Case management procedures report

The losing party can appeal the judgment rendered by the Trial Court within two (2) weeks from the date the judgment is served before the High Court.

The appeal proceeding is similar to the first instance proceeding and the party has the opportunity to submit new allegations and evidence.

k. Trial proceedings in Small Claim Cases

A small claim case is a case in which the plaintiff claims compensation of money, fungibles, or securities not exceeding 20 million won (approximately US$ 20,600). A District Court, a Branch Court, and a Municipal court take charge of small claim suits, which amount to over 70% of all civil suits. This proceeding is expeditious and, generally, cheaper.

The proceeding starts with an oral claim by the plaintiff before the Court Clerk, instead of filing a written petition to the court. “The court may first render a decision recommending the defendant or respondent to perform her liability based on the complaint, without waiting for the response of the defendant. If the defendant does not want to accept the recommendation as it is, she may raise an objection to the decision. Practically speaking, a great portion of the small claims cases are resolved at the stage of recommendations⁸”.

l. Civil Conciliation Proceedings

A Civil Conciliation is encouraged by the Supreme Court and it is a method for dispute resolution consisting of hearing allegations of the parties in dispute before a judge or a committee, who can advise the parties to make mutual concessions and seek a compromise or he can render a compulsory decision.

In the Republic of Korea, the Prosecutors and Judicial Police Officers take charge of criminal investigations. The Public Prosecutor has authority to investigate criminal cases and is entrusted with exclusive authority to initiate criminal procedures by indicting the offenders.

The Public Prosecutors have the following authority under Korean Law:

1. Authority to inspect the place of arrest or detention

2. Right to request the Judge to issue an arrest warrant

3. Right to approve an urgent arrest made by a Judicial police officer

4. Right to coordinate the Judicial Police Officers in connection with disposal of the seized articles

5. Judicial Police Officer’s duty to report to the prosecutor

As the only prosecuting authority, Korean Prosecutors have the power to decide whether or not to prosecute a suspect. In case a Prosecutor chooses to indict a person, the Prosecutor has the duty to participate in the trial and maintain indictment until a final court judgment has been rendered. Under Korean Criminal Procedural Law, indictment by a private person is not allowed and only the government can indict a suspect.

In addition, Prosecutors have the discretionary power to suspend the prosecution of the case even if there is sufficient evidence to maintain prosecution. Prosecutors suspend prosecution when they think the benefit of non-prosecution is greater than the cost of prosecution. It enables Prosecutors to take into account criminal policy factors when deciding whether to prosecute a suspect.

It is important to highlight that in Korea there is not an investigating judge. The investigations are merely managed by public prosecutors.

b. Judgment

If guilt has not been proved beyond reasonable doubt, the Court declares the accused not guilty. The court may find the accused guilty of the charge against the accused if it constitutes a crime and evidence is sufficient for conviction. Both the accused and the public prosecutor may file an appeal against the judgment within seven days after the decision is published.

As mentioned above, appeals against decisions rendered by the Director of the Korean Intellectual Property Office (KIPO) in relation to the grant/rejection of a trademark or its cancellation can be submitted to the Korean Intellectual Property Tribunal (KIPT). This Tribunal, composed of a panel of three/five specialized members also manages cases relating to invalidation of patents/designs.

The process is fast and the time limit set for issuing a decision is four months. The pleading or hearing can be oral or written and the decision of the KIPT can be revoked only by the Patent Court of Korea (PCK).

b. Patent Court of Korea (PCK)

Decisions of the KIPT can be reviewed by the Patent Court of Korea. The Patent Court is a specialist IP Court of second instance with jurisdiction over all cancellation appeals rendered by the trial board of KIPT. It is necessary to emphasize that the Court’s jurisdiction is limited to determining the validity and the scope of a patent and other registered rights (such as trademarks and designs).

An important characteristic of the Patent Court is its technical board of examiners. There are examiners specializing in different fields of science and technology who assist the judges in technical matters. They participate in the hearing to examine the parties and/or their witnesses.

Any appeal against the Patent Court's decisions should be brought directly to the Supreme Court.

On 26 April 2010 the Supreme Court has introduced a new electronic E-Appeal system (Patent E-Court) with the aim to give an effective and speedy service to citizens and the parties.

The electronic filing system enables submission, acceptance, and service of document through electronic devices and a modernized courtroom equipped with sophisticated technology. The kind of move is expected to ease the inconvenience caused by logistical problems, which are inevitable when a court exercises territorial jurisdiction over the entire nation, as well as to contribute to the establishment of a paper-free court, according to the Korean Supreme Court’s website.

L. SINGAPORE

As a former British colony, Singapore’s civil justice system is largely based on the English Common Law system. However, in the 1990s, Singapore introduced new court procedures to reduce litigation costs and expedite the resolution of disputes. These rules emphasize stricter case management and strongly endorses alternative dispute resolution, particularly mediation. Judges have powers to manage cases by enforcing cost provisions to ensure that parties’ act reasonably and they do not excessively delay proceedings. Moreover, parties have ample opportunities and are encouraged to consider mediation and settlement throughout the proceedings as a means to promote speedier dispute resolution.

Singapore’s judiciary is comprised of both the Supreme Court and the Subordinate Courts. The Supreme Court is comprised of the Court of Appeal and the High Court, whereas the Subordinate Courts include the District Court, the Magistrate’s Court, the Small Claims Tribunal and several specialized courts. The Court of Appeal is Singapore’s apex court which has appellate jurisdiction over matters emanating from the High Court as well as the Subordinate Courts. The High Court is the court of first instance for civil claims beyond the pecuniary limits of the Subordinate courts with unlimited jurisdiction to hear any claim. The District Court, Magistrate Court and the Small Claims Tribunal generally have jurisdiction to hear pecuniary claims, and are limited to the monetary limits of S$250,000, S$60,000, and S$20,000 respectively.

Both the Supreme Court and the Subordinate Courts (except the Small Claims Tribunal) utilize the same set of civil procedure rules which provide the litigation process’s procedural framework and is set out in the Rules of Court. The Small Claims Tribunal on the other hand, is governed by its own specific rules and applies an informal process when adjudicating disputes.

2. Overview of civil proceedings

a. Court’s Case Management Powers

At any time, the Court has the power to facilitate case management by giving directions to secure a just, expeditious and economical disposal of the matters in dispute. Typically, the Court makes “unless” orders against disobedient parties’, which usually provides that unless the party complies within a stated period, the action will be dismissed or the defense struck out.

Furthermore, parts of or an entire pleading may be struck out at any stage of the proceedings if it: (a) discloses no reasonable cause of action or defense; (b) is frivolous or vexatious; (c) may prejudice, embarrass or delay the fair trial of the action; or (d) amounts to abuse of the Court. In addition, where no fresh step in the proceedings has been taken for over a year, the Court may discontinue the proceeding altogether.

b. Originating Process

A civil claim may be commenced either by a writ of summons or an originating summons. The writ of summons is appropriate when there exists a dispute of fact, and an originating summons is typically used where there is no likely dispute of fact or the dispute issue is one of interpreting legislation or law. The claim is filed electronically with the Court Registrar and must either include a general endorsement, or more commonly, be endorsed with a Statement of Claim.

The Statement of Claim must contain details of the plaintiff’s claim, the material facts relied on by the plaintiff in making their claim, and the remedies which they seek.

c. Appearing/Filing a Defense

A defendant who intends to defend a plaintiff’s claim must inform both the Court and the plaintiff of his/her intention to do so by entering a Memorandum of Appearance⁹. In instances of a writ being served within Singapore and outside of Singapore, the Memorandum of Appearance must be filed within 8 days and 21 days, respectively, of the writ’s service. If the defendant defaults by failing to file a Memorandum of Appearance on time, then the plaintiff may apply for default judgment on their claim.

If the defendant wishes to defend the claim, then a defense must be served within 14 days after the time limit for appearing; a counterclaim may also be filed concurrently, if applicable. A defense must state the material facts relied on and must contain the necessary particulars of any defense or matter pleaded.

d. Discovery and Evidence

The overriding and guiding principle in Singapore’s litigation process is that no party should be surprised by another. Therefore, parties are obligated to provide discovery of all relevant documents by filing lists of documents, verified by affidavit, to ensure that each party knows the case thoroughly before the trial commences. To that end, parties are entitled to inspect and take copies of each other’s documents which have been in their possession, custody or power. Additionally, a party may even apply for discovery against a non-party, provided they adduce an affidavit specifying the documents being sought, how such documents are relevant and evidence that those documents are likely in the third party’s possession, custody and or power.

If witnesses are to be called at trial, then the party calling the witness must identify the witnesses which they intend to call at trial and detail the evidence that each witness intends to give. All such details will be by affidavit and will stand as their testimony at the trial, on which they will be cross-examined on. These statements are exchanged before trial.

e. Pre-trial Conferences

Once a matter is set down for trial, a pre-trial conference is held between the parties and the Court Registrar, to determine the status of the proceedings and fix appropriate dates for trial. It also helps ensure that parties have taken all necessary steps in the proceedings and it is moving along swiftly and expediently; if settlement is possible, that parties settle. Accordingly, the Registrar may issue ‘unless orders’, directing parties to comply with additional procedures in the interest of efficiency.

If a case is more complex and expert evidence will likely be adduced at trial, parties may write to the Court requesting further pre-trial conferences to discuss expert evidence, to agree on the appointment of a joint expert to save costs, or to agree on the scope of expert evidence. Generally, a trial date will be fixed within 28 days from the date of the latest pre-trial conference.

f. Trial

As the party who initiated the proceedings, the plaintiff bears the burden of proof to prove their case. Accordingly, the plaintiff’s witnesses give their evidence first, and will be cross-examined by the defendant. However, cross-examination is not limited to issues raised in the witness’s affidavit or oral testimony, provided that such cross-examined issues are relevant to the dispute before the Court. The plaintiff will then get an opportunity to re-examine their own witnesses, but is limited to matters which were raised in the cross-examination. Then the defendant’s witnesses get their opportunity to testify and are cross-examined in the same manner as the plaintiff’s witnesses.

Witnesses must attend trial, otherwise their evidence given in the affidavits may be rejected by the Court. Accordingly, if it is necessary to compel the attendance of a witness at trial, a party may apply to subpoena a witness. Three types of subpoenas may be issued. The first requires a witness to attend Court to give oral evidence, the second requires a witness to produce documents without the obligation to attend personally, and the third is a combined subpoena that requires the witness to give evidence in Court and to produce documents.

g. Alternative Dispute Resolution

The Singaporean Court system provides a large variety of court-annexed alternative dispute resolution services capable of handling both large and small claims alike, including mediation and arbitration. Litigation in the Subordinate Courts is most commonly referred to the Primary Dispute Resolution Center, which provides both an evaluative and mediatory process. Such mediation is generally consensual, is conducted free of charge, and is guided by an experienced settlement judge who provides a neutral perspective on the legal issues involved and suggests possible settlement options. Such court-annexed mediation may be requested by either party at anytime after the commencement of proceedings and up until the point in time before trial.

Additionally, more formal mediation processes are also available through the Singapore Mediation Center, and arbitration may be conducted on an ad hoc basis or administered by a recognized arbitral institution such as the Singapore International Arbitration Center.

h. Timing

From an action’s inception till conclusion, the entire litigation process usually takes around 12 to 18 months (including the time required for appeals). Since judicial case management was introduced in Singapore, Courts have generally denied adjournments once a trial date is fixed. Only in exceptional circumstances can trial dates be moved.

After the defendant’s witnesses have finished giving their testimonies, each party will make their closing submissions, which may be written or oral depending on the complexity of the case. The Court may make a decision immediately after the closing submissions, or if more time is required to consider the case, the Court may reserve their judgment and parties will be notified of the decision at a later time.

In the Supreme Court, parties dissatisfied with decisions of the High Court may appeal to the Court of Appeal as of right, if the subject matter at trial exceeds S$250,000. If the monetary amount involved is S$250,000 or less, then the Court’s approval must be obtained in order to seek further appeal. Similarly, appeal lies as of right if the subject matter in dispute is S$50,000 or more in the Subordinate Courts, otherwise leave is required. Appeals should be filed within 14 days from pronouncement of the judgment in either Court.

The Courts have power to order costs, which are usually awarded in favor of the winning party. Such costs may include disbursements, fees, expenses and compensation. However, the amount of any such award of costs is determined at the sole discretion of the Court.

For foreign proprietors of unregistered trademarks, Singapore’s Trademark Act conforms to international standards as set out in the Paris Convention and the World Intellectual Property Organization’s Joint Recommendations regarding the protection of well-known marks. Consequently, a trademark’s proprietor may apply for an injunction to restrain the use of an infringing trademark if the mark is deemed to be well-known in Singapore.

In addition to civil remedies, trademark rights may also be enforced via criminal proceedings.

Under Singapore’s Trademarks Act, the following infringing acts may result in criminal liability:

1. 
   Counterfeiting a registered trademark;
   
2. 
   Falsely applying a registered trademark to goods or services;
   
3. 
   Making or possessing articles for committing offenses; and
   
4. 
   Importing or selling goods with falsely applied trademarks.
   

1. 
   Issue a notice to involved parties;
   
2. 
   Issue a summons to the respondent (the accused); or
   
3. 
   Direct police to conduct an investigation into the complaint.
   

Following recognition of the complexity and sophistication of intellectual property and international trade cases, the Ministry of Justice has established the Central Intellectual Property and International Trade Court (CIPIT). The court began its service in 1997 with the goals of ensuring convenience, expediency and fairness in judicial proceedings.

Since 1997, many cases have been brought to the Court. In 2002 there were 5,023 cases brought. In 2007, the number increased to 8,072 cases and maintained the comparable figure of 8,431 cases in 2009. Most of the cases brought to the court and most decisions granted, have been criminal cases.

As a specialized court, the CIPIT exercises in a sui generis system set forth in The Rules of the Intellectual Property and International Trade Cases 1997 (hereinafter referred to as “the Rules of the court”) and the Act for the Establishment of and Procedure for the Intellectual Property and International Trade Court 1996 (hereinafter referred to as “Act of Establishment”). The practices of the Court as will be elaborated later, introduced not only new court litigation procedures but also common law practices in a civil law country.

The CIPIT has exclusive jurisdiction to hear both criminal and civil cases arising out of intellectual property disputes. However, the CIPIT does not have the power to decide on its own jurisdiction. This power rests within the Supreme Court, whose decision is final.

1. Sui Generis System of the CIPIT Court

As mentioned earlier, the CIPIT has introduced many new litigation practices into Thai judicial proceedings. It can be said that this new approach towards litigation provides a more “user-friendly” forum. Particular points to note are:

For the purpose of expediency, the hearing in the CIPIT proceeds without adjournment until the hearing is over, save in the case of unavoidable necessities. After the hearing is over, the court must promptly render a judgment or order.

The common law concept of “Discovery” has been introduced into the CIPIT with the objective of providing convenience, expediency and fairness in judicial proceedings. By disclosure of evidence before the day of taking evidence, the parties and the court are able to determine the relevant issues in the case as well as agree upon certain facts, saving time and costs by shortening the hearings

The disclosure of evidence includes witness statements which the CIPIT is currently applying as a rule, leaving the traditional way of examining witnesses as an exception. The court usually gives orders to the parties to submit their witness statements in advance in order to encourage them to pursue this procedure.

c. Preliminary Injunction

Preliminary injunctions in IP litigation can be requested prior to filing the statement of claim or prosecution.

The Rules of the court allows the injured party to request a preliminary (or preventive) injunction upon condition that he proves to the court that there exists reasonable grounds to file a case against the prospective defendant as well as sufficient grounds for the court to grant injunction. Moreover, the prospective plaintiff should provide eyewitness testimony to support his request.

The court only grants preliminary injunctions where it finds:

(1) there is a reasonable ground for the application and the filing of the application, as well as sufficient reasons for the court to grant such an application, and

(2) the damage incurred cannot be restituted by monetary compensation or indemnity of any kind, or the prospective defendant is not in a position to compensate the prospective plaintiff for the damage, or it might be difficult to enforce the judgment against the prospective defendant.

Anton Piller order originated from the English case Anton Piller KG v. Manufacturing Process Ltd. 1976 with the idea that no person should be able to frustrate the process of justice by destroying subject matter evidence of the case.

This procedure of early taking of evidence applies where a person apprehends that the evidence he may have to rely in the future will be lost or become difficult to adduce in court or at a later stage, before or after the civil suit is filed.

The Act of Establishment together with the Rules of the court sets out the requirements for the applicant to satisfy as follows:

(1) If an action has not yet been instituted, there is a strong prima facie case on the merits of the claim that the applicant is likely to suffer serious actual or potential damage and

(2) There is clear evidence that the alleged party is incriminating evidence in his possession and

(3) If the alleged party is notified before hand, the evidence will be destroyed or difficult to adduce in at a larger stage.

After satisfying these conditions, the applicant is entitled to enter into the premises of the other party to search and inspect, as well as make copies of evidence according to the circumstances of the case.

This ex parte application is usually made by the plaintiff after issuing his writ but before he has served it on the defendant. Nevertheless, in practice the court is not likely to grant such an order. This is because the conditions set forth are difficult to satisfy and the court has to weigh the balance between protection of the owner’s exclusive rights and prevention of abuse of such rights.

e. Power to Issue Procedural Rules of the Court

Conventionally, Thai procedural law can only be amended through the amendment Act to the Procedural Code. This process usually takes many years to. The Act for the Establishment provided a new procedure for the Chief Justice of the CIPIT, subject to the approval of the President of the Supreme Court, to be able to issue Rules of the court on proceedings and hearing of evidence in intellectual property and international trade cases provided that such provisions do not impair defendants’ rights.

Such amendments shall be for the purpose of convenience, expediency and fairness of the proceedings and shall come into force after their publication in the Government Gazette. Unlike the traditional way of procedural amendments, this process takes only a few months.

In addition, the flexibility of this “user – friendly” forum can be seen through the following provisions:

• 
  Communication with other court may be carried out via facsimile, electronic media or other information technology (IT) media or together with express mail service.
  
• 
  Video conference for witness examination.
  
• 
  An English translation can be omitted if such evidence is not related to the main issue of the case.
  
• 
  Information taken from a computer network can be used as an evidence of a case.
  

The judge in the CIPIT is empowered to conduct any proceedings or issue any orders, in addition to the adjudication. In this regard the judge may determine the course of proceedings before an examination of witness with the presence of the parties. The course of proceedings may include the following:

(1) Mediating for settlement or applying arbitration rules;

It has become a common practice in the CIPIT to find out if the case brought before it can be settled by mediation or applying arbitration rules, not only to save time and money but also maintain the commercial relationship between parties. Where the parties cannot find common interests to settle the case, they shall be able to exercise their rights further in the proceedings of the court.

The CIPIT also provides a list of specialized mediators to support the process, amongst these are associate judges. Statistically, from 2002 – 2007 there were 429 cases brought to settlement by mediation and by applying arbitration rules. However, only 4 of these cases were brought to settle by arbitration.

(2) Scheduling dates and times for the proceeding;

(3) Determining date & time, procedures and steps necessarily applied to the proceeding, for example, numbers and details of witnesses, affidavits, expert witnesses, documentary evidence and evidence summoned from the other party or the third party as well as the taking of evidence out of court and commissioning to another court;

(4) Determining details and durations regarding technical or scientific experiment to prove the facts of the case;

(5) Determining expert evidence

Parties are allowed to file a request to the court to take judicial proceedings according to any steps that the parties have agreed upon. If the court finds that the request is for the purpose of convenience, expediency and fairness and it is not against public morality or public order, the court may grant such request.

Although the CIPIT may adopt some common law practices for the convenience and expediency of the case, the uniqueness of inquisitorial system in civil law practices still exists. Especially when the court deems it necessary to take other evidence relevant to the case from either one of the parties for additional examination. Then the court by itself, is able to proceed with taking of evidence, which also includes re-examining witnesses who have already been heard.

There are two types of judges operating in the CIPIT court. First, career judges appointed from the judicial officers according to the Rules of Judicial Officers. Second, associate judges appointed from judicial officers with a field of specialization in intellectual property and international trade. The associate judges are in the position for a period of five years.

A quorum consists of at least two career judges and one associate judge. The decision is granted according to the majority’s vote.

5. Civil Procedure Rules

Civil cases brought at the CIPIT may be for trade mark, copyright, patent, design, trade secret and other IP-related cases.

This trademark dispute between private parties usually derives from infringement or challenges against a mark sought for registration.

In infringement cases, civil action start after issuing a cease and desist letter, demanding inter alia, that the infringer undertakes not to deal with infringing products, pays agreed sum of damages and costs, discloses the source of these counterfeit products, and possibly publication of apology notice in the newspapers. In not complied with a case is filed at the CIPIT.

In disputes over a mark sought for registration, a person who believes he has better rights to the mark may file for an opposition within 90 days of the publication of the mark. After the applicant has received notification of the opposition, the applicant then has 90 days to counterclaim the opposition from the day of the receipt of notification by the trademark registrar. The trademark registrar then issues a decision in which the discontented party may appeal to the Trademark Board within 90 days after the acknowledgement of the decision. The losing party may bring the case to the CIPIT within 90 days after his understanding of the Trademark Board’s decision. After the CIPIT has granted a decision or an order, an appeal against the judgment or order may be brought directly to the Supreme Court, whose decision is final.

Disputes between a private party and the DIP often arise when an applicant views that the decision of the registrar or the Trademark Board regarding the trademark registrability is clearly unreasonable. Under these circumstances, the case maybe brought to the CIPIT and appeal to the Supreme Court with the same procedure as mentioned above.

The procedural steps are illustrated below.



6. Criminal Cases

Apart from claiming damages and compensations in civil cases, the injured party may also file a complaint in criminal proceedings or file a civil case in connection with an offence. Trademark infringements are public offences; the injured party therefore does not have to incriminate.

The Thai Criminal Procedural Code provides three alternatives for an injured party to exercise his rights in judicial proceedings as follows;

a. Public Prosecutor

Through this process, the injured person files a compliant to the inquiry officer who then will make an opinion and report to the public prosecutor. The public prosecutor will then take the case to the court.

The procedural steps are illustrated below.



b. Injured Person

The injured person may also choose to file the prosecution directly to the court. In this case, the court will order a preliminary examination in order to determine that there exists a cause of action to initiate a lawsuit (since there has not been any preliminary inquiry before being brought to court).

Intellectual property infringement cases allow the injured person to join with the public prosecutor in the prosecution by applying for a motion to associate himself with the prosecutor at any stage of the proceedings before the pronouncement of Judgment of the Court in the first instance.

Once the CIPIT has granted any judgment or order, an aggrieved party may appeal the case directly to the Supreme Court within one month from the date of its pronouncement. This leap – frog procedure is an attempt to redress delay.

Like any other proceedings of the court, there are limitations for an appeal. In criminal cases, the appellant may not appeal a question of fact where the minimum of penalty prescribed by law does not exceed three years imprisonment or sixty thousand Baht (approximately 1,875 USD) fine or both. There are exceptions to this rule, if the accused is sentenced to imprisonment or is detained in lieu of imprisonment, or the convicted is suspended from imprisonment or the sentence, or the accused is fined more than five thousand baht.

As for civil cases, where the value of the asset or the amount in dispute on appeal does not exceed two hundred thousand baht or the amount prescribed by the royal decree, no party shall be able to appeal to Supreme Court with respect to the question of facts unless the judge who sat in the case has made a dissenting opinion or has certified that there is reason to appeal or a written approval by the Chief Justice of the CIPIT court.

Case management procedures in the form of statutory rules/legislations are yet to be introduced in India. In the absence of these, procedural aspects of civil litigation in India are governed under the Code of Civil Procedure (CPC), 1908. The CPC lays down the procedures that courts are required to follow. A civil suit commences with the plaintiff filing the Plaint (claim) and the defendant then filing its written statement (response to the Plaint).

Briefly the procedural rules governing litigation in India are as follows:-

1. 
   PLEADING (Order VI)
   

2. 
   PLAINT (Order VII)
   

1. 
   the name of the Court in which the suit is brought;
   
2. 
   the name, description and place of residence of the plaintiff;
   
3. 
   the name, description and place of residence of the defendant, so far as they can be ascertained;
   
4. 
   where the plaintiff or the defendant is a minor or a person of unsound mind, a statement to that effect;
   
5. 
   the facts constituting the cause of action and when it arose;
   
6. 
   the facts showing that the Court has jurisdiction;
   
7. 
   the relief which the plaintiff claims;
   
8. 
   where the plaintiff has allowed a set-off or relinquished a portion of his claim, the amount so allowed or relinquished; and
   
9. 
   a statement of the value of the subject-matter of the suit for the purposes of jurisdiction and of court-fees, so far as the case admits.
   

3. 
   SUMMONS
   

4. 
   Under Order XXXIX Rule 3 CPC, if the Court is satisfied that the object of granting interim injunction would be defeated by delay, then it may grant an ex-parte injunction against the defendant.
   
5. 
   WRITTEN STATEMENT:
   

Please, however, note that the Supreme Court of India in Kailash Vs Nanhku and Ors. [AIR 2005 SC 2441] has held that the provisions of Order VIII Rule 1 are directory and not mandatory. As such, the Courts have the discretion to extend the period to file Written Statement beyond 90 days. This discretion is, however, exercised in exceptional circumstances.

6. 
   Under Order VIII Rule 10 CPC, if Written Statement is not filed within the prescribed period, then the Court may close the defendant’s opportunity to file Written Statement and pass decree in terms of the prayers sought in the Plaint.
   
7. 
   While under CPC there is no provision to file a response to the Written Statement, the plaintiff may seek leave of the Court to file a Replication to rebut the defenses raised by the defendant in the Written Statement.
   

1. 
   ISSUES:
   

8. 
   Under Order XIV Rule 1, the parties are required to file all original documents (photocopies whereof were filed along with the Plaint/Written Statement) before framing of the issues. If a plaintiff or defendant wishes to file any additional documents, it may do so with the liberty of the Court (Under Order VII Rule 14(3) and Order VIII Rule 1A(3) CPC respectively explaining the reasons why the same could not be filed earlier).
   

Parties are then called upon to lead evidence in support of their respective claims and defenses. The trial is governed under the Evidence Act, 1872 and is broadly classified as follows:-

1. 
   Examination-in-chief;
   
2. 
   Cross Examination
   
3. 
   Re-examination
   

Under Order XVIII Rule 4 CPC, the examination-in-chief of a witness can be led by way of an affidavit. The purpose of examination-in-chief is to give an opportunity to the parties to prove their respective claims/defenses by way of oral and documentary evidence.

Thereafter, the opposite party has the right to cross-examine the witness. The purpose of cross-examination is to verify the veracity of the witnesses’ statement.

The parties also have the option to seek liberty from the Court to re-examine the witness.

10. 
    Once parties have led their respective evidence, the matter is fixed for Final Arguments.
    

The Court after hearing the arguments of both the parties, passes a judgment in the suit under Order XX and a formal Decree (i.e. the formal expression of adjudication by a Court which conclusively determines the rights of the parties with regard to the matters in controversy in the suit) is drawn.

With specific reference to trade mark infringement suits, it may be mentioned that Section 134 of the Trade Marks Act, 1999 allows for the institution of trademark infringement suits before the District Courts in India. In case of infringement of a registered trademark a trade mark infringement suit may be filed. Where an unregistered trademark is infringed, a passing off action may be filed.

In case of an infringement action, the following reliefs are available to the plaintiff under Section 135 of the Trade Marks Act, 1999:-

1. 
   Injunctions restraining further use of the infringing mark. These include:-
   

• 
  Interlocutory/Interim Injunction;
  
• 
  Permanent/Perpetual Injunction;
  

2. 
   Damages or an account of profits;
   
3. 
   An order for delivery up of infringing labels and marks for destruction or erasure.
   

A proposal aimed to expedite disposal of commercial disputes with high pecuniary value has been recently envisaged by ‘The Ministry of Law and Justice’, in the form of The Commercial Division of High Courts Bill, 2009 [Bill No. 139 of 2009]. The Bill is based on the recommendations of the 188^th Report of the Law Commission of India. The Bill has already seen safe passage through the Lok Sabha, the Lower House of the Indian Parliament. The Bill as passed by the Lok Sabha was referred to the select Committee of the Rajya Sabha (the Upper House of the Indian Parliament) on December 22, 2009 and the Committee presented its report on July 29, 2010. Currently, the Bill is pending consideration and passing before the Rajya Sabha.

The 188^th Report of the Law Commission of India was prepared in the backdrop of sharp criticism offered by U.S. Courts while adjudicating a series of cases involving claims filed in the American courts involving Indian parties. While doing so, the U.S. courts passed deeply critical judgments highlighting the ‘deplorable’ state of its Indian counterpart.

In cases such as Bhatnagar Vs Surendra Overseas Ltd.¹⁰ Justice Lewis J. approved the continuance of the case in the American courts in view of the tremendous backlog of cases in the Indian district courts which could take ‘a quarter of a century to resolve this litigation if it were filed in India’.

Similarly, in Shin-ETSU Chemical Co. Ltd. Vs. ICICI Bank (dated August 5, 2003), Judge Ira Gammerman of the Supreme Court of the State of New York observed – ‘at some point, the prospective judicial remedy becomes so temporarily remote that it is no remedy at all and may render (an) alternative forum so ‘clearly unsatisfactory’ as to be inadequate….. Thus the plaintiff could very well be deprived of its day in Court if required to litigate in India’.

Also in Modi Enterprises Vs ESPN Inc. (dated March 4, 2003) the same judge made specific reference to the Delhi High Court where claims could be heard for decades which did not make India an adequate forum to pursue such litigation.

In view of the above, in December 2003, this Report recommended constitution of High-Tech Fast-Track commercial divisions in High Courts in India similar to the Commercial Courts of New York, UK and Singapore to provide cost effective, efficient solutions to expedite the resolution of commercial disputes.

The salient features of the Bill are as follows:-

1. 
   Each High Court is to constitute a commercial division of that High Court specifically for adjudicating commercial disputes valued at Rs 5 crore (USD 1131075 approximately) and above, thereby conferring original jurisdiction upon the High Court to hear such cases.
   
2. 
   The Commercial Division refers to a Division Bench which would comprise High Court judges to be appointed by the Chief Justice.
   
3. 
   The definition of the term ‘commercial disputes’ contained in the proposed Bill is relevant as it includes intellectual property disputes within the ambit of Section 2 of the Bill. According to Section 2 (a) - “commercial dispute” means a dispute arising out of ordinary transactions of merchants, bankers and traders such as those relating to enforcement and interpretation of mercantile documents, export or import of merchandise, affreightment, carriage of goods, franchising, distribution and licensing agreements, maintenance and consultancy agreements, mercantile agency and mercantile usage, partnership, technology development in software, hardware, networks, internet, website and intellectual property such as trademark, copyright, patent, design, domain names and brands and such other commercial disputes which the Central Government may notify.
   
4. 
   Case management procedures are reflected in Section 9 of the Bill where time limits have been imposed on the Parties during various stages of a lawsuit. As per Section 9(2) of the proposed Bill, a plaintiff will have to file the following pleadings and evidence along with the Plaint at the very initial stage of the lawsuit:
   

• 
  the documents on which he sues or relies;
  
• 
  as many copies of the plaint and documents as to the number of defendants;
  
• 
  an affidavit containing his statement of examination-in-chief;
  
• 
  affidavits containing statements of other witnesses in examination-in-chief;
  
• 
  brief issues that are likely to arise;
  
• 
  list of interrogatories, if any;
  
• 
  application for discovery and production of documents, if any, maintaining their relevancy;
  
• 
  such other material as the plaintiff may consider necessary;
  
• 
  full address, including e-mail, fax and telephone number of all the claimants and defendants to the extent known to the plaintiff;
  

1. 
   The defendants shall, within a period of one month from the date of receipt of the copy of the plaint along with all the relevant documents file his written statement along with all documents except copies of plaint referred to;
   
2. 
   The defendants shall, along with the written statement, also file counter-claim, if any, along with all documents except the copies of plaint or documents ;
   
3. 
   The defendants shall also send copies of written statement and all documents filed along with the written statement, to the plaintiff;
   
4. 
   The plaintiff shall, at the time of trial, file affidavit containing evidence in examination-in-chief of other witnesses, if any;
   
5. 
   The plaintiff may, within fifteen days of service of the written statement, apply to the Commercial Division for granting leave for filing of rejoinder;
   
6. 
   The plaintiff shall file rejoinder within one month from the date of the order of the Commercial Division granting leave to file such rejoinder;
   
7. 
   Where the Commercial Division allows any application for discovery of documents, the plaintiff and the defendants, as the case may be, shall be permitted to file supplementary statements, within a period as may be specified by the Commercial Division;
   
8. 
   For the purposes of recording of statements in cross-examination and re-examination of parties and witnesses, the Commercial Division may appoint an advocate not less than twenty years standing at Bar or a Judicial Officer not below the rank of Senior Civil Judge as Commissioner;
   
9. 
   All parties shall file written submissions before the commencement of oral submissions;
   
10. 
    The time limits for making submissions (including oral submissions) shall be fixed in advance, at the case management conference;
    

Such Commercial Division is required to pronounce the judgment within 30 days of the conclusion of the argument and an appeal shall lie to the Supreme Court against any decree passed by the Commercial Division.

The above proposals contained in the Bill are aimed to allow a fast-track procedure for the disposal of the cases and are a step in the right direction. The Bill is currently pending before a Joint Parliamentary Committee. The Committee received a number of representations from its relevant stakeholders including lawyers/law-firms and also invited representations from these to make submissions before it. Some of the criticisms voiced against the Bill include the following:-

1. 
   With reference to Section 2 of the Bill, the definition of “commercial disputes” needs to be re-examined as it ignores significant types of contractual and commercial disputes such as disputes arising out of or related to joint venture agreements.
   
2. 
   The incorporation of “intellectual property” into the definition of commercial disputes does not seem to be appropriate as it gives rise to the following issues:-
   

(2) There would be an eminent problem regarding the valuation of the subject-matter of disputes in cases of intellectual property in light of the fact that valuation of IP is still ambiguous in India.

(3) Mostly Intellectual Property suits pertain to Permanent and Mandatory Injunctions and/or Damages, which the aggrieved person seeks from the infringer, and such suits usually would not come under the purview of such a high pecuniary jurisdiction of the Commercial Division.

(4) The skill sets required for dealing with IP matters are very specific and ideally ought to be dealt with by specialist IP Divisions.

3. 
   The judicial structure as envisaged by the Bill proposes only one appellate authority namely the Supreme Court. On the other hand, insignificant commercial disputes would have at least two if not three appellate levels.
   
4. 
   The expression ‘market value’ of immoveable property contained in Section 8(1)(d) of the Bill is ambiguous and amenable to dispute because of which market valuation should not be a mandatory statutory requirement.
   
5. 
   With reference to the fast track procedure outlined in Section 9(2)(a) of the Bill, in our view, the same is contrary to the principles of natural justice. For instance, the provision requires that at the time of filing of the suit the plaintiff should file “Brief issues that are likely to arise”. Doing so before the defendant lays out his case is impractical.
   
6. 
   Sections 11 and 12 of the Bill propose a complete transfer of all cases falling within the pecuniary jurisdiction of the Commercial Division. Such a transfer would in all practicality over-burden the existing infrastructure of the High Courts. This issue can be tackled to a great extent by a procedural change to the effect that from a specified date only new commercial disputes are to be filed in the Commercial Division. The older pending matters may continue to be dealt with by the earlier courts that could be directed to deal with them on an expedited basis.
   

The Bill has also faced some strong opposition from retired Supreme Court Justice V. R. Krishna Iyer and Senior Counsel Prashant Bhushan both of whom questioned the constitutional validity of the Bill.

According to Justice V.R. Krishna Iyer the Bill was contradictory to the provisions of Article 14 of the Indian Constitution relating to fundamental right of equality as it was based on the principle of facilitation in favour of the richer among litigants. He states – “To divide social justice into two categories, the rich being given special facilities for early justice and the not-so-rich being forced to wait is violative of Article 14…….. The legislation classifies litigation into two categories. The poor litigant will wait for the somnolescent process and leisurely pronouncement and the wealthy litigant will have his case speedily terminated. If this be the differentiation, it is horrendous and outrageous in a socialist democracy.”

v. CURRENT STATUS

It is difficult to estimate when the Commercial Division of High Courts Bill will come into force. For the moment, the Bill has been passed by the Lower house of Parliament and is expected to be debated and voted upon by the Upper House of Parliament later this year.

Notwithstanding the above, it is hoped that the Commercial Division of High Courts Bill, will ultimately withstand the constitutionality of the Indian laws and other criticisms in order to facilitate the introduction of further case management procedures in India.

O. AUSTRALIA