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Calcutta High Court
JAYANTA KUMAR BISWAS, J.
Heinz Italia S. r. L. - Appellant
Versus
Dabur India Ltd. - Respondents
G. A. No. 2313 of 2003 and C. S. No. 138 of 2003
Decided On : 2 April 2004
TRADE MARK - STAY OF SUIT - SECTION 10 CPC - SAME MATTER IN ISSUE - INTERIM RELIEF - STAY OF SUIT TILL DISPOSAL OF PREVIOUS SUIT - NO INTERIM RELIEF IN STAYED SUIT: Where in a suit for infringement of registered trade mark and passing off, the defendant filed an application for stay of suit and dismissal of interlocutory application for interim reliefs filed by the plaintiffs, on the ground that the matter in issue in the present suit is directly and substantially in issue in the previously instituted suit, the court held that the trial of the present suit should be stayed during the pendency of the suit previously instituted by the plaintiffs in the Gurgaon Court, as the matter in issue in both the suits is same and if the plaintiffs succeed in the previously instituted suit, then it would not be necessary for them to proceed with the present suit.
Fact of the Case:
Plaintiff 1 is the proprietor of the registered trade mark "Glucon D". Under the trade mark plaintiff 2 is manufacturing and marketing an instant energy drink. Defendant 1 is manufacturing and selling an instant energy drink under the trade mark "Glucose D". Alleging that acts of defendant 1 amounted to infringement of registered trade mark and passing off, the plaintiffs filed Civil Suit No. 2 of 2003 in the Court of the Additional District Judge at Gurgaon (Haryana). Such suit filed on February 19th, 2003 is pending. The present suit was filed on May 8th, 2003. Alleging that the matter in issue in the present suit is also directly and substantially in issue in the previously instituted suit, the defendants have filed this application under Section 10 of the CPC.
Finding of the Court:
The court held that the trial of the present suit should be stayed during the pendency of the suit previously instituted by the plaintiffs in the Gurgaon Court, as the matter in issue in both the suits is same and if the plaintiffs succeed in the previously instituted suit, then it would not be necessary for them to proceed with the present suit. The court also held that the plaintiffs are not entitled to proceed with the interlocutory application filed by them, in the pending suit for interim reliefs.
Issues: 1. Whether the trial of the present suit should be stayed till the trial and determination of the suit instituted previously by the plaintiffs in the Gurgaon Court? 2. Whether the plaintiffs are entitled to proceed with the interlocutory application filed by them, in the pending suit for interim reliefs?
Ratio Decidendi: 1. The test for staying a suit under Section 10 of the CPC is not whether both the suits are based on same cause of action or whether the subject matter of both the suits is same. The question to be seen is what reliefs the plaintiff seeks and what questions or issues are to be adjudicated for deciding the plaintiffs entitlement to the claimed reliefs. 2. If the matter in issue in one suit is directly and substantially in issue in the other, the trial of the subsequent suit can be stayed under Section 10 of the CPC, even if the causes of action and the subject-matters of the two suits are different. 3. The prayer for interim reliefs in a suit which is stayed under Section 10 of the CPC cannot be considered and decided by the court, as it would amount to reagitating the same issues before a different forum.
Final Decision: The application under Section 10 of the CPC was allowed in part. The prayer for stay of the suit was allowed. The prayer for dismissal of the interlocutory application was, however, rejected. It was ordered that during pendency of the Gurgaon suit, the suit filed by the plaintiffs in this Court together with the interlocutory application filed by them in it, shall remain stayed.
ORDER :- This is an application under Section 10 of the Code of Civil Procedure, 1908 (in short "the CPC"); it has been filed by the defendants in C.S. No. 138 of 2003. It is for stay of the suit and dismissal of the interlocutory application (G.A. No. 1675 of 2003) filed by the plaintiffs in the suit.
2. Plaintiff 1 is the proprietor of the registered trade mark "Glucon D". Under the trade mark plaintiff 2 is manufacturing and marketing an instant energy drink. Defendant 1 is manufacturing and selling an instant energy drink under the trade mark "Glucose D". Alleging that acts of defendant 1 amounted to infringement of registered trade mark and passing off, the plaintiffs filed Civil Suit No. 2 of 2003 in the Court of the Additional District Judge at Gurgaon (Haryana). Such suit filed on February 19th, 2003 is pending. The present suit was filed on May 8th, 2003. Alleging that the matter in issue in the present suit is also directly and substantially in issue in the previously instituted suit, the defendants have filed this application under Section 10 of the CPC.
3. Mr. Sudipto Sarkar appears for the defendants. He submits that the Gurgaon suit was filed by the plaintiffs on February 19th, 2003. The packet complained of in the Gurgaon suit was not in use when the suit was filed, because in January, 2003 the defendants had introduced a new packet. Reliefs prayed for in the Gurgaon suit cover all packets used by defendant 1 for selling its energy drink under the trade mark "Glucose D". So the packet complained of in the present suit cannot be excluded from the effect of the orders passed and the final decision to be taken in the pending Gurgaon suit. Defendant 1 in its written statement filed in the Gurgaon suit, before filing of the present suit by the plaintiffs, disclosed the packet complained of in the present suit. From the statements in the pleadings of the two suits and the prayers made in them one can scarcely find any material to distinguish them. Hence it is a fit case where the present suit, involving substantially the same issue as in the prior Gurgaon suit, should be stayed. For staying the subsequent suit matters in issue in it need not be identical with the prior suit; it is sufficient if the matters in issue in the two suits are substantially same.
4. Ms. Anuradha Salhotra appears for the plaintiffs. In reply she submits that the causes of action and the subject-matters of the two suits are different. The packets complained of in them are different. As held in Vallabh Das v. Dr. Madanlal, AIR 1970 SC 987 unless reliefs in two suits are claimed on same cause of action, their subject-matter will not be same; and mere identity of some of the issues in two suits does not bring about an identity of their subject-matter. In Adhish Chandra Sinha v. Hindusthan Gas of Industries Ltd., AIR 1985 SC 154 it was held that for attracting Section 10 the subject matter of both the suits must be identical, and mere existence of a common issue in both the suits would not make their subject-matter identical. It was held in M/s. Bengal Waterproof Ltd. v. M/s. Bombay, Waterproof Manufacturing Co., AIR 1997 SC 1398 that infringement of a registered trade mark and passing off from time to time would give a recurring cause of action to the holder of the trade mark to seek appropriate relief from the Court by filing more than one suit. Hence on the facts of the present case provisions of Section 10 of the CPC would have no manner of application, and the plaintiffs are entitled to proceed with the present suit.
5. I think for deciding the question whether in terms of Section 10 of the CPC the trial of the present suit should be stayed till the trial and determination of the previous suit filed by the plaintiffs in the Court of the Additional District Judge at Gurgaon (Haryana), it will be useful to reproduce herein the prayers of the two suits filed by the plaintiffs.
6. In the Gurgaon suit the plaintiffs prayer for the following re
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