Amendments should be liberally allowed to determine the real questions in controversy between the parties, and the cause of action for passing off and infringement were substantially identical.

ORDER

1. The captioned writ petition is filed by the plaintiffs feeling aggrieved by the order dated 28.10.2021 passed on I.A.No.8 filed under Order 6 Rule 17 read with Section 151 of CPC seeking amendment of plaint. The said amendment application is rejected by the trial Court which is under challenge.

2. The present petitioners/plaintiffs have instituted a bare suit for injunction seeking perpetual injunction against the respondents/defendants from passing off petitioners' trademark 'MILAAP'. The petitioners/plaintiffs in the plaint have claimed that they incorporated their office in Singapore and later in India and filed trademark application for registration of mark. It is specifically alleged in the plaint that petitioners first became aware that respondent No.2 is using petitioners mark 'MILAAP' to divert traffic to its own website crafted and designed by respondent No.1. The petitioners therefore claimed that they were compelled to issue cease and desist notice to respondent No.2 against using petitioners' mark as key word and stop passing off petitioners' trademark.

3. Pending consideration of the suit, the petitioners' mark 'MILAAP' came to be registered with Trademark No.3428351. It is in this context, the petitioners filed an application in I.A.No.8 under Order 6 Rule 17 seeking amendment of plaint to include remedy of trademark infringement by the respondents by using the mark 'MILAAP' in its key words and metatags.

4. The respondents contested the application filed in I.A.No.8 by filing detailed objections. The respondents further strongly contended that plaintiffs intend to convert the passing off prayer into one of infringement of trademark. Therefore, respondents strongly resisted by contending that present suit which is one seeking common law remedy cannot be converted into a statutory suit under the Trade Marks Act, 1999. The respondents further contended that there is an essential distinction between the common law action for passing off and an action for infringement by way of statutory suit under the Trade Marks Act and therefore, the respondents contended that present suit cannot be converted into a statutory suit for infringement when admittedly trademark registration is granted pending suit.

5. The trial Court after hearing the rival parties and having examined the claim made in the application filed in I.A.No.8 and the objections, however, declined to grant the relief sought in I.A.No.8. The learned Judge was of the view that if amendment is allowed, the same would relate back to the date of filing of the suit and therefore, if amendment is allowed, it would cause serious prejudice to the interest of the defendants as they would be liable for the acts which may amount to infringement of trademark under Trade Marks Act. The learned Judge was of the view that if defendants are guilty of trademark infringement, the petitioners/plaintiffs are entitled to file a separate suit for infringement of trademark based on a new cause of action. It is in this background, learned Judge was of the view that there is no justifiable grounds to allow the amendment application. On these set of reasonings, the learned Judge has proceeded to reject the application which is under challenge.

6. Learned counsel appearing for the petitioners reiterating the grounds urged in the writ petition would contend that the order under challenge is patently erroneous and the learned Judge has not considered the judgments cited by the plaintiffs to substantiate the relief sought in I.A.No.8. He would vehemently argue and contend that the fundamental ground on which suit is based would remain the same. Mere adding additional cause of action by way of proposed amendment would in no way change the very fundamental character of the relief sought in the present suit and therefore, he would point out that the impugned order under challenge is contrary to the judicial propositions laid down by various Courts and therefore, would warrant interference a