In an interesting turn of events, the plaintiff in a trademark infringement suit had to face the wrath of the Delhi High Court for submitting false evidence and got criminal proceedings instituted against them on the directions of the Court. Discussing this development in detail, we are pleased to bring to you this post by SpicyIP intern Rishabh Deshpande. Rishabh is a 3rd year B.A.LLB. student from WBNUJS, Kolkata. His previous post can be accessed here.
Trademark Infringement to Criminal Prosecution: an Inimitable Interaction?
By Rishabh Deshpande
How does a trademark infringement case go from civil to criminal in nature? Well, one way is by the plaintiff fabricating evidence and committing forgery! This is what was seen in the recent case of M/s KG Marketing of India v. Rashi Santosh Soni & Anr.
The Purported Cause of Trademark “Infringement”: The Plaintiff’s Plea
The suit was instituted by the M/s. KG Marketing India, through its proprietor, Mr. Karan Kumar, against Rashi Santosh Soni and Santosh Soni (the defendants) to seek an injunction to prevent the use of the trademark “SURYA”.
 |  |
KG Marketing claimed to have an expansive network of dealers, distributors, and stockists across India. It even asserted itself to be the market leader in electrical appliances with a pan-India presence over the last six years. However, to further assert their claim over the trademark “SURYA”, the plaintiffs attached “evidence” from newspaper advertisements to supplement their case. Additionally, the plaintiffs continued with the use of the trademark for the production of their products, even during the proceedings. This is especially pertinent, since the defendant filed a separate suit, seeking to injunct the plaintiff from using the mark “SURYA GOLD”.
Clippings from the order
“The Truth Shall Out”: The Defendant’s Response
As Shylocks’s servant rightly said, nobody can stop the truth from coming out, the same was put into perspective in response to the submissions of the plaintiff; one of the major contentions that the defendants claimed was that the newspapers that were submitted as “evidence” by the plaintiff were, in reality, fabricated and forged. To further their assertion, they submitted the copies of the newspapers, where the plaintiff claimed to have had their advertisements. This is witnessed from the images shared here.
(A comparision showing original newspaper page on the right and the fabricated page on the left. Image from the order)
Additionally, in response, the defendants filed a suit, seeking to injunct KG Marketing from infringing its design rights and from using the mark “SURYA GOLD” and the accompanying labels.
The Aftermath
On being notified of the defendant’s response, the plaintiff sought the dismissal of their own suit! However, it was too late for this to be considered since, by then, the Court had considered the entire matter and also recorded the statement of Mr Kumar. The plaintiff apologised, wherein he made statements such as, “I am visiting my local mandir every day and sweeping its floor on my own with a broom” and “I take a dip in the river Ganges, which made me realise about my sins”. These interesting statements were made to apparently showcase the plaintiff’s genuine mistake in partaking in the above-mentioned activities. The Court, after referring to many notable decisions such as the Iqbal Singh v. Meenakshi case and the Ashok v. Vilas Deshmukh case, came to the conclusion that the plaintiff had tried to mislead the Court, by fabricating and forging evidence that are considered to be public documents and hence, the plaintiffs were held to be guilty under section 195(1)(b)(ii) of C.r.P.C. Moreover, since the judgement was pronounced on July 2, 2024, the Court clarified that the BNSS would not be applicable, since the cause of action in the present case arose before July 1, 2024.
The Opinionated and their Outlook
In the given case, the Court did not emphasize the impact of such proceedings on the jurisprudence that governs trademark infringement since this judgement is going to be central to situations where the parties to the suit might indulge in such activities in order to get the Court’s favour. It is pertinent to note that the Court did impose costs on the plaintiff, but what the Court could have emphasized on, is the impact of the “fabrication of evidence” that affects the overall process of justice. This is because, in the given case, it is observed that the defendant took the extra care to verify the proof submitted by the plaintiff and not just accept it at face value. Perhaps the Court could have also emphasised the value of parties, in general, to follow a practice of verifying the authenticity of the evidence that is submitted before the court of law, as well as the requirement for strict or severe actions being taken if this basic process of law is abused via fabricated or false evidence being submitted.