Legal Proceeding Certificate for Trademarks

What is a Legal Proceeding Certificate for Trademarks? - Beyond the Registration Certificate

In today’s growing market, trademark is more than just a logo or a catchy tagline, it is a brand’s identity, a promise to customers, and a legal asset. In India, once a trademark is registered, the Trade Marks Registry issues a Registration Certificate, which is a document that declares ownership of the registered mark. But here is the catch: when it comes to courts, legal battles or trademark owner’s international aspirations, the registration certificate is not enough. Therefore, the Legal Proceeding Certificate (LPC), a lesser-known becomes a critical document. However, the questions which often leaves trademark owners scratching their heads in terms of LPC are Why does India mandate the LPC when the registration certificate already exists? And what can we learn from global practices?

To better understand the concept of LPC, let us dive into this trademark puzzle, unravel its layers, and explore why the LPC is a non-negotiable in certain scenarios.

The Indian Context: Registration Certificate vs. LPC

Imagine you have just registered your brand’s logo, a sleek design that is now your business’s identity. The Trademark Registration Certificate arrives, and you frame it (or at least file it safely). It confirms your exclusive rights to the mark, protects against infringement, and lets you take action against those who use it without your permission. However, if you approach the court to fight against a person who has infringed your registered trademark or apply for trademark protection abroad, you are likely to hit a roadblock. The registration certificate, despite its importance, comes with a fine-print disclaimer: “This certificate is not for use in legal proceedings or for obtaining registration abroad.” Instead, you need the LPC, a certified document issued by the Trade Marks Registry under Section 137 of the Trade Marks Act, 1999 (“Act”), and Rule 56(2) of the Trade Marks Rules, 2017 (“Rules”).

So, what is the deal? The registration certificate is like a driver’s license it proves you are authorized to “drive” your trademark. On the other hand, the LPC is like a detailed vehicle registration document, packed with specifics that courts and foreign offices need. The LPC includes:

• The trademark’s details (mark, classes, goods/services). 
• Application and registration dates.
• Claimed user date (when you started using the mark).
• Renewals and Validity (trademarks need renewal every 10 years). 
• Assignments or licenses (if the mark was transferred or licensed). 
• Disclaimers or conditions (e.g., restrictions on colour, region, or use).

The above mentioned information in the LPC ensures transparency and reliability, making it indispensable for legal and international purposes. A Legal Proceedings Certificate or LPC is prima facie evidence of any entry made in the Trade Marks Register. Non-Filing of LPC the Courts can deny granting injunction orders further if the LPC is not submitted to the court at the right moment, a heavy penalty will be levied for not having filed it initially and to accept its filing at a later stage even if the brand is registered.

However, while on the contrary, the Division Bench of the Hon’ble Delhi High Court comprising A division bench comprising of Justice Vibhu Bakhru and Justice Amit Mahajan vide its decision dated September 12, 2022 in the matter titled as M/s Maan Pharmaceuticals Ltd. vs. M/s Mindwave Healthcare Pvt. Ltd (FAO(COMM) 78/2022.), in appeal, has held that even though a Legal Proceedings Certificate (“LPC”) is a crucial document that should be presented to the court when deciding preliminary applications, non-filing of the same will not affect the Plaintiff's statutory right to seek an injunction in infringement proceedings, to which it is otherwise entitled. Further Hon’ble Bombay High Court in the case of Pidilite Industries Limited v. Poma Ex Products [2017 (72) PTC 1 Bom] observed that, at a preliminary stage, a certificate of registration can be filed for determining its evidentiary value, and a LPC can be submitted at the stage of the trial of the matter.

 Why the LPC is Required in India

1. Statutory Mandate: The Rules, explicitly bar the registration certificate from use in legal proceedings or foreign registrations and mandates the LPC, which is obtained by filing Form TM-M. This is not bureaucratic red tape but a legal safeguard to ensure courts and foreign offices receive verified, authoritative documents.
2. Credibility: In Indian trademark disputes, irrespective of whether it is an infringement or passing-off cases, the courts require robust evidence. The LPC, as a certified copy, is admissible under the Indian Evidence Act, 1872 (now Bharatiya Sakshya Adhiniyam, 2023), and carries higher weight than the registration certificate. In Amrish Agarwal v. M/s Venus Home Appliances Private Limited [CM (M) 1059/2018], the Delhi High Court emphasized that courts rely on the LPC or in its absence, a combination of the registration certificate, journal extracts, and registry status reports. The LPC’s detailed metadata (e.g., disclaimers or renewals) prevents disputes over the mark’s scope. For instance, if a plaintiff claims broad exclusive rights but a disclaimer restricts the mark to specific goods, the LPC reveals this, averting courtroom surprises and ensuring transparent adjudication.
3. International Ambitions: For businesses eyeing global markets, the Legal Proceedings Certificate (LPC) is a vital asset. Under the Madrid Protocol, administered by WIPO, international trademark filings require a certified copy of the home country’s registration to verify the basic mark. Rule 56(2) of the Rules, bars the registration certificate from use in foreign registrations, making the LPC obtained via Form TM-M the essential document. Failure to provide the LPC when requested by WIPO or designated countries risks provisional refusals or delays, stalling your global expansion and increasing costs. Even under Paris Convention claiming the priority rights in the foreign territories required the LPC.
4. Transparency and Accuracy: Trademarks are very dynamic in nature, and evolves through renewals, assignments, licenses, etc and the registration certificate, issued at the time of registration, does not reflect these updates. The LPC, however, is a snapshot of the mark’s current standing, ensuring courts and foreign offices have accurate and up to date information. Think of it like a medical report, the initial diagnosis (registration certificate) is important, but a current health check (LPC) is what the doctor (or judge) needs.
5. Judicial Efficiency: By mandating the LPC, India streamlines legal processes as the Courts will not have to to dig through the Trade Marks Registry or verify details independently. The LPC, with its certified status, reduces procedural hiccups and ensures consistency, much like how standardized forms simplify tax filings.

Why Isn’t the Trademark Registration Certificate Enough?

The registration certificate’s limitations stem from its purpose, it is a proof of ownership, but it was not designed for courtrooms or international filings. As we discussed above, the disclaimer is clear, and the static nature of the registration certificate lack crucial details which limits its utility. Submitting it in court risks objections or delays, as it does not meet the evidentiary standards of the Act and Indian Evidence Act 1872 (Now BSA- Bharatiya Sakshya Adhiniyam, 2023). Likewise, foreign offices, such as those under the Madrid Protocol, reject it for lacking certification, potentially stalling international applications. The LPC, by contrast, is tailored for these high-stakes scenarios, offering a certified, comprehensive record ensuring courts and foreign registries have the authoritative evidence they need.

Learning from the World: International Best Practices

India’s LPC requirement is not a standalone practice but a reflection of global trademark standards that prioritize certified, verified documents. Let us explore a few examples:

1. United States: The United States Patent and Trademark Office (USPTO) issues a Certificate of Registration accessible via the Trademark Status and Document Retrieval system, however for lawsuits or international filings, a Certified Copy of Registration, authenticated with a digital seal is required. This document, like the LPC, includes detailed information about assignments, disclaimers etc.
2. European Union: The European Union Intellectual Property Office (EUIPO) provides a Registration Certificate for EU trademarks. However, for legal proceedings or priority claims, a Certified Extract from the EUIPO register is required. This extract, akin to the LPC, includes oppositions, renewals, or transfers, ensuring transparency across EU jurisdictions.
3. WIPO’s Madrid System: The Madrid Protocol, administered by WIPO, facilitates international trademark filings through a basic mark verified by the home office (Madrid System). While electronic transmission often suffices, WIPO or designated countries may request a certified copy of the home registration for verification, particularly in disputes or oppositions.
4. United Kingdom: The UK Intellectual Property Office (UKIPO) issues a Certificate of Registration but offers a Certified Copy for legal or foreign use. This practice mirrors India’s, emphasizing certified documents to reduce fraud and ensure accuracy in court.

Certified documents like the LPC are the global benchmark for trademark matters, delivering clarity and reliability. They provide clarity, reduce disputes, and align with the need for standardized, reliable evidence.

Practical Tips for Trademark Owners

Navigating the LPC requirement does not have to be daunting. Here is how to stay ahead:

• File for the LPC Early: If you anticipate litigation or international expansion, apply for the LPC multiple copies (one copy can be used only to one suit/litigation and/or one foreign application) via Form TM-M on the Trade Marks Registry’s portal (www.ipindia.gov.in). Processing takes 1-2 weeks for urgent application and about 1-2 months for normal application.  Paris Convention mandates filing of foreign application claiming prority within six months and hence it is important for you to obtain LPC immediately after filing Application as well as on obtaining Registration.
• Hire a Trademark expert: An expert can streamline the process, ensure accuracy, and advise on additional requirements (e.g., notarization/legalization/ apostilization for foreign filings).
• Monitor Renewals: Since the LPC reflects renewals, keep your trademark active to avoid legal vulnerabilities.

Authors: Mr.Vishwas Chitwar, Associate, Technology Practice Group and Mrs.Varalakshmi Makyam, Partner, IP Practice Group.