for the shape of its iconic Defender SUV in the courts for the last four years — it first lost a court battle pitted against the Ineos owner Sir Jim Ratcliffe in 2019. Interestingly, however, in a recent trademark dispute between the two automotive companies — Jaguar Land Rover v. Ineos Industries, the High Court of Justice of England and Wales held that the three-dimensional shapes of the Land Rover Defender model are not eligible for trademark registration as they lack inherent or acquired distinctiveness.

Background Jaguar Land Rover filed four trademark applications with the UK Intellectual

Property Office for the following shapes of the Land Rover Defender cars as three-dimensional marks.

These applications were filed for a range of goods and services pertaining to Class 9 (computer hardware, firmware or software), Class 12 (vehicles), Class 14 (horological and chronometric instruments), Class 28 (toys, games and playthings), and Class 37 (conversion, repair, servicing) as per the Nice Classification. The applications were refused as they were contrary to the provisions laid out in the UK Trade Marks Act 1994 (Section 3(1)(b) and (c)) insofar as they were considered to be descriptive of a sports utility vehicle and devoid of any distinctive character.

Ineos Automative opposed the applications on basis of the UK Trade Marks Act 1994 (Sections 3(1), 3(2) and 3(6) and subsequently, JLR filed a counter statement contending that they had acquired distinctiveness through extensive use in relation to the goods for which trademark protection was being applied.

The key question before the “hearing officer”, Allan James, was whether a significant section of relevant average consumers would be able to make an assertion that the shapes or the shape of their packaging for which protection was being sought would be considered distinguishable enough — in the absence of a graphic or word element — to be able to identify the source of origin of goods covered by such a three-dimensional mark when placed in the market.

JLR filed a notice of appeal to the High Court and argued, among other things, that the hearing officer had not correctly applied the tests for determining inherent and acquired distinctiveness.

High Court Judge Melissa Clarke had heard the appeal and found that the “hearing officer” had made no material error of principle in his assessment of the principle of acquired distinctiveness. She further noted that the hearing officer was not under any obligation to consider the survey evidence presented by JLR. JLR’s appeal was dismissed and the hearing officer’s decision was upheld.

Key observations:

UK Intellectual Property Office

What follows is a glimpse of what transpired back in October, 2019, wherein the hearing officer allowed the opponent Ineos to proceed with its opposition.

To begin with, the hearing officer considered a trade mark survey commissioned for the purpose of demonstrating that the marks had acquired distinctiveness. The survey was supported by Philip Malivoire, a well-known UK-based market research consultant and an expert witness who had overseen many trademark surveys in the past, assisted the tribunal in showing that up to 40 percent of respondents gave clear unequivocal answers indicating that the vehicle shown to them was Land Rover Defender. In conclusion, the hearing officer opined that the survey, therefore shows a significant, but not overwhelming, degree of recognition of the shape of the Land Rover Defender 90 amongst private car users.

The hearing officer also remarked that on the face of it, the trademarks for which protection was sought were devoid of any distinctive character in relation to the goods they were covered for as the applicants did not show that they had acquired distinctiveness through commercial use for the goods in question. The hearing officer applied the principles from one of the landmark cases of the Court of Justice of the European Union (“CJEU”) with respect to assessing the distinctive character of a mark to this case. A case heard by the German Landgericht (a mid-level court in the present-day judicial system of Germany) in 1999 (C-108/97, Windsurfing) – suggests that evidence to prove distinctiveness might include (1) the market share held by the mark, (2) the intensity and length of the trademark’s use and its geographical coverage, (3) the level of investment in promoting the mark, (4) the number of relevant consumers that associate the mark with the goods or services that originate from the owner of the mark; and (5) statements from chambers of commerce and industry or other trade associations as to the use of the mark.

Moreover, another landmark case was referred to by the hearing officer for the assessment of acquired distinctiveness – [Société de Produits Nestlé v Cadbury UK Ltd [2017] EWCA Civ 358], wherein it was opined that at least a significant proportion of average UK consumers would have identified passenger cars (in this case) corresponding to the shapes at issue as originating from a particular undertaking because of the trademarks applied for. Subsequently, the hearing officer relied on Floyd LJ’s decision in London Taxi Corp v. Frazer-Nash Research —“The applicant must prove that, as a result of the use he has made of the mark, a significant proportion of the relevant class of persons perceives the goods designated by that mark, as opposed to any other mark which might also be present, as originating from a particular undertaking. Put another way, the mark must have come to identify the relevant goods as originating from a particular undertaking and so to distinguish those goods from those of other undertakings.”

He also made an observation that the applications that had been applied for with respect to vehicles other than that of “4×4 land vehicles” were made in bad faith.

Taking the aforementioned factors into account, the hearing officer on 3rd October, 2019, directed Jaguar Land Rover Limited to pay Ineos Industries Holdings Limited a sum of £5500.

High Court Appeal

An appeal was sought by the Appellant (“JLR”) from the decision of the UK Intellectual Property Office (“UKIPO”) dated 3rd October, 2019, against the Respondent (“Ineos”). JLR appealed on two grounds relating to inherent and acquired distinctiveness of the marks. Ineos contended that the Hearing Officer’s (“HO”) decision on these two points was correct and should be upheld.

Concurring with the hearing officer’s decision and in line with the principles set out in Talk for Writing Trade Mark (O/017/17, 19th, January, 2017 with respect to sections 3(1)(a), (b), (c) & (d) of the the UK Trade Marks Act 1994 and The Royal Mint Ltd v The Commonwealth Mint and Philatelic Bureau Ltd [2017] EWHC 417 in Para 18, the High Court noted that it should not substitute its own assessment for that of the hearing officer, unless it is satisfied that he has made a material error in law or his findings are wrong. Situations deemed to be “wrong” encompass those in which a decision is (a) unsupportable, (b) simply wrong, and (c) where the High Court is doubtful about the view expressed by the hearing officer, which, on balance, it concludes to be wrong.

In considering the competing evidence put forward by each side, the High Court dismissed Land Rover’s contentions, finding that “a careful and detailed assessment of the expert evidence” and other evidence in respect of the variants relied upon by JLR had in fact been carried out by the hearing officer who is an expert himself, sitting in a specialist tribunal. The Court further opined that “their decisions should be respected unless it is quite clear that they have misdirected themselves in law. Appellate courts should not rush to find such misdirections simply because they might have reached a different conclusion on the facts or expressed themselves differently” – Baroness Hale of Richmond warned in the contest of specialist tribunals [AH (Sudan) v Secretary of State for the Home Department].

In conclusion, the High Court found that no error of principle had been made by the hearing officer in assessing inherent distinctiveness from the perspective of an average consumer, and that there was no reason to interfere with the UK IPO’s decision.

Lessons for India: What lies ahead?

This reinforces the difficulty of securing trade mark protection for 3-D shapes, even where a product is a well-known amongst a large section of the public, and in a way guides us that an appeal is not an opportunity for a retrial — the High Court is not bound to substitute its own assessment unless it is satisfied that a hearing officer in this case or otherwise a lower court perhaps, has made a material error in law or that his or her findings are wrong.

The UKIPO has done a remarkable job of assembling a compendium of precedents and in constructively applying established principles relating to three-dimensional shapes as trademarks under the Trade Marks Act, 1994. In doing so, it has struck the right cord in examining the issue at hand, while contributing to an on-going discussion on the role of conducting opinion polls and surveys in the realm of trademark law.

The bare minimum, what Indian courts should endeavour to learn from such a case is to search for a purpose of conjoining a legal standard to grant approval to distinctive trademarks that are able to prove their uniqueness in the open market backed by evidentiary value.

With the uptick in high-profile cases that have increased over the last few years with respect to trade mark protection in relation to shape marks in India, this judgment has successfully increased awareness and understanding of the concepts of establishing principles of inherent and/or acquired distinctiveness, while simultaneously providing the legal community with a blueprint for interpreting how best to craft a trade mark protection and enforcement strategy when it comes to shape marks in modern day practice.

***

The author is an Intellectual Property Lawyer based in New Delhi. He is a member of the FICCI IP Forum and Editor of The Trade Mark Reporter, International Trademark Association (INTA). He earned LL.M. in Intellectual Property Law from the Queen Mary University of London (QMUL).

Columns

The Supreme Court’s Final Order in ‘In Re: Extension of Limitation Case’: Is Complete Justice Under Article 142 Served? – By Pawan Reley

April 16, 2021 0Comments 230Views

April 16, 2021

The Hon’ble Supreme Court passed an order dated 8.03.2021 in the case of “In Re: Cognizance for extension of limitation”, Suo Motu Writ Petition (Civil) No. 3 of 2020 lifting the extension of limitation granted through its order dated 23.03.2020 and held that period from 15.03.2020 to 14.03.2021 is excluded from limitation period in order to file any Petitions/applications/suits/appeals/all other proceedings within the period of limitation prescribed under the general law of limitation or under any special laws (Both Central or State).

The order dated 8.03.2021, inter-alia did not explicitly clarify the following points:

POINT NO. 1: Whether the order dated 8.03.2021 will apply to the cases filed between 15.03.2020 to 8.03.2021?

POINT NO. 2: If the order dated 8.03.2021 will also apply to the cases filed between 15.03.2020 to 8.03.2021, then whether it will benefit the parties to the case who were in a position to file the relevant pleading before the appropriate court physically or virtually but did not file in order to harass another party?

POINT NO. 3: If the order dated 8.03.2021 did not intend to benefit the party that was in a position to file the relevant pleading before the appropriate court physically or virtually, but did not file the same deliberately. Then whether the appropriate court has any discretion to adjudicate the issue and stop the party to take undue advantage of the order dated 8.03.2021?

POINT NO. 4: What will be the impact of the order dated 8.03.2021 on the order dated 6.05.2021 and whether the cases under Section 138 of Negotiable Instruments Act, 1881 dismissed as time barred as per order dated 6.05.2020 will reopen in light of the recent order dated 8.03.2020?

POINTS NO. 1, 2 and 3:

The problem in the said order is not about lifting of the limitation or about excluding the period of limitation from 15.03.2020 to 14.03.2021 but about not giving the appropriate court or authority any discretion to adjudicate that whether the party appearing before it was really not in a position to file the relevant Petition/application/suit/appeal/any other proceeding due to the Covid-19 lockdown.

It must be noted that the object for the first order dated 23.03.2020 passed by the Hon’ble Supreme Court was to obviate the difficulties faced by the litigants and advocates due to Covid-19 and to ensure that lawyers/litigants do not have to come physically to file proceedings in respective court/tribunal across the country. The relevant parts of the order dated 23.03.2020 are extracted hereinbelow:

“This Court has taken Suo Motu cognizance of the situation arising out of the challenge faced by the country on account of Covid-19 Virus and resultant difficulties that may be faced by litigants across the country in filing their petitions/applications/suits/ appeals/all other proceedings within the period of limitation prescribed under the general law of limitation or under Special Laws (both Central and/or State). To obviate such difficulties and to ensure that lawyers/litigants do not have to come physically to file such 2 proceedings in respective Courts/Tribunals across the country including this Court, it is hereby ordered that a period of limitation in all such proceedings, irrespective of the limitation prescribed under the general law or Special Laws whether condonable or not shall stand extended w.e.f. 15th March 2020 till further order/s to be passed by this Court in present proceedings.”

It is relevant to note that the situation of Court functioning has been different in each taluka, district and State during COVID-19 after 15.03.2020. Somewhere the functioning has been extremely well, while somewhere it has been equally bad. Somewhere the court was being managed through e-filling and somewhere e-filing did not exist. For example, in Delhi, the district courts were completely being managed through e-filling. Delhi District Courts had given the option to the parties to file the cases either physically or virtually according to their convenience. There are many States or districts which followed the same path as Delhi. It means that there are many courts in the country where the lawyers/litigants did not have to come to court to file the pleading physically during Covid-19. The situation on 23.03.2020 was quite different from the situation existing in March 2021.

Thus, three situations arise to which the order dated 8.03.2021 passed by the Hon’ble Supreme Court applies:

Situation No. 1: Where the party was really not in a position to file the pleading physically or virtually due to Covid-19.

Situation No.2: Where the party was clearly in a position to file the pleading physically or virtually despite Covid-19 and the same is evident from its past records.

Situation No.3: Where it is not clear by the assessment of the appropriate court that whether the party was in a position file the pleading physically or virtually during the pandemic.

The order dated 8.03.2021 rightful and serves justice in Situation No. 1 and in Situation No. 3. However, it may create harassment and result in injustice for the parties in Situation No. 2. At this juncture, it is apt and apposite to narrate what falls under Situation No. 2. For example, if the plaintiff has filed the Summary Suit under Order 37 for the recovery of money on September 1, 2020. The defendant has filed the memo of appearance within time, that is on September 8, 2020. The Court has issued the Summons for Judgment to the defendant which was duly served to the defendant on September 22, 2020. Here, the defendant was required to file “leave to defend” within 10 days i.e. on or before October 2, 2020. Defendant did not file leave to defend in time rather filed some other applications such as the application under Section 8 of the Arbitration of Conciliation Act to refer the matter to the arbitrator. It is evident that the defendant is able to file all the applications and pleadings in time. When asked by the court the reason for non-filling the “leave to defend” on time, the defendant shows the order dated 8.03.2021 and states that he still has 90 days’ time period to file leave to defend.

The questions here are whether the order dated 8.03.2021 is not going against the interest of the plaintiff who had an extremely good case and filed the summary suit for the speedy recovery of money? Will the defendant not take undue advantage of the order dated 8.03.2021 to harass the plaintiff and will bear no consequences? Whether the order dated 8.03.2021 will not make the object and purpose of the special statute otiose? Was it not rightful for the Hon’ble Supreme Court to leave the discretion on the appropriate court to decide whether the party was really not in a position to file relevant pleading in time under general or special law due to the pandemic? Whether the order dated 8.03.2021 really served complete justice between the parties even if it was evident that the party was in a position to file the pleading physically or virtually during Covid-19?

POINT NO. 4:

Another problem in the order 8.03.2021 is that it did not clarify or delve into the order dated 6.05.2020 in IA No. 48411/2020 in the said case. The order dated 6.05.2020 provides that:

In case the limitation has expired after 15.03.2020 then the period from 15.03.2020 till the date on which the lockdown is lifted in the jurisdictional area where the dispute lies or where the cause of action arises shall be extended for a period of 15 days after the lifting of lockdown.

The problem now is that what will happen to the cases under Section 138 of the Negotiable Instrument Acts, 1881 where the complaints were dismissed by the trial court being time barred in light of the order dated 6.05.2020. For example, if the complainant had served the legal notice to the defendant on 1.03.2020 under Section 138 of the Negotiable Instruments Act. Then the limitation for filling the case will expire on 15.04.2020 which is clearly after 15.03.2020. Complainant did not file the complaint in time in light of the order dated 23.03.2020 passed by the Hon’ble Supreme Court. If the lockdown was lifted on 10.05.2020 in the area where the case was required to be filed, then the complainant in light of the order dated 6.05.2020 had time to file the complaint before 25.05.2020, not beyond it. Suppose the complainant filed the complaint on 25.06.2020 before the appropriate court and if the same was dismissed by the court being time barred as per order dated 6.05.2020, then will the recent order dated 8.03.2021 provide relief to the aforementioned cases also? Will cases under Section 138 of Negotiable Instruments Act dismissed as time barred as per order dated 6.05.2020 reopen in light of the recent order dated 8.03.2020?

It must be noted that the Hon’ble Supreme Court passed all the orders in “In Re: Cognizance for extension of limitation”, Suo Motu Writ Petition (Civil) No. 3 of 2020 under Article 142 of the Constitution of India in order to serve complete justice to the parties to the Petitions/applications/suits/appeals/all other proceedings. Thus, if the outcome of the order is used by one party merely to harass another party for not filling the pleadings in time, as stated above, then the entire purpose of all the orders will fail. It must be noted that the eventualities arising in every case may be different and therefore were required to be dealt with accordingly, in the facts of circumstances of each case.

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Pawan Reley is an advocate practicing at the Supreme Court of India.

Columns

Extent of Applicability of Section 202 of ‘The Criminal Procedure Code, 1973’ to Section 138 of ‘The Negotiable Instruments Act, 1881’: A Critique – By Rajat Mathur

April 15, 2021 0Comments 365Views

April 15, 2021

Applicability of Section 202 Criminal Procedure Code, 1973 (“CrPC”) (Re: further inquiry) to the Negotiable Instruments Act, 1881 (“NI Act”) cases has been a matter of great divergence, as various High Courts in the country have given differing views. Pertinently, it is one of the contributory factors in delay of disposal of NI Act cases at the magistracy level.

On careful perusal of rulings on this subject, two views emerge:

First View – Section 202 CrPC has limited application to NI Act cases. (See: Bansilal S. Kabra Case[1]; Rajesh Chalke v. State of Maharashtra[2]{vide implied application}; Vinod vs. SBI Global Factors Ltd.[3]; Mesh Trans Gears Private Limited Case[4]; Rajul Ketan Raj Case[5]; Girish Dharmchand Chordiya Case[6]; Kunal Rajesh Kothari Case[7]; and Mohit Dwivedi vs. Jagajog & Ors. Case[8])

Second View – Section 202 CrPC has mandatory application to NI Act cases. (See: Nilu Chopra & Anr. vs. Bharti[9]; K.T. Joseph vs. State of Kerala[10]; S.C. Mathur (Capt.) & Anr. vs. Elektronik Lab & Ors[11]; Netcore Solutions Pvt. Ltd. vs. Pincale Teleservices Pvt. Ltd.[12] and Parth Bhadresh Mehta & Ors.[13])

Pertinently, Kerela High Court[14] (Ernakulum Bench) in ‘K.S. Joseph vs. Philips Carbon Black Ltd.’ refused to interfere on issue of cognizance being bad and asked thePetitioner/Accused to raise the same before Magistrate Court concerned. The matter reached the Hon’ble Supreme Court of India, wherein, Apex Court did not divulge into the requirement of enquiry under Section 202 CrPC to NI Act, instead left this question of law open at Para-10[15], and left it to be determined by the Magistrate. Pending matter has reached Hon’ble Supreme Court of India on the issue of applicability, if any, of Section 202 CrPC to NI Act, which is pending adjudication currently before the Apex Court.

In view of the aforesaid conflict, the following suggestions can be considered in the interregnum with respect to the applicability of Section 202 CrPC to NI Act, cases, which read as under:-

i. Application of mind must be made by Magistrate Court at stage of Sections 200/202/203 CrPC, while taking cognizance and issuing process under Section 204 CrPC to meet the test of sufficient ground for proceeding in the light of check-list provided for attraction of deemed offence as per proviso (a, b & c) to Section 138 r/w 142(1)(a),(b) r/w presumptions under NI Act.

ii. The Magistrate must be cognizant of the twin requirements & challenge at threshold-of giving a bona fide Complainant a fuller and more exhaustive opportunity to substantiate his genuine grievance and of showing the door to a vexatious Complainant trying to abuse the criminal process.

iii. Ordinarily, process can be issued under Section 204 CrPC at the end of enquiry under Section 200 CrPC i.e. after recording the sworn statement of Complainant and his witnesses, if any, present if the requisite satisfaction that there is sufficient ground for proceeding can be entertained by Magistrate on the materials available.

iv. Such enquiry may be conducted by Magistrate himself or he may direct an investigation to be conducted by a police officer or any other person.

v. Magistrate, in case of person residing outside his jurisdiction, must ordinarily come to a conclusion whether there is sufficient ground to proceed against such Accused, only after conducting an enquiry under Section 202 CrPC. Such enquiry may be conducted by Magistrate himself or he may direct an investigation to be conducted by a police officer or any other person.

vi. Notwithstanding, fact that requirement of (v) is introduced by a specific amendment substituting the permissive “may” by the command of “shall”, non-compliance does not vitiate cognizance taken and consequent issue of process as the purpose of such an enquiry under Sections 200 & 202 CrPC is only to decide whether or not there is sufficient ground for proceeding.

vii. Section 202 CrPC as amended applies to prosecutions under Section 138 NI Act also in light of Section 4(2) CrPC, and in absence of any specific contra provision in Section 138 NI Act.

viii. Ordinarily in a prosecution under Section 138 NI Act, if a proper complaint is filed supported by necessary documents and a proper Affidavit is filed under Section 145 NI Act, it may not be necessary for Magistrate to proceed to hold enquiry under Section 202 CrPC, as requisite satisfaction can be entertained at end of Enquiry under Section 200 CrPC itself.

ix. But in a case where there is possibility of dispute regarding territorial jurisdiction or dispute regarding complicity alleged with the help of Section 141 NI Act, it will be proper, necessary & advisable for the Magistrate to hold Enquiry under Section 202 CrPC, if requisite satisfaction is not induced by the materials placed before it, ibid.

x. Even in such enquiry under Section 202 CrPC in a prosecution under Section 138 NI Act, it is not invariably necessary to examine Complainant and his witnesses personally on oath. They can be directed to file Affidavit or Additional Affidavit under Section 145 NI Act on the specific aspects where materials are found necessary or the Court entertains doubts. Section 145, ibid, shall apply to the stage of Enquiry under Section 202 CrPC also. Courts must be specifically cognizant of need for expedition in prosecution under Section 138 NI Act.

xi. In a case where requisite satisfaction under Section 204 CrPC can be entertained convincingly by the materials available on record, the non-compliance with Section 202 CrPC does not ipso-facto vitiate cognizance taken or process issued. Section 202 CrPC does not contemplate or mandate a ritualistic enquiry merely to satisfy the letter of the procedural/adjectival law even after requisite satisfaction under Sections 203/204 CrPC is convincingly entertained by the Court. In this sense, requirement introduced by Amendment is only directory and not mandatory, though all Courts are certainly expected to follow that stipulation.

As can be seen from the above, application of Section 202 CrPC to NI Act from the policy lens with only ‘need based’ (limited/ directory interpretation) application, will go long way in removal of scuttle & delays at the Magisterial level.

Lastly, this issue of extent of applicability of Section 202 CrPC to NI Act, ibid, is also being considered, inter-alia, by the Hon’ble Supreme Court of India in a Constitution Bench case titled as “Makwana Mangaldas Tulsidas vs. The State of Gujarat & Anr., [SLP (Crl.) No.5464 / 2016, now converted into Suo Moto W.P. (Crl.) No. 02 of 2020], which is pending consideration at the moment.

***

Views are personal of the author.

Rajat Mathur [B.Com (H) SRCC, DU; LLB, Law Faculty, DU] is a practicing lawyer in Delhi. Despite gaining experience in Civil and Tax Law, he has worked extensively on the criminal side and has represented bureaucrats and Government servants in matters related to the ‘Coal Block Allocation Scam case’. At 33 years of age, in 2019 Mr. Mathur got the controversial acquittal of former Coal Secretary, Mr. H. C. Gupta, a decorated IAS office (now retired) in the high-profile case.

In writing this article, Mr Mathur was assisted by Srish Kumar Mishra (Campus Law Centre, Law Faculty, DU), a practicing advocate.

[1] Reported in 2010 ALL MR (Cri) 3168

[2] Reported in 2011 (1) MHLJ 244 (FB)

[3] Reported in 2011 (4) MHLJ 282

[4] Reported 2013 (6) KARLJ 592

[5] Reported in 2016 (5) MHLJ 58

[6] Reported in 2018 (3) BOMCR (CRI) 473

[7] (2018) 2 DCR 560

[8] Reported in (2019) 2 NEJ 684

[9] Reported in (2009) 10 SCC 184

[10] Reported in (2009) 15 SCC 199

[11] Reported in 2010 (8) LJ Soft 103

[12] Reported in 2013 ALL MR (Cri) 1377

[13] Reported in 2019 (5) MHLJ 771

[14] Reported in 2012 SCC Online Ker 20411

[15] Reported in (2016) 11 SCC 105 (Paras 1 & 10)

Interviews

Interviews, Trending

Time for judiciary to introspect and see what can be done to restore people’s faith – Justice Lokur

February 3, 2020 0Comments 1159Views

Justice Madan B Lokur, was a Supreme Court judge from June 2012 to December 2018. He is now a judge of the non-resident panel of the Supreme Court of Fiji. He spoke to LegitQuest on January 25, 2020.

Q: You were a Supreme Court judge for more than 6 years. Do SC judges have their own ups and downs, in the sense that do you have any frustrations about cases, things not working out, the kind of issues that come to you?

A: There are no ups and downs in that sense but sometimes you do get a little upset at the pace of justice delivery. I felt that there were occasions when justice could have been delivered much faster, a case could have been decided much faster than it actually was. (When there is) resistance in that regard normally from the state, from the establishment, then you kind of feel what’s happening, what can I do about it.

Q: So you have had the feeling that the establishment is trying to interfere in the matters?

A: No, not interfering in matters but not giving the necessary importance to some cases. So if something has to be done in four weeks, for example if reply has to be filed within four weeks and they don’t file it in four weeks just because they feel that it doesn’t matter, and it’s ok if we file it within six weeks how does it make a difference. But it does make a difference.

Q: Do you think this attitude is merely a lax attitude or is it an infrastructure related problem?

A: I don’t know. Sometimes on some issues the government or the establishment takes it easy. They don’t realise the urgency. So that’s one. Sometimes there are systemic issues, for example, you may have a case that takes much longer than anticipated and therefore you can’t take up some other case. Then that necessarily has to be adjourned. So these things have to be planned very carefully.

Q: Are there any cases that you have special memories of in terms of your personal experiences while dealing with the case? It might have moved you or it may have made you feel that this case is really important though it may not be considered important by the government or may have escaped the media glare?

A: All the cases that I did with regard to social justice, cases which concern social justice and which concern the environment, I think all of them were important. They gave me some satisfaction, some frustration also, in the sense of time, but I would certainly remember all these cases.

Q: Even though you were at the Supreme Court as a jurist, were there any learning experiences for you that may have surprised you?

A: There were learning experiences, yes. And plenty of them. Every case is a learning experience because you tend to look at the same case with two different perspectives. So every case is a great learning experience. You know how society functions, how the state functions, what is going on in the minds of the people, what is it that has prompted them to come the court. There is a great learning, not only in terms of people and institutions but also in terms of law.

Q: You are a Judge of the Supreme Court of Fiji, though a Non-Resident Judge. How different is it in comparison to being a Judge in India?

A: There are some procedural distinctions. For example, there is a great reliance in Fiji on written submissions and for the oral submissions they give 45 minutes to a side. So the case is over within 1 1/2 hours maximum. That’s not the situation here in India. The number of cases in Fiji are very few. Yes, it’s a small country, with a small number of cases. Cases are very few so it’s only when they have an adequate number of cases that they will have a session and as far as I am aware they do not have more than two or three sessions in a year and the session lasts for maybe about three weeks. So it’s not that the court sits every day or that I have to shift to Fiji. When it is necessary and there are a good number of cases then they will have a session, unlike here. It is then that I am required to go to Fiji for three weeks. The other difference is that in every case that comes to the (Fiji) Supreme Court, even if special leave is not granted, you have to give a detailed judgement which is not the practice here.

Q: There is a lot of backlog in the lower courts in India which creates a problem for the justice delivery system. One reason is definitely shortage of judges. What are the other reasons as to why there is so much backlog of cases in the trial courts?

A: I think case management is absolutely necessary and unless we introduce case management and alternative methods of dispute resolution, we will not be able to solve the problem. I will give you a very recent example about the Muzaffarpur children’s home case (in Bihar) where about 34 girls were systematically raped. There were about 17 or 18 accused persons but the entire trial finished within six months. Now that was only because of the management and the efforts of the trial judge and I think that needs to be studied how he could do it. If he could do such a complex case with so many eyewitnesses and so many accused persons in a short frame of time, I don’t see why other cases cannot be decided within a specified time frame. That’s case management. The second thing is so far as other methods of disposal of cases are concerned, we have had a very good experience in trial courts in Delhi where more than one lakh cases have been disposed of through mediation. So, mediation must be encouraged at the trial level because if you can dispose so many cases you can reduce the workload. For criminal cases, you have Plea Bargaining that has been introduced in 2009 but not put into practice. We did make an attempt in the Tis Hazari Courts. It worked to some extent but after that it fell into disuse. So, plea bargaining can take care of a lot of cases. And there will be certain categories of cases which we need to look at carefully. For example, you have cases of compoundable offences, you have cases where fine is the punishment and not necessarily imprisonment, or maybe it’s imprisonment say one month or two month’s imprisonment. Do we need to actually go through a regular trial for these kind of cases? Can they not be resolved or adjudicated through Plea Bargaining? This will help the system, it will help in Prison Reforms, (prevent) overcrowding in prisons. So there are a lot of avenues available for reducing the backlog. But I think an effort has to be made to resolve all that.

Q: Do you think there are any systemic flaws in the country’s justice system, or the way trial courts work?

A: I don’t think there are any major systemic flaws. It’s just that case management has not been given importance. If case management is given importance, then whatever systematic flaws are existing, they will certainly come down.

Q; And what about technology. Do you think technology can play a role in improving the functioning of the justice delivery system?

I think technology is very important. You are aware of the e-courts project. Now I have been told by many judges and many judicial academies that the e-courts project has brought about sort of a revolution in the trial courts. There is a lot of information that is available for the litigants, judges, lawyers and researchers and if it is put to optimum use or even semi optimum use, it can make a huge difference. Today there are many judges who are using technology and particularly the benefits of the e-courts project is an adjunct to their work. Some studies on how technology can be used or the e-courts project can be used to improve the system will make a huge difference.

Q: What kind of technology would you recommend that courts should have?

A: The work that was assigned to the e-committee I think has been taken care of, if not fully, then largely to the maximum possible extent. Now having done the work you have to try and take advantage of the work that’s been done, find out all the flaws and see how you can rectify it or remove those flaws. For example, we came across a case where 94 adjournments were given in a criminal case. Now why were 94 adjournments given? Somebody needs to study that, so that information is available. And unless you process that information, things will just continue, you will just be collecting information. So as far as I am concerned, the task of collecting information is over. We now need to improve information collection and process available information and that is something I think should be done.

Q: There is a debate going on about the rights of death row convicts. CJI Justice Bobde recently objected to death row convicts filing lot of petitions, making use of every legal remedy available to them. He said the rights of the victim should be given more importance over the rights of the accused. But a lot of legal experts have said that these remedies are available to correct the anomalies, if any, in the justice delivery. Even the Centre has urged the court to adopt a more victim-centric approach. What is your opinion on that?

You see so far as procedures are concerned, when a person knows that s/he is going to die in a few days or a few months, s/he will do everything possible to live. Now you can’t tell a person who has got terminal cancer that there is no point in undergoing chemotherapy because you are going to die anyway. A person is going to fight for her/his life to the maximum extent. So if a person is on death row s/he will do everything possible to survive. You have very exceptional people like Bhagat Singh who are ready to face (the gallows) but that’s why they are exceptional. So an ordinary person will do everything possible (to survive). So if the law permits them to do all this, they will do it.

Q: Do you think law should permit this to death row convicts?

A: That is for the Parliament to decide. The law is there, the Constitution is there. Now if the Parliament chooses not to enact a law which takes into consideration the rights of the victims and the people who are on death row, what can anyone do? You can’t tell a person on death row that listen, if you don’t file a review petition within one week, I will hang you. If you do not file a curative petition within three days, then I will hang you. You also have to look at the frame of mind of a person facing death. Victims certainly, but also the convict.

Q: From the point of jurisprudence, do you think death row convicts’ rights are essential? Or can their rights be done away with?

A: I don’t know you can take away the right of a person fighting for his life but you have to strike a balance somewhere. To say that you must file a review or curative or mercy petition in one week, it’s very difficult. You tell somebody else who is not on a death row that you can file a review petition within 30 days but a person who is on death row you tell him that I will give you only one week, it doesn’t make any sense to me. In fact it should probably be the other way round.

Q: What about capital punishment as a means of punishment itself?

A: There has been a lot of debate and discussion about capital punishment but I think that world over it has now been accepted, more or less, that death penalty has not served the purpose for which it was intended. So, there are very few countries that are executing people. The United States, Saudi Arabia, China, Pakistan also, but it hasn’t brought down the crime rate. And India has been very conservative in imposing the death penalty. I think the last 3-4 executions have happened for the persons who were terrorists. And apart from that there was one from Calcutta who was hanged for rape and murder. But the fact that he was hanged for rape and murder has not deterred people (from committing rape and murder). So the accepted view is that death penalty has not served the purpose. We certainly need to rethink the continuance of capital punishment. On the other hand, if capital punishment is abolished, there might be fake encounter killings or extra judicial killings.

Q: These days there is the psyche among people of ‘instant justice’, like we saw in the case of the Hyderabad vet who was raped and murdered. The four accused in the case were killed in an encounter and the public at large and even politicians hailed it as justice being delivery. Do you think this ‘lynch mob mentality’ reflects people’s lack of faith in the justice system?

A: I think in this particular case about what happened in Telangana, investigation was still going on. About what actually happened there, an enquiry is going on. So no definite conclusions have come out. According to the police these people tried to snatch weapons so they had to be shot. Now it is very difficult to believe, as far as I am concerned, that 10 armed policeman could not overpower four unarmed accused persons. This is very difficult to believe. And assuming one of them happened to have snatched a (cop’s) weapon, maybe he could have been incapacitated but why the other three? So there are a lot of questions that are unanswered. So far as the celebrations are concerned, the people who are celebrating, do they know for certain that they (those killed in the encounter) were the ones who did the crime? How can they be so sure about it? They were not eye witnesses. Even witnesses sometimes make mistakes. This is really not a cause for celebration. Certainly not.

Q: It seems some people are losing their faith in the country’s justice delivery system. How to repose people’s faith in the legal process?

A: You see we again come back to case management and speedy justice. Suppose the Nirbhaya case would have been decided within two or three years, would this (Telangana) incident have happened? One can’t say. The attack on Parliament case was decided in two or three years but that has not wiped out terrorism. There are a lot of factors that go into all this, so there is a need to find ways of improving justice delivery so that you don’t have any extremes – where a case takes 10 years or another extreme where there is instant justice. There has to be something in between, some balance has to be drawn. Now you have that case where Phoolan Devi was gangraped followed by the Behmai massacre. Now this is a case of 1981, it has been 40 years and the trial court has still not delivered a judgement. It’s due any day now, (but) whose fault is that. You have another case in Maharashtra that has been transferred to National Investigating Agency two years after the incident, the Bhima-Koregaon case. Investigation is supposedly not complete after two years also. Whose fault is that? So you have to look at the entire system in a holistic manner. There are many players – the investigation agency is one player, the prosecution is one player, the defence is one player, the justice delivery system is one player. So unless all of them are in a position to coordinate… you cannot blame only the justice delivery system. If the Telangana police was so sure that the persons they have caught are guilty, why did they not file the charge sheet immediately? If they were so sure the charge sheet should have been filed within one day. Why didn’t they do it?

Q: At the trial level, there are many instances of flaws in evidence collection. Do you think the police or whoever the investigators are, do they lack training?

A: Yes they do! The police lacks training. I think there is a recent report that has come out last week which says very few people (in the police) have been trained (to collect evidence).

Q: You think giving proper training to police to prepare a case will make a difference?

A: Yes, it will make a difference.

Q: You have a keen interest in juvenile justice. Unfortunately, a lot of heinous crimes are committed by juveniles. How can we correct that?

A: You see it depends upon what perspective we are looking at. Now these heinous crimes are committed by juveniles. Heinous crimes are committed by adults also, so why pick upon juveniles alone and say something should be done because juveniles are committing heinous crimes. Why is it that people are not saying that something should be done when adults are committing heinous crimes? That’s one perspective. There are a lot of heinous crimes that are committed against juveniles. The number of crimes committed against juveniles or children are much more than the crimes committed by juveniles. How come nobody is talking about that? And the people committing heinous crimes against children are adults. So is it okay to say that the State has imposed death penalty for an offence against the child? So that’s good enough, nothing more needs to be done? I don’t think that’s a valid answer. The establishment must keep in mind the fact that the number of heinous crimes against children are much more than those committed by juveniles. We must shift focus.

Q: Coming to NRC and CAA. Protests have been happening since December last year, the SC is waiting for the Centre’s reply, the Delhi HC has refused to directly intervene. Neither the protesters nor the government is budging. How do we achieve a breakthrough?

A: It is for the government to decide what they want to do. If the government says it is not going to budge, and the people say they are not going to budge, the stalemate could continue forever.

Q: Do you think the CAA and the NRC will have an impact on civil liberties, personal liberties and people’s rights?

A: Yes, and that is one of the reasons why there is protest all over the country. And people have realised that it is going to happen, it is going to have an impact on their lives, on their rights and that’s why they are protesting. So the answer to your question is yes.

Q: Across the world and in India, we are seeing an erosion of the value system upholding rights and liberties. How important is it for the healthy functioning of a country that social justice, people’s liberties, people’s rights are maintained?

A: I think social justice issues, fundamental rights are of prime importance in our country, in any democracy, and the preamble to our Constitution makes it absolutely clear and the judgement of the Supreme Court in Kesavananda Bharati and many other subsequent judgments also make it clear that you cannot change the basic structure of the Constitution. If you cannot do that then obviously you cannot take away some basic democratic rights like freedom of assembly, freedom of movement, you cannot take them away. So if you have to live in a democracy, we have to accept the fact that these rights cannot be taken away. Otherwise there are many countries where there is no democracy. I don’t know whether those people are happy or not happy.

Q: What will happen if in a democracy these rights are controlled by hook or by crook?

A: It depends upon how much they are controlled. If the control is excessive then that is wrong. The Constitution says there must be a reasonable restriction. So reasonable restriction by law is very important.

Q: The way in which the sexual harassment case against Justice Gogoi was handled was pretty controversial. The woman has now been reinstated in the Supreme Court as a staffer. Does this action of the Supreme Court sort of vindicate her?

A: I find this very confusing you know. There is an old joke among lawyers: Lawyer for the petitioner argued before the judge and the judge said you are right; then the lawyer for the respondent argued before the judge and the judge said you’re right; then a third person sitting over there says how can both of them be right and the judge says you’re also right. So this is what has happened in this case. It was found (by the SC committee) that what she said had no substance. And therefore, she was wrong and the accused was right. Now she has been reinstated with back wages and all. I don’t know, I find it very confusing.

Q: Do you think the retirement age of Supreme Court Judges should be raised to 70 years and there should be a fixed tenure?

A: I haven’t thought about it as yet. There are some advantages, there are some disadvantages. (When) You have extended age or life tenure as in the United States, and the Supreme Court has a particular point of view, it will continue for a long time. So in the United States you have liberal judges and conservative judges, so if the number of conservative judges is high then the court will always be conservative. If the number of liberal judges is high, the court will always be liberal. There is this disadvantage but there is also an advantage that if it’s a liberal court and if it is a liberal democracy then it will work for the benefit of the people. But I have not given any serious thought onthis.

Q: Is there any other thing you would like to say?

A: I think the time has come for the judiciary to sit down, introspect and see what can be done, because people have faith in the judiciary. A lot of that faith has been eroded in the last couple of years. So one has to restore that faith and then increase that faith. I think the judiciary definitely needs to introspect.

Interviews

“The IT infrastructure available with District Courts must be upgraded to enable effective and smooth functioning of the hybrid system via VC hearing.” – Satyam Thareja

‘The Indian Arbitration framework is moving towards a new institutional arbitration-friendly regime. However, with respect to Investment Arbitration, we are still a long way from becoming an encumbrance-free jurisdiction.’ – Anubhab Sarkar

‘None of us chose litigation to sit behind computers and argue. But we need to be aware of the realities. Covid still does not have a cure, nor is the vaccine readily available.’ – Shivani Luthra Lohiya

‘In the past decade there have been many changes in the laws, but these have unfortunately not been properly absorbed in smaller metropolitan regions where lawyers are still likely to face courts that are not exactly aware of these changes.’ – Vibhanshu Srivastava

“Legal systems have been built to fit national boundaries. On the cyberspace, transitional is the ‘new normal’. Coping with this legal pluralism in the absence of appropriate cross-border frameworks is a challenge for developed and developing countries alike.” – Dr Subhajit Basu, FRSA

‘In the practice of white-collar crime in India, there is an increasing realization among professionals that the system lacks the mechanism to grant a pardon or some form of leniency.’ – Faisal Sherwani

‘Corporate litigation can go on for years with negligible results, which can be difficult and frustrating for a company, especially one looking to recover debts. It can be challenging to keep the client’s morale up.’ – Tania Ahlawat

‘Anything that makes a product or service cheaper, faster, more convenient, a better experience will be welcome in the post-Covid world… Laws must enable businesses, not stifle them.’ – Kunal R. Sarpal

‘Technology is making a lot of legal skill sets redundant. You can get due diligence done by bots instead of lawyers. We may also have bots who will predict the outcome of a case on the basis of precedents and various other inputs.’ – Debanshu Khettry

“In the post-pandemic world order, mediation should be one of the most preferred modes for dispute redressal.” – Nandini Gore

Over 3550 posts of Office Assistant, Sweeper and others available at Madras High Court; 8th pass can apply

Opening at the Law Chambers of Dr Menaka Guruswamy, Senior Advocate, Supreme Court

Openings in the Law Chambers of Gaurav Bhatia, Senior Advocate

Constitutional Validity of the Appointment of Non-Member of the Legislature as Chief Minister: A Critical Analysis in Light of the West Bengal Elections, 2021 – By Pawan Reley

Domain Name Parking – Sufficient to Show Use of a Trade Mark in India? – By Sujata Chaudhri, Deeksha Anand & Amay Jain

Token Use

Commercial Magnetism

Analysis: Parked Domain Name

Conclusion

Jaguar Land Rover Defender Trademark case: Shaping up the future? – By Yashvardhan Rana

The Supreme Court’s Final Order in ‘In Re: Extension of Limitation Case’: Is Complete Justice Under Article 142 Served? – By Pawan Reley

Extent of Applicability of Section 202 of ‘The Criminal Procedure Code, 1973’ to Section 138 of ‘The Negotiable Instruments Act, 1881’: A Critique – By Rajat Mathur

Supreme Court Recent Judgment

NATIONAL INSURANCE COMPANY LTD. V. BIRENDER

M.E. SHIVALINGAMURTHY V. CENTRAL BUREAU OF INVESTIGATION, BENGALURU

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