In a significant ruling in the case of Mihir Surendrabhai Shah v. State Of Gujarat,[1] the Gujarat High Court has cemented the principle necessitating the police to seek the Registrar’s opinion on trademark infringement before conducting a search and seizure.
The aforementioned case, initiated in 2014, revolved around Mihir Surenbhai Shah, the operator of Rushab Automobiles in Ahmedabad City, who engaged in the sale of auto parts. Sanjay Kumar Verma, who claimed to be an Intellectual Property Rights (‘IPR’) Vigilance India Company officer, filed a complaint alleging the sale of counterfeit Hyundai spare parts by Rushab Automobiles. Acting on this tip, the complainant approached the Crime Investigation Department (CID) in Gandhinagar. Subsequently, the police raided the petitioner’s shop and filed a First Information report (‘FIR’) citing violations of sections 101, 102, 103, 104, and 105 of the Trade Mark Act, 1999.[2] The petitioner subsequently filed a petition under section 482 of the Code of Criminal Procedure (CrPC), 1973,[3] for the High Court to quash the FIR.
The petitioner presented two main arguments. Firstly, they contended that as per Section 115(4) of the Act, read with Rule 110 of the Trade Mark Rules, 2017,[4] the Investigating Officer must solicit the Registrar’s opinion on trademark infringement before registering an FIR under sections 103 and 104 of the Act. They asserted that the failure to obtain this opinion amounted to a breach of the statutory provision.
Secondly, the petitioner argued that a straightforward reading of the FIR did not establish that the sale of duplicate spare parts of Hyundai Motor Company would qualify as an offense under sections 101 to 105 of the Act. They further emphasized that pursuing the case solely based on the FIR would constitute an abuse of the legal process, as it deviated from the provisions of the law.
The original complainant and the State representative contended that these issues could be thoroughly examined during the trial. They pointed out that the investigation had already been concluded, and a criminal case was pending in court. Hence, they urged the court not to quash the FIR at this stage and to dismiss the petition.
Upon examination, the court noted that the investigation did not reveal any contractual agreement between IPR (Vigilance) and Hyundai Motor Company, authorizing the complainant to conduct searches and report on the sale of counterfeit auto parts. The court also highlighted that the charge sheet papers indicated that a Police Sub-Inspector (PSI) of Naranpura Police Station, Ahmedabad, had carried out the investigation. The court underscored that this breached the statutory provision of law and supported the contention that only a police officer not below the Deputy Superintendent of Police (DSP) or equivalent can investigate the offense.
Drawing on the principles established for FIR quashing established in Anil Kumar v/s. State of Punjab,[5] State of Haryana v/s Bhajan Lal[6] and Som Mittal v/s. State of Karnataka,[7] the court quashed the FIR and subsequent charge sheet against the businessman. The absence of the Registrar’s opinion on trademark infringement rendered the FIR unsustainable, making any search or seizure void.
Justice JC Dosh emphasized that the proviso to section 115(4) of the Act is “clear and unambiguous.” He expressed that it is indisputable that a police officer must seek the Registrar’s opinion on infringement prior to conducting a search and seizure upon receiving a complaint about the use of a trademark or trade description or falsification and false application of a trademark, as stipulated under Rule 110. He articulated that in the current case, the FIR does not indicate obtaining the Registrar’s opinion since neither the learned APP nor the advocate for the complainant has been able to address the breach of the mandatory provisions when registering the FIR.
“The complainant has failed to establish that he has authority to file complaint. He cannot give opinion that accused is applying trade mark / trade description or falsifying and falsely applying trade mark of complaint without taking opinion of the Registrar for infringement of trade mark. The circumstances, spells that there is clear breach of statutory provision,” Justice Dosh concluded, unequivocally delineated the precise contours of the implicated sections, leaving no room for ambiguity or conjecture.
[1] R/Special Criminal Application No. 694 of 2014.
[2] Trade Mark Act, 1999, <https://www.indiacode.nic.in/handle/123456789/1993?sam_handle=123456789/1362>
[3] Code of Criminal Procedure, 1973, <https://www.indiacode.nic.in/bitstream/123456789/15272/1/the_code_of_criminal_procedure%2C_1973.pdf>.
[4] Trade Mark Rules, 2017, <https://ipindia.gov.in/TM-Rules-2017.htm>.
[5] 2012 (51) PTC 159 (P& H).
[6] AIR 1992 SC 604.
[7] (2008) 3 SCC 574.
Leave a Reply