SHALIMAR CHEMICAL WORKS LTD.versusSURENDRA OIL & DAL MILLS (REFINERIES) & ORS.

                     [2010] 10 S.C.R. 703


            SHALIMAR CHEMICAL WORKS LTD.                              A'
                                v.
  SURENDRA OIL & DAL MILLS (REFINERIES) & ORS.
           (Civil Appeal No. 52 of 2005)

                      AUGUST 27, 2010
                                                                      B
           [AFTAB ALAM AND R.M. LODHA, JJ.)

      Code of Civil Procedure, 1908 - Order 41, Rule 27 -
Additional evidence - Suit for permanent injunction alleging
 that the defendant had infringed upon the plaintiff's registered     C
 trade. mark - Plaintiff produced before the court photocopies
 of the trade mark registration certificates - Trial court marked
 the said photocopies as 'Exhibits', however, ultimately
 dismissed the suit on the ground that the plaintiff/appellant
 did not file the registration certificates in original - Plaintiff   D
 filed appeal alongwith application under Order 41, Rule 27
 CPC for admitting the original registration certificates at the
 appellate stage as additional evidence - Single judge of the
 High Court allowed the application for additional evidence
 and, ·together with it the appeal - Held: The plaintiff had a        E
legitimate grievance about the way the trial proceeded - The,
single judge rightly allowed the plaintiff's plea for production:
of original certificates as additional evidence as that was id
the interest of justice and there was sufficient statutory basis
for that under clause (b) of Order 41, Rule 27 - But the single,      F
judge 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 - Matter remitted to single judge t.0 1
proceed in the appeal, from the stage the original registration.      G
certificates were taken on record as additional evidence, with
liberty to allow the defendants! respondents to lead rebuttal
evidence or make a limited remand as provided under Order
41, Rule 28- Trade and Merchandise Marks Act, 1958- s.31.
                               703
    704     SUPREME COURT REPORTS             [2010] 10 S.C.R.


A      Appellant-company, engaged in the manufacture and
   sale of high grade coconut oil and the registered owners
   of the trade mark "Shalimar", filed suit seeking
   permanent injunction against the respondents on the
   ground that the latter had infringed upon the appellant's
B trade mark. In course of the trial, the appellant submitted
   before the court, photocopies of the registration
  "certificates under Trade and Merchandise Marks Act,
   1958, which were "marked" by the trial court as Exhibits
   "subject to objection of proof and admissibility". The trial
c court, however, ultimately dismissed the·suit on the
   ground that the appellant did not file the trade mark
   registration certificates in their original.

       Aggrieved, the appellant filed an appeal before the
  High Court and in the appeal, also filed an application
D under Order 41, Rule 27 CPC for accepting the original
  trade mark registration certificates as additional evidence.
  A single judge of the High Court allowed the applicati_on
  for additional evidence and, together with it the appeal,
  thereby setting aside the judgment passed by the trial
E court. In intra-court appeal, the division bench of the High
  Court hel~ that there was no occasion or justification for
  admitting the original trade mark registration certificates
  at the appellate stage as additional evidence and restored
  the judgment passed by the trial court.
F
       The appellant contended before the Supreme Court
  that if the trial court was of the view that the photocopies
  of the documents in question were not admissible in
  evidence, it ought to have returned the copies at the time
G 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 photocopies submitted by the
  appellant were marked as exhibits, it had no means to
  know that while pronouncing the judgment, the court
H
SHALIMAR CHEMICAL WORKS LTD. v. SURENDRA 705
       OIL & DAL MILLS (REFINERIES)
would keep those documents out of consideration, thus,        A
causing great prejudice to the appellant. The appellant
submitted that the procedure followed by the trial court
was contrary to the procedure prescribed by Order 13,
Rule 4, CPC, therefore, the single judge of the High Court
was fully justified in accepting the originals of the         B
documents concerned in evidence.

    Allowing the appeal, the Court

     HELD:1. Having regard to the manner, in which the
proceedings took place before the trial court, the single     C   1




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 single judge allowed the
applic'ation for taking additional evidence and at the same
time proceeded to finally allow the appeal on the basis       D   1




of the evidence taken by him on record. [Para 11] [714-
C-D]

     1.2. It is clear that serious mistakes were committed
in the instant case at all stages. The trial court should not E
have "marked'' as exhibits the Xerox copies of the
certificates of registration of trade mark in face of the
objection raised by the de' 'ndants. It should have
declined to take them on record as evidence and left the
plaintiff to support its case by whatever means it
                                                              F
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 single
judge rightly allowed the appellant's plea for production . G ,
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
                                                              H·
    706      SUPREME COURT REPORTS          [2010] 10 S.C.R.

A 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
8 the view that in the facts of the case, the production of
  additional evidence was not permissible under Order 41,
  Rule 27. The additional documents produced by the
  appellant were liable to be taken on record as provided
  under Order ~1, Rule 27 (b) in the interest of justice. But
C the division bench was right in holding that the way the
  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
  single judge without disturbing it insofar as it took the
D original 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. The judgment
  passed by the division bench is accordingly set aside and
E the matter is remitted to the single judge to proceed in
  the appeal from the stage the original registration
  certificates were taken on record as additional evidence.
  The single judge may allow the defendants/respondents
  to lead any rebuttal evidence or make a limited remand
F as provided under Order 41, Rule 28. (Para 12) (715-A-H;
  716-A-B]

      R. V.E.  Venkatachala Gounder vs. Arulmigu
  Viswesaraswami & V.P. Temple and Another, 2003 (8) SCC
G 752; K. Venkataramiah vs. A. Seetharama Reddy & Ors.,
  1964 (2) SCR 35 and Sangram Singh vs. Election Tribunal,
  Kotah, Bhurey Lal Baya, 1955 (2) SCR 1 - relied on.

                        Case Law Reference:

H         2003 (8) sec 152     relied on           Para 7
SHALIMAR CHEMICAL WORKS LTD. v. SURENDRA 707
        OIL & DAL MILLS (REFINERIES)
    1964 (2) SCR 35          relied·on             Para 8      A

    1955 (2) SCR 1           relied on             Para 9

     CIVIL APPELLATE JURISDICTION: Civil Appeal No. 52
of 2005.
                                                               B
    From the Judgment & Order dated 25.04.2003 of the High
Court of Andra Pradesh at Hyderabad in LPA No. 111 bf 2001.

    P.P. Rao, S.B. Sanyal, V.V. Ramana, G. Ramakrishna
Prasad, B. Suyodhan, Amarpal, Bharat J. Joshi, Mohd. Wasay     C
Khan for the Appellant.

    P.S. Narasimha, M. Sriniwas Rao, K. Parameshwar, V.G.
Pragasam for the Respondents.

    The Judgment of the Court was delivered by                 D
      AFTAB ALAM, J. 1. This is the plaintiffs 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           I
Act. The case of the appellant is that from the year 1945 it is E
engaged in the business of manufacture and sale of high grade
coconut oil used for cooking as w ·n 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 F
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 G
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.
                                                                H
    708        SUPREME COURT REPORTS                 [2010] 10 S.C.R.


A       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
B 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
c case in favour of the plaintiff nor the balance of convenience
  was in favour of the plaintiff. The trial court arrived at its findings
  mainly because the appellant did not file the trade mark
  registration certificates in their original. In that connection, the
  trial court made the following observations:

D         "All the above documents i.e. Ex.A 1-A5 are marked
          subject to objection of proof and admissible (sic
          admissibility) and also mention so in the deposition cif
          PW1. PW1 is his cross-examination has admitted that all
          the above documents are xerox copies. He has also
E         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
F          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."

G         Therefore the plaintiff has to file the original of the
          registration or the certified copies thereof. Exs.A 1-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
H         it. These documents Ex.A 1-A4 are basic documents of
 SHALIMAR CHEMICAL WORKS LTD. v. SURENDRA 709
 OIL & DAL MILLS (REFINERIES) [AFTAB ALAM, J.]
    Trade Mark and Merchandise Act."                                 A

      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          8
(CMP No.2972 of 2000) for accepting the originals of the trade
mark registration certificates and the allied documents (of which
Xerox copies were filed before the trial court) as additional
evidence. A learned single judge of the High Court took up the
application for additional evidence along with the hearing of the    C
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             D
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         E
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
                                                                     F
    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        G
    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          H
    710       SUPREME COURT REPORTS                  [2010] 10 S.C.R.

A         the possession of the plaintiff, therefore he could not fill up
          the lacuna by producing them in the Appellate Court. It may
          also be necessary to mention that production of these
          documents and allowing of the application under Order 41,
          Rule 27 of the Code while disposing of the appeal has also
B         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
C 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.
D
        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
E   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
F   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
G   court would keep 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
H   initialed by the judge amounts to admission of the document
SHALIMAR CHEMICAL WORKS LTD. v. SURENDRA 711
OIL & DAL MILLS (REFINERIES) [AFTAB ALAM, J.]
in evidence. An objection to the admissibility of the document       A
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     B
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       C.
    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 admissi~ility of the
    document in evidence but is directed towards the mode
    of proof alleging the same to be irregular or insufficient. In   D
    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          E
    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 document is irregular cannot be allowed to
    be raised at any stage subsequent to the marking of the          F
    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          G
    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
                                                                     H
    712       SUPREME COURT REPORTS                [2010] 10 S.C.R.


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
B         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
c         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
D
          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
E   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
F   in evidence. 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
G   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)
H   SCR 35 (at page 46).
SHALIMAR CHEMICAL WORKS LTO. v. SUREN ORA 713
OIL & DAL MILLS (REFINERIES) [AFTAB ALAM, J.]
    " ... Apart from this, it is well to remember that the appellate   A
•   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        B ·.
    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.              c
    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 D
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 Bose, J. in
Sangram Singh vs. Election Tribunal, Kotah, Bhurey Lal
Baya, 1955 (2) SCR 1 (at page 8) :                                E

      "No,w 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 punishmentand
      penalties; not a thing designed to trip people up. Too . F
      technical a construction of sections that leaves no room . ·
      for reasonable elasticity of interpretation should therefore
    . be guarcjed 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."
                                                                   G
      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
                                                                       H
    714      SUPREME COURT REPORTS                 [2010] 10 S.C.R.


A   evidence in the case instituted by the appellant and in the
    absence of lhe 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,
B   straightaway proceeded to pronounce the finaljudgment 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.
c       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
D 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:
E
        "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
F
        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
G       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."

H
SHALIMAR CHEMICAL WORKS LTD. v. SURENDRA 715
 OIL & DAL MILLS (REFINERIES) [AFTAB ALAM, J.]
     12. On a careful consideration of the whole matter, we feel      A
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    B
to support its case by whatever means it proposed rather than
leaving the issue of admissibility of those copies open and
hanging, by marking them as exhibits subject to objection of
proof and admissibility The appellant, therefore, had a
legitimate grievance in appeal about the way the trial                c
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.
                                                                      D
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      E
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        F
serious prejudice to the defendants/respondents. In the facts
and circumstances of the case, therefore, the proper course for
the division bench was to set aside the order of the learned
single judge without disturbing it insofar as it took the originals
of the certificates of registration produced by the appellant on      G
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
                                                                      H
   716      SUPREME COURT REPORTS                [2010] 10 S.C.R.


A 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
B 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.

   B.B.B                                          Appeal allowed.