M/S.Tvs Motor Co. Ltd. Vs. Baja Auto Ltd. - Court Judgment

SooperKanoon Citationsooperkanoon.com/1117438
CourtIntellectual Property Appellate Board IPAB
Decided OnMar-08-2013
Case NumberM.P. No.124 of 2012 In ORA/1/2007/PT/MUM
JudgeTHE HONOURABLE MS. S. USHA, VICE-CHAIRMAN & THE HONOURABLE MR. D.P.S.PARMAR, TECHNICAL MEMBER (PATENTS)
AppellantM/S.Tvs Motor Co. Ltd.
RespondentBaja Auto Ltd.
Excerpt:
order (no. 41 of 2013) ms. s. usha, vice chairman: the applicant/petitioner herein filed the instant miscellaneous petition for taking on record the affidavit of mr.harne vinay chandrakant and to pass such further orders. 2. the grounds of the miscellaneous petition are that one mr. t.s.rajagopalan had left the services of the applicant company on 22.01.2009 and that the respondents had intimated the applicants that they wish to cross examine the deponent of the revocation petition. therefore, the applicants had filed an affidavit of mr.harne vinay chandrakant to prove the contents of the application. the affidavit which is filed now is for certain expert opinion as to the validity of the patent. 3. the affidavit also gives the details about the qualification of the deponent. mr.chandrakant is a mechanical engineer from the gujarat university and has done his post-graduation (m-tech) at iit, madras. he joined the applicant company as a research development officer in the year 1982. he is involved in all the new engines developed by the company. he is therefore an expert in the field of internal combustion of engine. 4. the documents filed were already served on the respondents and the respondents cannot be said to have been taken by surprise by these documents. this board has powers under section 92(2) of the trade marks act, 1999 to receive evidence and to issue commission for examination of witnesses. though this board is not bound by the code of civil procedure, the principles of natural justice are to be followed. 5. the respondents herein filed their counter to this miscellaneous petition. the respondents stated that they have no objection for mr.harne vinay chandrakant for re-verification of the petition. the deponent who is the president in the company, has sought permission to depose as an expert in the matter. the miscellaneous petition deserves to be dismissed for the reason that an officer of the company cannot be permitted to depose evidence as an expert. the miscellaneous petition has been filed with the prayer to consider mr.chandrakant to depose as expert witness and has also filed iii volumes of documents which ought not to be allowed. there is no reason why there is a long delay of four years. the documents now sought to be filed were very much in their possession at the time of filing the application for revocation. the applicants had in fact sought time to file an application to bring in an expert witness but had not sought permission to introduce additional documents, at the last hearing of the matter. the affidavit is in the nature of new pleading and not evidence. as per the intellectual property appellate board (procedure) rules, the pleadings are complete and now to file additional documents with new pleadings ought not to be allowed by this board. an officer who has sought permission to verify the contention of the application cannot be said to be an expert witness. he cannot play a dual role as a deponent verifying the contents of the application as well as give his opinion as an expert. 6. we heard mr.c.s.vaidyanathan, learned senior counsel for the petitioner and mr.aspi chenoy, learned senior counsel for the respondent. 7. the learned senior counsel appearing for the petitioner submitted that mr.chandrakant is already in the service of the company. he submitted that exhibit nos.14 and 26 filed along with this miscellaneous petition can be considered as they are public documents. as per section 45 of the evidence act, any person may give his expert opinion. the counsel then submitted that allowing this petition will in no way prejudice the respondents interest or right. the counsel then relied on the order dated 3.7.2009 in m.p.no.22 of 2009 filed by this petitioner in this rectification application itself. 8. the learned senior counsel opposed this miscellaneous petition mainly on the ground that there had been a delay of four years from the date of completion of the pleadings. there is no reason given for the delay. the documents cannot be taken on record until any reason is assigned as to why it was filed at this belated stage. 9. the said deponent is employed in the applicant company since 1982 and why this affidavit is filed in 2012 after such a long delay, was his other submission. expert evidence is different from general evidence. when mr.chandrakant is employed in the applicants company, then, how can the same person be an expert witness. the affidavit contains supplemental pleadings to improve the case. 10. independent expert has referred to five patents whereas this officer has referred to 16 patents. this cannot be considered at this stage as, if considered, it will only lead to miscarriage of justice. the delay has not been explained with valid reasons. 11. in rejoinder, the learned senior counsel submitted that the affidavit is only in substitution of the verification. there are no new pleadings/evidence and they are only public documents – books. 12. we have considered the arguments of both the counsel. 13. an expert witness should give his opinion which will be independent without any influence. the opinion shall be unbiased. the expert evidence must be necessary in assisting the trial on facts and in law. an expert opinion is necessary to help the court with the technical information which is not within the knowledge of a judge. 14. in ikarian reefer case [(1993) 20 fsr 563], it was held that the duty of an expert is to help the court and not the person from whom he has received his instructions or who has paid for his service. it is therefore clear that the person who stands as an expert should compare the invented version and the prior art document and explain the difference and satisfy the court about the patent if it is something new or something already existing. if the expert is a person employed in a company, then that expert will only try to satisfy that the patent under challenge is valid while comparing with the prior art. here, in this case, the officer would obviously state that there is nothing new when compared with the prior art document. 15. in this case on hand, the applicants wish to bring in the officer as an expert witness to explain the matter. the officer who has sworn in the affidavit on behalf of the applicant company cannot be said to be unbiased. the person who is an expert in that specific/particular field can give evidence. the petitioners have not given any reason for the delay in filing this miscellaneous petition. the pleadings were completed as early as in the year 2008. it is not clear as to why this application is filed at this belated stage. 16. the respondents have no objection for mr.chandrakant verifying the contents. the re-verification prayer is therefore allowed. 17. in the interest of justice, even if we think that the delay is not considered to be too long, then also the expert evidence cannot be considered for the reason cited above. accordingly, the m.p. is dismissed.
Judgment:

ORDER (No. 41 of 2013)

Ms. S. Usha, Vice Chairman:

The applicant/petitioner herein filed the instant miscellaneous petition for taking on record the affidavit of Mr.Harne Vinay Chandrakant and to pass such further orders.

2. The grounds of the miscellaneous petition are that one Mr. T.S.Rajagopalan had left the services of the applicant company on 22.01.2009 and that the respondents had intimated the applicants that they wish to cross examine the deponent of the revocation petition. Therefore, the applicants had filed an affidavit of Mr.Harne Vinay Chandrakant to prove the contents of the application. The affidavit which is filed now is for certain expert opinion as to the validity of the patent.

3. The affidavit also gives the details about the qualification of the deponent. Mr.Chandrakant is a Mechanical Engineer from the Gujarat university and has done his post-graduation (M-Tech) at IIT, Madras. He joined the applicant company as a Research Development Officer in the year 1982. He is involved in all the new engines developed by the company. He is therefore an expert in the field of internal combustion of engine.

4. The documents filed were already served on the respondents and the respondents cannot be said to have been taken by surprise by these documents. This Board has powers under Section 92(2) of the Trade Marks Act, 1999 to receive evidence and to issue commission for examination of witnesses. Though this Board is not bound by the Code of Civil Procedure, the principles of natural justice are to be followed.

5. The respondents herein filed their counter to this miscellaneous petition. The respondents stated that they have no objection for Mr.Harne Vinay Chandrakant for re-verification of the petition. The deponent who is the President in the company, has sought permission to depose as an expert in the matter. The miscellaneous petition deserves to be dismissed for the reason that an Officer of the company cannot be permitted to depose evidence as an expert. The miscellaneous petition has been filed with the prayer to consider Mr.Chandrakant to depose as expert witness and has also filed III volumes of documents which ought not to be allowed. There is no reason why there is a long delay of four years. The documents now sought to be filed were very much in their possession at the time of filing the application for revocation. The applicants had in fact sought time to file an application to bring in an expert witness but had not sought permission to introduce additional documents, at the last hearing of the matter. The affidavit is in the nature of new pleading and not evidence. As per the Intellectual Property Appellate Board (Procedure) Rules, the pleadings are complete and now to file additional documents with new pleadings ought not to be allowed by this Board. An Officer who has sought permission to verify the contention of the application cannot be said to be an expert witness. He cannot play a dual role as a deponent verifying the contents of the application as well as give his opinion as an expert.

6. We heard Mr.C.S.Vaidyanathan, learned senior counsel for the petitioner and Mr.Aspi Chenoy, learned senior counsel for the respondent.

7. The learned senior counsel appearing for the petitioner submitted that Mr.Chandrakant is already in the service of the company. He submitted that Exhibit Nos.14 and 26 filed along with this miscellaneous petition can be considered as they are public documents. As per Section 45 of the Evidence Act, any person may give his expert opinion. The counsel then submitted that allowing this petition will in no way prejudice the respondents interest or right. The counsel then relied on the order dated 3.7.2009 in M.P.No.22 of 2009 filed by this petitioner in this rectification application itself.

8. The learned senior counsel opposed this miscellaneous petition mainly on the ground that there had been a delay of four years from the date of completion of the pleadings. There is no reason given for the delay. The documents cannot be taken on record until any reason is assigned as to why it was filed at this belated stage.

9. The said deponent is employed in the applicant company since 1982 and why this affidavit is filed in 2012 after such a long delay, was his other submission. Expert evidence is different from general evidence. When Mr.Chandrakant is employed in the applicants company, then, how can the same person be an expert witness. The affidavit contains supplemental pleadings to improve the case.

10. Independent expert has referred to five patents whereas this Officer has referred to 16 patents. This cannot be considered at this stage as, if considered, it will only lead to miscarriage of justice. The delay has not been explained with valid reasons.

11. In rejoinder, the learned senior counsel submitted that the affidavit is only in substitution of the verification. There are no new pleadings/evidence and they are only public documents – books.

12. We have considered the arguments of both the counsel.

13. An expert witness should give his opinion which will be independent without any influence. The opinion shall be unbiased. The expert evidence must be necessary in assisting the trial on facts and in law. An expert opinion is necessary to help the court with the technical information which is not within the knowledge of a judge.

14. In Ikarian Reefer case [(1993) 20 FSR 563], it was held that the duty of an expert is to help the court and not the person from whom he has received his instructions or who has paid for his service. It is therefore clear that the person who stands as an expert should compare the invented version and the prior art document and explain the difference and satisfy the Court about the patent if it is something new or something already existing. If the expert is a person employed in a company, then that expert will only try to satisfy that the patent under challenge is valid while comparing with the prior art. Here, in this case, the Officer would obviously state that there is nothing new when compared with the prior art document.

15. In this case on hand, the applicants wish to bring in the Officer as an expert witness to explain the matter. The Officer who has sworn in the affidavit on behalf of the applicant company cannot be said to be unbiased. The person who is an expert in that specific/particular field can give evidence. The petitioners have not given any reason for the delay in filing this miscellaneous petition. The pleadings were completed as early as in the year 2008. It is not clear as to why this application is filed at this belated stage.

16. The respondents have no objection for Mr.Chandrakant verifying the contents. The re-verification prayer is therefore allowed.

17. In the interest of justice, even if we think that the delay is not considered to be too long, then also the expert evidence cannot be considered for the reason cited above. Accordingly, the M.P. is dismissed.