What are the circumstances where additional documents can be taken on record
even at the Appellate stage? This is always important aspect of procedural law.
The another important aspect in Trademarks matters is that in case the Defendant
adopts a Trademark dishonestly, whether the Defense of acquiescence is available
to him or not?
Both issues have been dealt with by the Nagpur Bench, Hon'ble High Court of
Mumbai in its Judgement dated 06.05.2022 passed in the Appeal bearing No. Appeal
against order No.14 of 2021 titled as Mysore Deep Perfumery Household Vs
Sunilkumar Amrutlal Jain
The Plaintiff/Appellant namely Deep Perfumery Household filed the subject matter
Suit on the basis of proprietary rights in Trade Marks including trade mark "Zed
Black". The appellant also asserted to have been using trade mark "Shriphal" in
respect of Agarbati, Scent, Perfume, Camphor, Dhoop, etc. falling in Class-3
It is claimed by the Appellant that even at the earlier occasion , the
Respondent/Defendant have been purchasing the subject matter product under the
trademark Shriphal singh the year 1994. At the earlier occassion also the
Appellant came across impugned infringing activities of the Respondent under the
trade mark Shriphal, abd accordingly even legal notice was issued. At the
earlier occasion, In reply, the Respondent admitted the proprietary rights of
the Appellant. But still indulged in the impugned activities, hence the suit was
The Ld. Trial Court observed Appellant to be prior adopter, prior user of the
subject matter trademark. Hence there was prima facie finding in favour of the
Appellant, however injunction was declined on the ground of acquiescence. Hence
the subject matter Appeal was filed by the Appellant.
In Appeal, the Respondent took plea of acquiescence on the ground that the same
has been supplying the goods under the Brand name "Shriphal" to one legal entity
namely "Aastha Sales", allegedly the sister firm of Appellant , for almost 14
years, even after cease and desist notice.
In order to rebut the said argument of the Respondent, the Appellant was
desirous of putting on record some additional documents under Order 41 Rule 27
CPC. The Hon'ble High Court Mumbai, after relying upon Judgements namely
Sanjay Kumar Singh ors. The State of Jharkhand
, 2022 Live Law (SC) 268,
A. Andisamy Chettiar v. A. Subburaj Chettiar
, reported in (2015) 17 SCC 713,Union
of India Vrs. Ibrahim Uddin and another
, reported in (2012) 8 SCC 148 etc
was pleased to take on record the additional documents under Order XLI Rule 27
of the Code in as much as these documents have a direct bearing on the case of
parties apart from furthering the cause of justice. The relevant portion of the
Judgement relied upon by the Court titled as Sanjay Kumar Singh Vs. The State
is as under:
“4 It is true that the general principle is that the appellate court should not
travel outside the record of the lower court and cannot take any evidence in
appeal. However, as an exception, Order 41 Rule 27 CPC enables the appellate
court to take additional evidence in exceptional circumstances.
It may also be true that the appellate court may permit additional evidence if
the conditions laid down in this Rule are found to exist and the parties are not
entitled, as of right, to the admission of such evidence.
However, at the same time, where the additional evidence sought to be adduced
removes the cloud of doubt over the case and the evidence has a direct and
important bearing on the main issue in the suit and interest of justice clearly
renders it imperative that it may be allowed to be permitted on record, such
application may be allowed.
Even, one of the circumstances in which the production of additional evidence
under Order 41 Rule 27 CPC by the appellate court is to be considered is,
whether or not the appellate court requires the additional evidence so as to
enable it to pronouncement judgment or for any other substantial cause of like
As observed and held by this Court in the case of A. Andisamy Chettiar v. A.
, reported in (2015) 17 SCC 713, the admissibility of
additional evidence does not depend upon the relevancy to the issue on hand, or
on the fact, whether the applicant had an opportunity for adducing such evidence
at an earlier stage or not, but it depends upon whether or not the appellate
court requires the evidence sought to be adduced to enable it to pronounce
judgment or for any other substantial cause.
It is further observed that the true test, therefore is, whether the appellate
court is able to pronounce judgment on the materials before it without taking
into consideration the additional evidence sought to be adduced.”
In fact those additional documents sought to be taken on record were coming from
Astha Sales, which were relevant to rebut the argument of the Respondent
regarding acquiescence. In such a situation, the Hon'ble Court deemed fit to
take on record the additional documents.
The argument of acquiescence was also declined by the Court on the ground that
this plea of Respondent was based on the ground that the same has been supplying
impugned goods under the impugned Trademark to Astha Sales , the alleged sister
concern of the Plaintiff.
But the additional documents put on record by the Appellant established that
Astha Sales never procured impugned goods from Respondents. The alleged invoices
pertaining to Ashtha Sales , filed by the Respondent , were also refuted by
Astha Sales , terming them as forged and fabricated. Astha Sales also asserted
that the same is not a sister concern of Appellant.
In such a situation there was no any question of any positive encouragement on
the part of the Appellant. While rejecting the argument of Respondent regarding
acquiescence, the Hon'ble High Court relied upon the ratio of Judgement reported
as Power Control Appliances and others Vrs. Sumeet Machines Pvt. Ltd. (1994) 2
SCC 448, which is as under:
“26.Acquiescence is sitting by, when another is invading the rights and spending
money on it. It is a course of conduct inconsistent with the claim for exclusive
rights in a trade mark, trade name etc. It implies positive acts; not merely
silence or inaction such as is involved in laches.
In Harcourt v. White
[(1860)28 Beav 303] Sr. John Romilly said:
It is important to distinguish mere negligence and acquiescence. Therefore,
acquiescence is one facet of delay. If the plaintiff stood by knowingly and let
the defendants build up an
Important trade until it had become necessary to crush it, then the plaintiffs
would be stopped by their acquiescence.
If the acquiescence in the infringement amounts to consent, it will be a
complete defence as was laid down in Mouson (J. G.) & Co. v. Boehm [(1884) 26 Ch
D 406]". The acquiescence must be such as to lead to the inference of a licence
sufficient to create a new right in the defendant as was laid down in Rodgers v.
Nowill [22 lj kch 404].”
Keeping in the view that there was no positive encouragement on the part of
Appellant . That the Appellant was the prior adoptor and prior user of the
subject matter Trademark. That the Respondent's adoption being dishonest and
that the Respondent was agent of the Appellant, the plea of acquiescence was
also rejected. This is how the Trial Court order was set aside and Appeal was
The above Judgment throws light on the aspect of taking on record the additional
documents at the appellate stage and the other aspect of availability of plea of
acquiescence to the Defendant Versus dishonest adoption.
In case the documents sought to be taken on record at the appellate stage under
Order 41 Rule 27 CPC, if court fits relevant for adjudicating the lis between
the parties, then court can on record the additional documents even at appellate
In order to plea of acquiescence to succeed , the defendant has to establish
positive encouragement on the part of the Plaintiff. Mere inaction on the part
of plaintiff is not sufficient for plea of acquiescence to succeed.
More over , if court reaches in this conclusion that defendant is the dishonest
adoptor, as in the present case , the same can not take advantage of plea of
acquiescence. This Judgement will certainly discourage those agents/ex-emoliyees/licencees,
who try to misappropriate the hard earned goodwill of the Plaintiff by taking a
sham plea of acquiescence.
Written By: Ajay Amitabh Suman
, Advocate, Hon'ble High Court of Delhi
Email: [email protected]
, Mob: 9990389539