Leading evidence in trademark cases

What are some of the key do’s and don’ts in a typical trademark litigation in India? Pravin Anand explains

The focus of this article is on peculiar points relating to the leading of evidence in IP cases. The field is vast but an attempt is made to limit to specific points where errors are usually made.

Affidavits and verifications

Practitioners are advised to take a file inspection before recording evidence so that documents that need to be exhibit marked can be identified and flagged. This can save several hours which is particularly useful if there are foreign witnesses since a few extra hours could mean a second visit to India causing great inconvenience, hardship and costs.

While preparing affidavits for witnesses always obtain detailed comments on specific points, so that the affidavit preserves the language of the witness. While giving the affidavit a legal shape, lawyers should avoid re-writing it as far as possible in their own language.

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When preparing witnesses for cross-examination, lawyers should provide them with a questionnaire or main themes on which the opposite party is likely to pose questions. While lawyers can guide witnesses as to how cross-examination is conducted and its procedure, it is not appropriate to coach a witness or interfere with answers they are likely to give.

Plaintiffs must include a damages computation even if it is not a sophisticated computation. Without such a computation judges will find it difficult to award damages or will at best award punitive damages in the range of ₹100,000 to ₹300,000. This is less than US$5,000.

Be careful about the verification paragraph in the affidavit being prepared, so as to ensure there is a clear distinction between paragraphs that are verified based on personal knowledge and those verified on the basis of the records of the company. It is a good practice to compare the verification provided in the affidavit with that in the plaint to ensure paragraphs contain similar facts.

Witnesses

Use as few witnesses as possible. Two or three is a good number, as the greater the number of witnesses the more the chances of contradictions as also an exponential increase in the time taken at trial.

Typically, one corporate witness can prove the case set out in the plaint generally including proving proper institution of the lawsuit. While a second witness would prove the goodwill and in cases of foreign trademarks prove international registrations, user and renown, a third witness would concentrate on damages and other financials such as sales turnover, advertising expenses, etc.

In a patent case, of course, there would be at least one independent expert providing evidence on the invention itself and on issues of novelty and obviousness. The expert could also give evidence on infringement.

Witnesses should not read each other’s evidence and must sign their affidavits in front of a notary public or oath commissioner. Busy corporate witnesses in India tend to avoid going to the notary public and instead prefer to sign in their lawyer’s office. This should be avoided at all costs.

When a witness is unavailable and an additional witness is to be brought in, the affidavit of the replacement witness should not be a verbatim copy of that filed by the original witness, even though it may detail the same facts.

Foreign witnesses

In exparte cases, it is possible to seek exemptions for foreign witnesses to appear. When foreign witnesses cannot attend hearings in person due to illness or otherwise, evidence could be recorded through a video conference.

To demonstrate that a foreign witness is not being prompted, recordings should be done in the presence of a notary public or sometimes even using a wide-angle camera. There is no longer any need for recordings to be done in the presence of a representative of the Indian embassy.

Local commission proceedings

Local commissioners, who are normally retired judges or senior officers appointed to record evidence, are less busy than judges, record evidence in the first half of the day and typically go on for several hours only on the one case at hand. They record evidence even on Saturdays and help move the process forward quickly.

A local commissioner receives a fee of approximately US$2,000, but this can be proportionately increased depending on the number of dates a case requires. Parties share the fees in most cases, but if plaintiffs pay the entire fee the costs will be included in the costs of the suit.

While scheduling proceedings before a local commission ensure the room that is to be used is fully equipped to handle the case. Failure to have all of this in place including small issues such as failure to summon the court records on time could result in an adjournment of the matter.

Documents

One of the most important precautions at a trial is to produce original documents for proper exhibit marking.

Admitted documents are normally numbered as exhibit P1, P2, P3, etc. If it pertains to a defendant’s documents, it is exhibit D1, D2, D3, etc.

If it is a document proved by a witness by filing the original, then it is marked as exhibit PW1/1 or PW1/2, the first numeral suggesting the plaintiff’s first witness.

It is not essential to file original documents. They may be produced at the time of the trial, shown and taken back, with the copy held by the court marked as “original seen and returned”.

If a document is held in a government office like the Registrar of Companies or the Registrar of Trademarks, a certified copy can be filed.

The probative value of documents, in a descending order, is as follows:

i. Admissions (included admitted documents).

ii. Responses of the opponents to legal notices.

iii. Newspapers or other publications with large circulation.

iv. Court orders or orders of the Intellectual Property Appellate Board, the Patent Office, the Trademarks Registry, etc.

v. Certified records of the Registrar of Companies, the Trademark Office or the Patent Office.

vi. Assessment orders of departments that deal with sales, excise, income tax (as per section 56 of the Evidence Act).

vii. Sales invoices and orders placed by third parties.

viii. Annual reports of a company, particularly if these have been filed with the Registrar of Companies.

ix. Internal documents like internal memoranda, point of purchase (POP) material, undated brochures, etc.

Mode of proof

To prove a company’s turnover use an audited report. Turnover could be included in the evidence affidavit. However, if questions are asked about a particular turnover entry during cross-examination, it would be essential to rely on an audited report or an extract from the annual report.

In the past, courts and opponents required witnesses to produce books of accounts while showing specific entries. This is no longer insisted on and not producing such proof has no serious consequence.

Exhibiting a document merely identifies it and does not actually prove it. To prove a document it should be admissible and the mode of proof has to be proper. If original documents are not available and secondary evidence is to be led, it is not necessary to move a separate application to the court. Instead include a paragraph in the affidavit evidence explaining the absence of the original, detailing who was last in possession of it and what efforts were made to locate it.

When executing an Anton Piller order it is useful to exhibit the court commissioner’s report, if there is one.

Electronic documents such as those downloaded from the internet can be proved by filing an affidavit under section 65B of the Evidence Act, 1872, with the person who downloaded it verifying that the machine on which it was downloaded was in working order and that the contents have not been tampered with. It is very useful to prove passing off based on internet downloads as originals are often very difficult to obtain in a world where foreign companies scan documents and destroy the originals due to space limitations.

Documents that may be needed as proof can often be found in web archives, which are a very important source of documents that are not in the active portion of the internet.

Cross-examination

If an important point is left out in a witness’s evidence affidavit, it can be covered by oral testimony when evidence is being recorded. Examination-in-chief earlier took a lot of time but is now typically on affidavit and the local commissioner records only a few lines when it is tendered. Time is therefore saved and witnesses can be cross-examined straight away. During cross-examination, one must be mindful of client-attorney privileges under sections 126 to 129 of the Evidence Act.

Cross-examination is not a memory test and witnesses can refresh their memory by looking at notes provided the recording officer approves. Sometimes witnesses may remember broad issues, but not the finer details and would be perfectly justified in saying so or asking for time to verify. The only problem with this is the witness may have to revisit another time.

A witness should try and avoid giving long answers unless detailed clarification is necessary to avoid confusion, as it may lead to further cross-examination.

Witnesses should always remain calm and never lose their temper.

Only the words of witnesses are recorded and not their demeanour. Therefore, the written word must be carefully recorded and it is only when witnesses lose their temper or use insulting language or take long to respond that their demeanour is recorded.

While commissioners can record objections with regard to admissibility or mode of proof or for any other reason, they do not have the powers to decide on the objection. Only a court has the power do this, unless an attempt is made to empower the local commissioner with special powers, such as the power to record the proceedings on video.

Evidence has been cut short or sped up, in special cases, by limiting the number of hours or the number of days by insisting that at least a certain number of hours of evidence be recorded on a certain day.

Final arguments

It is a good idea to make a list of points on which the party being represented has scored well and summarize the questions and answers on those points. Such analysis will help with preparing the final arguments.

Use as many assisting techniques as possible. This could include a list of dates, PowerPoint presentations or animations, graphics to show family charts, or comparisons of infringing marks with the original or pictures demonstrating a mode of display.

Judges are persuaded by favourable orders. It is important to remember that judges, like most other people, love stories, pictures and colour. So always make the case graphic, colourful and vibrant with the right amount of dramatization.

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Pravin Anand is the managing partner of Anand and Anand.