‘Reportable’ IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NO.52 OF 2005

Shalimar Chemical Works Ltd.                     Appellant

Versus

Surendra Oil & Dal Mills (Refineries) & Ors.   Respondents

JUDGMENT

AFTAB ALAM, J.

1. This  is  the  plaintiff’s  appeal  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  mark  “Shalimar”.  The  appellant  claims  to  be  the  

registered owner  of  the  trade  mark “Shalimar” in  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  name  

“Shalimar” on containers, labels or wrappers, or using any name identical or  

deceptively similar to the appellant’s trade 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 were “marked” by the trial court as  

Exs.A1-A5,  “subject  to  objection  of  proof  and  admissibility”.  At  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  

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certificates  in  their  original.  In  that  connection,  the  trial  court  made  the  

following observations:

“All the above documents i.e. Ex.A1-A5 are marked subject to  objection of proof and admissible (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.

Sec.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 validity  thereof."

Therefore the 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.”

3. 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  

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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  the  appellant’s  suit  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  (hereafter  ‘CPC’),  the  

division bench made the following observations:

“In three 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  

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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.”

5. Once the original trade mark registration certificates were taken off  

the record of the case, the appellant’s suit 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.  

7. Mr.  P.P.  Rao,  learned  senior  advocate,  appearing  for  the  appellant  

assailed both, the procedure adopted by the trial court and the view taken by  

the division bench of the High Court, on the basis of the provisions of Order  

41, Rule 27. Mr. Rao submitted that if the trial court was of the view that the  

Xerox copies of the documents in question were not admissible in evidence,  

it ought to have returned the copies at the time of their submission. In that  

event, the appellant would have substituted them by the original registration  

certificates and that would have been the end of the matter.  But once the  

Xerox copies submitted by the appellant were marked as exhibits, it had no  

means to know that while pronouncing the judgment, the court would keep  

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those documents out of consideration, thus, causing great prejudice to the  

appellant. Mr. Rao submitted that the provision of Order 13, Rule 4 of CPC  

provides for every document admitted in evidence in the suit being endorsed  

by or on behalf of the court, and the endorsement signed or initialed by the  

judge amounts to admission of the document in evidence. An objection to  

the admissibility of the document can be raised before such endorsement is  

made  and  the  court  is  obliged  to  form  its  opinion  on  the  question  of  

admissibility  and express  the  same on which opinion  would depend,  the  

document being endorsed admitted or not admitted in evidence. In support  

of  the  submission  he  relied  upon  a  decision  of  this  Court  in  R.V.E.   

Venkatachala Gounder vs. Arulmigu Viswesaraswami & V.P. Temple and  

Another,  2003  (8)  SCC  752  (paragraph  20)  where  it  was  observed  as  

follows:

“20…… The  objections  as  to  admissibility  of  documents  in  evidence  may be  classified  into  two classes:-(i)  an  objection  that  the  document  which  is  sought  to  be  proved  is itself  inadmissible in evidence; and (ii) where the objection does not  dispute  the  admissibility  of  the  document  in  evidence  but  is  directed  towards  the mode  of  proof  alleging  the  same  to  be  irregular  or  insufficient.  In  the  first  case,  merely  because  a  document has been marked as 'an exhibit', an objection as to its  admissibility is not excluded and is available to be raised even  at a later stage or even in appeal or revision. In the latter case,  the objection should be taken when the evidence is  tendered  and  once  the  document  has  been  admitted  in  evidence  and  marked as an exhibit, the objection that it should not have been  admitted in evidence or that the mode adopted for proving the  

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document  is  irregular  cannot  be  allowed to  be  raised at  any  stage subsequent to the marking of the document as an exhibit.  The latter proposition is a rule of fair play. The crucial test is  whether an objection, if taken at the appropriate point of time,  would have enabled the party tendering the evidence to cure the  defect and resort to such mode of proof as would be regular.  The omission to object becomes fatal because by his failure the  party entitled to object allows the party tendering the evidence  to act on an assumption that the opposite party is not serious  about the mode of proof. On the other hand, a prompt objection  does  not  prejudice  the  party  tendering  the  evidence,  for  two  reasons:  firstly,  it  enables  the  Court  to  apply  its  mind  and  pronounce its decision on the question of admissibility then and  there; and secondly, in the event of finding of the Court on the  mode of  proof  sought  to  be adopted going against  the  party  tendering the evidence, the opportunity of seeking indulgence  of the Court for permitting a regular mode or method of proof  and  thereby  removing  the  objection  raised  by  the  opposite  party,  is  available  to  the  party  leading  the  evidence.  Such  practice and procedure is fair to both the parties. Out of the two  types of objections, referred to hereinabove in the latter case,  failure  to  raise  a  prompt  and  timely  objection  amounts  to  waiver  of  the  necessity  for  insisting  on  formal  proof  of  a  document,  the  document  itself  which is  sought  to  be proved  being  admissible  in  evidence.  In  the  first  case,  acquiescence  would be no bar to raising the objection in a superior Court.”

8. Learned counsel contended that since the procedure followed by the  

trial court was contrary to the procedure prescribed by Order 13, Rule 4, in  

appeal against the trial court judgment, the learned single judge of the High  

Court  was  fully  justified  in  accepting  the  originals  of  the  documents  

concerned in evidence and the division bench was not right in holding that  

the originals of the concerned documents were wrongly taken in evidence.  

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Mr.  Rao  submitted  that  while  enumerating  the  circumstances  in  which  

production  of  additional  evidence  may  be  allowed,  the  division  bench  

overlooked the words “or for any other  substantial  reason” at  the end of  

clause (b) of rule 27 (1). He submitted that those words greatly enlarged the  

scope of the provision and were especially relevant for a case like the one in  

hand where the plaintiff  had suffered great prejudice due to the incorrect  

procedure followed by the trial court. In support of his submission he relied  

upon the decision  of  this  Court  in  K. Venkataramiah vs.  A.  Seetharama  

Reddy & Ors., 1964 (2) SCR 35 (at page 46).

“… Apart from this, it is well to remember that the appellate  court has the power to allow additional evidence not only if it  requires such evidence "to enable it to pronounce judgment" but  also for "any other substantial cause". There may well be cases  where even though the court finds that it is able to pronounce  judgment on the state of the record as it is, and so, it cannot  strictly say that it requires additional evidence "to enable it to  pronounce judgment," it  still  considers  that  in the interest  of  justice something which remains obscure should be filled up so  that  it  can  pronounce  its  judgment  in  a  more  satisfactory  manner.  Such  a  case  will  be  one  for  allowing  additional  evidence "for any other substantial cause" under Rule 27(1)(b)  of the Code. ”

9. Mr.  Rao further  submitted that  the very narrow view of Order  41,  

Rule 27 taken by the division bench has only led to frustrate the ends of  

justice. In order to lend strength to his submission, Mr. Rao referred to the  

illuminating and perennially relevant passage from the judgment of Vivian  

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Bose, J. in  Sangram Singh vs. Election Tribunal, Kotah, Bhurey Lal Baya,  

1955 (2) SCR 1 (at page 8) :

“Now  a  code  of  procedure  must  be  regarded  as  such.  It  is  procedure, something designed to facilitate justice and further  its ends: not a penal enactment for punishment and penalties;  not  a  thing  designed  to  trip  people  up.  Too  technical  a  construction  of  sections  that  leaves  no  room  for  reasonable  elasticity of interpretation should therefore be guarded against  (provided always that justice is done to both sides) lest the very  means  designed  for  the  furtherance  of  justice  be  used  to  frustrate it.”

10. Mr.  P.S.  Narasimha,  learned  senior  advocate,  appearing  for  the  

respondents  submitted  that  in  terms  of  section  31  of  the  Trade  and  

Merchandise Marks Act,  1958 original registration certificate  of the trade  

mark was the primary evidence in the case instituted by the appellant and in  

the absence of the original  registration certificates  brought on record,  the  

only course open to the trial court was to dismiss the suit, which it rightly  

did. Mr. Narasimha further pointed out that the learned single judge after  

taking the originals on record, straightaway proceeded to pronounce the final  

judgment in the appeal even without allowing the defendants/respondents an  

opportunity  of  rebuttal.  The  denial  of  any opportunity  of  rebuttal  of  the  

additional evidence taken by the appellate court caused immense prejudice  

to the defendants/respondents.  

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11. To an extent  Mr.  Narasimha is  justified in his submission.  Having  

regard to the manner in which the proceedings took place before the trial  

court, the learned single judge was not unjustified in taking the originals of  

the certificates of registration as additional documents but the error lay in the  

fact  that  the  learned  single  judge  allowed  the  application  for  taking  

additional  evidence  and at  the  same time  proceeded  to  finally  allow the  

appeal on the basis of the evidence taken by him on record. Alluding to this  

aspect of the matter, the division bench made the following criticism:

“We have seen that the cross-examination of P.W.1 was very  brief and it only related to the fact that the photo stat were being  produced. Any good lawyer would do the same thing, but had  the original documents been produced, which were admissible  in evidence at the time of trial, the cross-examination perhaps  would have covered these documents as well. Once the learned  single Judge, had decided to allow the plaintiff to produce the  documents, then it was necessary also to provide an opportunity  to  the  defendants  to  further  cross-examine  the  witness  who  produced  those  documents.  But  we  have  seen  from  the  judgment of the learned single Judge that the application under  Order  41,  Rule  27  of  the  Code  was  decided  along with  the  appeals itself.”

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  

have “marked” as 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  

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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  subject  to  objection  of  proof  and  admissibility  The  appellant,  

therefore,  had  a  legitimate  grievance  in  appeal  about  the  way  the  trial  

proceeded. The learned single judge rightly allowed the appellant’s plea 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  

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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.

13. In the result,  the appeal is allowed, as indicated above but with no  

order as to costs.

.……….……...................J.                                                     (AFTAB ALAM)          

………..……...................J.                                                  (R.M. LODHA)         

New Delhi August 27, 2010.

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