Defendant Can Question Trademark Owner On Prior Use Even If Written Statement Not On Record: Supreme Court

The Supreme Court has ruled that a party accused of trademark infringement can question the trademark owner about documents showing when the disputed brand name was first used, even if that party's written statement is not on record.

A bench of Justice J.B. Pardiwala and Justice K. Vinod Chandran set aside a Kerala High Court order that had expunged such a question from the trial record, holding that it was a factual question beyond the permissible scope of cross-examination because the written statement had not been taken on record.

The case arose from a trademark suit filed by Dharampal Premchand Limited against Shabu KN Achary, in which the company sought a permanent injunction against infringement of its trade dress, a declaration concerning its two trademarks and damages.

During cross-examination, Achary's side asked the company, "Is it correct that you have no document to show that since when mark BABA is being used?”

The Kerala High Court removed the question from the record, reasoning that the written statement was not on record and that the question therefore fell outside the permissible scope of cross-examination.

The Supreme Court disagreed. It noted that the affidavit filed by the company along with its injunction plea itself referred to the alleged use of its brand name, including packaging and trade dress, which it claimed was similar to its own. The affidavit also contained allegations concerning infringement of its registered copyright and trademark.

The court observed,

“When the plaintiff affirms trademark infringement, even if the written statement is not on record, the defendant is entitled to put the question which queries the plaintiff on the document, to substantiate the time from which such brand name was used by the plaintiff.”

The top court made clear that allowing the question did not amount to deciding the underlying trademark dispute. It observed that it had made no findings on the merits and that both sides remained free to raise their respective contentions during the trial.

The court accordingly reversed the Kerala High Court's order and directed that the trial proceed after recalling the company and recording its answer. The appeal was allowed.