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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Dayal Fertilizers Pvt. Ltd. & Anr. – Appellants
Versus
Dayal Agro Industries & Anr. – Respondents
CS(COMM) 101 of 2017 & I.A. 1688 of 2017 (O-XXXIX R-1 & 2 of CPC), I.A. 9762 of 2020 (O-XXVI R-5 for amendment of issues)
Decided On : 10-04-2023
Amendment of Pleadings - Trademark Infringement - Code of Civil Procedure, 1908 (CPC) - Order VI Rule 17 - Section 124 of the Trade Marks Act, 1999 - CS(COMM) 101/2017 - CS(COMM) 700/2017 - [Order VI Rule 17 of CPC, Section 124 of the Trade Marks Act, 1999] - The court allowed the amendment application for the inclusion of averments regarding infringement of registered trademarks, citing the need to determine the real controversy between the parties and to avoid multiplicity of proceedings. The amendment was based on the same cause of action as passing off and did not change the nature and character of the suit. The court emphasized the need to balance the interests of the parties and compensated the delay caused by allowing the amendment with costs.
Fact of the Case:
The plaintiffs filed an application for amendment of the plaint under Order VI Rule 17 of the CPC to include specific averments regarding infringement by the defendants of the registered trademark of the plaintiffs. The defendants opposed the application, alleging delay and a change in the nature and character of the suit.
Finding of the Court:
The court found that the amendment sought was necessary to determine the real controversy between the parties and to avoid multiplicity of proceedings. It noted that the delay caused by the plaintiffs could be compensated by way of costs.
Issues: The main issue was whether the amendment application for including averments regarding infringement of registered trademarks should be allowed, considering the delay and the alleged change in the nature and character of the suit.
Ratio Decidendi: The court held that the amendment was based on the same cause of action as passing off and would not change the nature and character of the suit. It emphasized the need to balance the interests of the parties and compensated the delay caused by allowing the amendment with costs.
Final Decision: The court allowed the application for amendment of the plaint, subject to payment of costs of Rs.50,000/-, and directed the defendants to file a written statement to the amended plaint within four weeks.
JUDGMENT
Amit Bansal, J.
I.A. 9763/2020 (O-VI R-17 of CPC)
1. The present application has been filed on behalf of the plaintiffs (hereinafter `Dayal Fertilizers') under Order VI Rule 17 of the Code of Civil Procedure, 1908 (CPC) for amendment of the plaint.
2. Notice in this application was issued on 22nd October, 2020 and reply has been filed on behalf of the defendants (hereinafter `Gopika Industries'). Rejoinder to the reply has also been filed on behalf of Dayal Fertilizers.
3. Counsel for Dayal Fertilizers has made the following submissions:
I. The present suit was filed on 8th February, 2017 as a suit for `passing off' alone, on the premise that a suit for trademark infringement by one registered proprietor was not maintainable against another registered proprietor. Later, this position of law was clarified by this Court in Dabur India Ltd. v. Alka Ayurvedic Pvt. Ltd., 2017 SCC OnLine Del 7268, and it was held that a plaintiff, who contends that the registration in favour of the defendant is invalid, has the right to sue for infringement of its mark by the said defendant.
II. Repeated assertions have been made on behalf of Dayal Fertilizers with regard to the invalidity of the registered trademarks of Gopika Industries in the present suit as well as in the written statement filed on behalf of Dayal Fertilizers in CS(COMM) 700/2017.
III. Dayal Fertilizers have also filed an application (I.A. 9821/2020 in CS(COMM)700/2017) under Section 124 of the Trade Marks Act, 1999 (hereinafter `Act') seeking leave to file rectification petition against the registered trademark `DYAL' of Gopika Industries, and an application (I.A. 9762/2022) for framing of additional issues including issue with regard to invalidity of registered trademark `DYAL' of Gopika Industries in the present suit.
IV. Even though common issues have been framed in the present suit and in CS(COMM) 700/2017, affidavit of evidence filed by Gopika Industries is yet to be taken on record, as the same has been filed belatedly.
V. Since the documentary evidence filed by Gopika Industries is yet to be taken on record in both the suits, it cannot be said that the trial has commenced. Reliance in this regard is placed on the judgment of the Supreme Court in Baldev Singh v. Manohar Singh, (2006) 6 SCC 498.
VI. Both sides have moved applications for amendment of issues. Therefore, no finality can be attached to the issues framed in the present suit.
VII. Gopika Industries has also filed applications under Order VI Rule 17 of the CPC in the present suit as well as in CS(COMM)700/2017 that were allowed by this Court.
VIII. The bar of Order II Rule 2 of the CPC applies only when a plaintiff fails to amend the pleadings to include a portion of his claim in the suit filed earlier and institutes another suit for the said purpose. Reliance in this regard is placed on the judgment of the Supreme Court in Bengal Waterproof Limited v. Bombay Waterproof Manufacturing Company and Another, (1997) 1 SCC 99, and Life Insurance Corporation of India v. Sanjeev Builders Private Limited and Anr., 2022 SCC OnLine SC 1128.
IX. Since infringement and passing off are based on the same cause of action, the amendment sought will not bring about a change in the nature and character of the suit and the Court should adopt a liberal approach while considering an amendment application. Reliance in this regard is placed on the judgment of this Court in Vatika Resorts Pvt. Ltd. v. Vatika Grand, 2009(109) DRJ 607.
X. Accordingly, the present application has been filed on behalf of Dayal Fertilizers seeking to amend the plaint, so as to include specific averments regarding infringement by Gopika Industries of the registered trademark of Dayal Fertilizers.
4. Counsel for Gopika Industries has made the following submissions:
I. The present application has been filed in a highly belated manner, i.e., three years after filing of the present suit. The issues in the suit have been framed on 26th February, 20
Amendments under Order VI Rule 17 of CPC are permissible if necessary for proper adjudication, do not change the fundamental nature of the case, and do not prejudice the other party.
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.
Provisions of Section 10 of the CPC are mandatory, preventing parallel litigation over identical issues to avoid conflicting verdicts.
Each act of trademark infringement constitutes a fresh cause of action, allowing the aggrieved party to file a new suit for ongoing violations.
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.
Order 6 Rule 17 CPC, which reads as amendment of pleadings.
The main legal point established in the judgment is that a fresh cause of action does not justify filing a new suit when the matter is part-heard before another court. The judgment also highlighted t....
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