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IN THE HIGH COURT OF DELHI AT NEW DELHI
AMIT BANSAL, J.
V-Guard Industries Ltd - Plaintiff
Versus
Rakesh Malhotra & Ors. - Defendants
CS(COMM) No. 1018 of 2016, CS(COMM) No. 814 of 2018
Decided On : 09-01-2023
Trademark - Stay of Suit - Section 10 of the CPC - Manohar Lal Chopra v. Rai Bahadur Rao Raja Set Hiralal, 1962 Supp (1) SCR 450, H.S. SAHNI v. Mukul Singhal, (2022) 1 HCC (Del) 155, Romesh Kumar Bhatia v. Zorrik Enterprises, 1980 SCC OnLine Del 202 - Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 - The court stayed the present suits under Section 10 of the CPC, citing previous findings and judgments on the similarity of trademarks and trade dress, and the mandatory nature of Section 10 to prevent contradictory verdicts by courts of concurrent jurisdiction.
Fact of the Case:
The plaintiff filed suits seeking permanent injunctions against the defendants for passing off goods and trade dress. The defendants sought stay of the suits under Section 10 of the CPC, citing previous findings and judgments on the similarity of trademarks and trade dress.
Finding of the Court:
The court found that the subject matter of the present suits was directly and substantially identical to the subject matter of the suit before the District Court, Ernakulam, and was now the subject matter of an appeal pending before the Kerala High Court. The court stayed the present suits with liberty to the parties to get the same revived after the decision in the pending appeal.
Issues: The issues revolved around the similarity of trademarks and trade dress, the applicability of Section 10 of the CPC, and the jurisdiction of the courts.
Ratio Decidendi: The court applied the legal principle that Section 10 of the CPC is mandatory to prevent contradictory verdicts by courts of concurrent jurisdiction and that the subject matter of the present suits was directly and substantially identical to the subject matter of the suit before the District Court, Ernakulam.
Final Decision: The court stayed the present suits with liberty to the parties to get the same revived after the decision in the pending appeal.
JUDGMENT :
Amit Bansal, J.
I.A. 8759/2019 (u/S 10 of the CPC for stay of suit) in CS(COMM) 1018/2016
I.A. 8760/2019 (u/S 10 of the CPC for stay of suit) in CS(COMM) 814/2018
1. By way of the present judgment, I shall dispose of I.A 8759/2019 and I.A. 8760/2019 filed on behalf of the defendants under Section 10 of the Code of Civil Procedure, 1908 (CPC) seeking stay of the present suits, till the disposal of appeal, bearing no. RFA 117/2017 filed by the plaintiff herein before the Kerala High Court against the judgment and decree dated 22nd November, 2016 passed by the Additional District Judge, Ernakulam in OS no. 12/2013.
2. At the hearing on 4th July, 2019 the senior counsel for the plaintiff stated that no reply is required to be filed to the aforesaid applications.
3. CS(COMM) 1018/2016 has been filed on behalf of the plaintiff seeking permanent injunction restraining the defendants from passing off the goods of the plaintiff by using the trademark “LIVGUARD” claiming that the same is deceptively similar to the plaintiff’s trademark “V-GUARD” along with other ancillary reliefs.
4. CS(COMM) 814/2018 has been filed on behalf of the plaintiff seeking permanent injunction restraining the defendants from passing off the plaintiffs’ trade dress by the defendants along with other ancillary reliefs.
5. At the outset it may be relevant to refer to the history of the litigation between the parties with regard to their competing trademarks.
II. An ex parte injunction was granted in the aforesaid suit on 11th April, 2013 restraining Shri Rakesh Malhotra from using the trademark “LIVGUARD”. The ex parte injunction order was vacated and the interim application filed on behalf of the plaintiff was dismissed by the District Court, Ernakulam vide order dated 1st June, 2013 holding that there is no similarity between the plaintiff’s trademark “V-GUARD” and the defendant’s trademark “LIVGUARD”.
III. An appeal was filed by the plaintiff against the aforesaid order dated 1st June, 2013 before the Kerala High Court, which was dismissed by the Kerala High Court vide judgment dated 5th July, 2013, by holding that the defendant’s trademark “LIVGUARD” is not similar to the plaintiff’s trademark “V-GUARD”.
IV. The SLP, bearing no. 36230/2013, filed on behalf of the plaintiff against the aforesaid judgment dated 5th July, 2013, was dismissed as withdrawn on 22nd November, 2013.
V. An application was filed on behalf of the plaintiff before the District Court, Ernakulam seeking withdrawal of OS no. 12/2013 insofar as it related to the relief of passing off with liberty to file the same in a Court of competent jurisdiction, which was allowed on 24th November, 2015.
VI. Pursuant to the aforesaid liberty, CS(COMM) 1018/2016 was filed on behalf of the plaintiff before this Court.
VII. After the trial, a final judgment and decree was passed by the District Court, Ernakulam, dismissing the suit filed by the plaintiff on 22nd November, 2016.
VIII. Against the aforesaid dismissal, the plaintiff filed an appeal, bearing no. RFA 117/2017 before the Kerala High Court, which appeal is stated to be pending.
IX. On 16th August, 2017, issues were framed in CS(COMM) 1018/2016 and it was recorded that no oral evidence is required to be led and that the suit would be decided on the basis of the pleadings of the parties.
X. Subsequently, an application, being I.A.10323/2017 in CS(COMM) 1018/2016 was filed on behalf of the plaintiff seeking leave to lead evidence. The said application was disposed of as not pressed on 1st February, 2018 and liberty was granted to the plaintiff to file a suit on any cause of action that was not
Provisions of Section 10 of the CPC are mandatory, preventing parallel litigation over identical issues to avoid conflicting verdicts.
Section 124 of the Trade Marks Act mandates automatic stay of infringement proceedings when rectification is pending, and does not apply to passing-off claims.
Each act of trademark infringement constitutes a fresh cause of action, allowing the aggrieved party to file a new suit for ongoing violations.
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.
The main legal point established in the judgment is that an amendment application for including averments regarding infringement of registered trademarks may be allowed if it is based on the same cau....
Point of law: If matter in later suit is found to be “directly and substantially in issue” in previously instituted suit, later suit is liable to be stayed under Section - 10 of C.P.C.
A plaintiff cannot file multiple suits for the same cause of action concurrently in different jurisdictions; it constitutes forum shopping and is impermissible under Order II Rule 2 CPC.
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