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2019 Supreme(Del) 2477
IN THE HIGH COURT OF DELHI AT NEW DELHI
PRATEEK JALAN, J.
Steelcase Inc - Plaintiff
Versus
Mr. K.J. Bhuta and Anr. - Defendants
CS(Comm) 1180 of 2018
Decided On : 18-11-2019
For the Plaintiff :Mr. B. B. Gupta, Sr. Advocate with Mr. Sumit Wadhwa, Mr. Zeeshan Khan, Mr. Pranav Gambhir, Ms. Gitanjali Sharma, Advocates
For the Defendants :Alankar Kirpekar, Advocate with Mr. Jaspreet Singh Kapur, Ms. Malavika A. S. Advocates Mr. Nitin Sharma, Advocate with Ms. Snehima Jauhari, Mr. Shobhit Srivastava, Mr. Sohrab S. Mann, Advocates
The main legal point established in the judgment is that amendments to pleadings should be allowed unless they cause prejudice that cannot be compensated in costs, as per the principles under Order VI Rule 17 of the CPC.
Headnote:
Amendment - Trademark - Code of Civil Procedure, 1908 - Order VI Rule 17 - [CPC 1908, Order VI Rule 17] - The court allowed the plaintiff's application to amend the plaint to incorporate additional documents and averments regarding the reputation and goodwill of the trademark. The proposed amendments were found necessary for proper adjudication and did not change the nature of the case or cause prejudice to the defendant. The plaintiff was directed to pay costs of Rs.50,000 to the defendant as a condition for leave to amend the plaint.
Fact of the Case:
The plaintiff sought to amend the plaint to elaborate on its contentions regarding the trademark 'STEELCASE', including its usage in India and reputation. The defendant opposed the amendment, arguing that it would prejudice their defense under the Trade Marks Act, 1999.
Finding of the Court:
The court allowed the plaintiff's application to amend the plaint, finding that the proposed amendments were necessary for proper adjudication and did not cause prejudice to the defendant. The plaintiff was directed to pay costs of Rs.50,000 to the defendant as a condition for leave to amend the plaint.
Issues: The main issue was whether the proposed amendments to the plaint, regarding the usage and reputation of the trademark 'STEELCASE', should be allowed.
Ratio Decidendi: The court held that the proposed amendments were necessary for proper adjudication and did not cause prejudice to the defendant. It relied on principles related to the amendment of pleadings under Order VI Rule 17 of the CPC and emphasized that amendments should be allowed unless they cause prejudice that cannot be compensated in costs.
Final Decision: The court allowed the plaintiff's application to amend the plaint, subject to the plaintiff paying costs of Rs.50,000 to the defendant. The plaintiff was permitted to file an amended plaint in accordance with the directions provided.
JUDGMENT :
I.A. 7450/2019 (Application by the plaintiff under Order VI Rule 17 CPC) in CS(COMM) 1180/2018
1. By this application under Order VI Rule 17 of the Code of Civil Procedure, 1908 [hereinafter referred to as “the CPC”], the plaintiff seeks leave to amend the plaint.
Facts
2. The suit concerns the trademark “STEELCASE”, of which the plaintiff claims to be the registered owner. In the suit, the plaintiff inter alia claims an injunction on the use of the said trademark by defendant No.1, injunction on passing off, injunction on infringement of plaintiff’s copyright, account of profits, and damages.
3. On the plaintiff's application for injunction [I.A. 14250/2018], the Court passed the following ad interim order on 15.10.2018: -
“13. In view of the submissions of parties, the following interim order is passed during the pendency of the injunction application, till the next date of hearing:
(1) Defendant no. 1 shall immediately stop use of the domain name and email addresses having the mark/name STEELCASE or any other identical/deceptively similar mark;
(2) Defendant no. 1 shall not use the mark STEELCASE or any other identical/similar mark on any products. Use on stationery is permitted, till the next date of hearing.
(3) Defendant no.1 to file its complete sales turnover as per the audited balance sheets, both of the sole proprietary concern M/s. Steel Case as also of the company Steel Case India Pvt ltd.
Defendant no. 1 is allowed to create new e-mail addresses and to inform its customers of the same. Any emails received in the email addresses which are currently in use are allowed to be redirected to the new email addresses.”
4. During the course of hearing on the injunction application, the plaintiff sought permission to place on record certain documents from 1969 and 1974 to show that its trademark registrations were applied for in India during that period. While disposing of the said application by order dated 14.05.2019, the Court inter alia recorded as follows:-
“1. Learned Senior counsel for the Plaintiff, had submitted on the last date that the Plaintiff wishes to place on record certain documents from 1969 and 1974 to show that its trademark registrations were applied for in India, during that period. Though the said applications have since been abandoned, it is the Plaintiff's submission that the said documents would show that the Plaintiff has, in fact, used the mark prior to the Defendants in India and has placed material before the Registrar to support its position on use of the mark.
2. Since these are additional documents, which the Plaintiff wishes to place on record, the same may be done and if the Plaintiff wishes to seek any amendments, the same may be sought in accordance with law.
3. Since the Plaintiff wishes to file further documentary evidence and claims prior user dating back to 1969, the suit would have to go to trial, inasmuch as it is the case of the Defendants that they have been using the name/mark "M/s Steelcase" since 1981.
4. Considering that both parties would have to establish at trial, their respective dates of adoption and user and the extent of use in relation to the products for which the mark/name has been used, the following interim arrangement shall operate during the pendency of the suit:
xxxx xxxx xxxx
CS (COMM) 1180/2018 & I.A………/2019 (to be numbered)
8. The Plaintiff has moved an application under Order VI Rule 17 CPC along with the fresh documents vide diary numbers 450515 (for application) and 450536 (for documents). Let the same be taken on record. Let the I.A. be numbered.
9. Issue notice. Ld. counsels for the Defendants wish to file reply to the amendment application. Let the same be done within four weeks. Rejoinder thereto, if any, be filed within two weeks.
10. List on 23rd August, 2019 for hearing on the amendment application.
11. The matter shall not be treated as part heard.”
5. Pursuant to this order, the amendment application filed by the plaintiff was taken up for disposal.
Propos
