Globela Pharma Private Limited vs Jigar Thakar Sole Proprietor Of ...

                                                                                  NEUTRAL CITATION




    C/SCA/6595/2023                            CAV JUDGMENT DATED: 09/11/2023

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               IN THE HIGH COURT OF GUJARAT AT AHMEDABAD

           R/SPECIAL CIVIL APPLICATION NO.        6595 of 2023


FOR APPROVAL AND SIGNATURE:


HONOURABLE MR. JUSTICE N.V.ANJARIA
and
HONOURABLE MS. JUSTICE NISHA M. THAKORE

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1 Whether Reporters of Local Papers may be allowed to see the judgment ?

2 To be referred to the Reporter or not ?

3 Whether their Lordships wish to see the fair copy of the judgment ?

4 Whether this case involves a substantial question of law as to the interpretation of the Constitution of India or any order made thereunder ?

========================================================== GLOBELA PHARMA PRIVATE LIMITED Versus JIGAR THAKAR SOLE PROPRIETOR OF M/S GLOBELA INC. ========================================================== Appearance:

MR AMAR N BHATT(160) for the Petitioner(s) No. 1 MR D K TRIVEDI(5283) for the Respondent(s) No. 1 ========================================================== CORAM:HONOURABLE MR. JUSTICE N.V.ANJARIA and HONOURABLE MS. JUSTICE NISHA M. THAKORE Date : 09/11/2023 CAV JUDGMENT (PER : HONOURABLE MR. JUSTICE N.V.ANJARIA) Page 1 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined Heard learned advocate Mr. Amar Bhatt for the petitioner and learned advocate Mr. D.K. Trivedi for the respondent at length.

2. The petitioner-original plaintiff, by filing the present Special Civil Application, has called in question order dated 22.02.2023 passed below application Exhibit 169 in Commercial Trade Mark Suit No. 25 of 2021.

2.1 The application Exhibit 169 was an application under Order VI Rule 17, Code of Civil Procedure, 1908, filed by the respondent-defendant seeking amendment in the written statement, which was allowed by the Commercial Court below.

3. The attendant facts noticed from the record are that the petitioner-plaintiff instituted Suit No. 70 of 2009 before the Court of District Judge, Surat, for the relief of permanent injunction restraining the acts of infringement of trademark and trade name "GLOBELA". The case of the plaintiff in the plaint was that the plaintiff was a prior user of trademark "GLOBELA" for its pharmaceutical and medical preparations, which trademark was recognised to be well known to have established reputation and goodwill for the plaintiff.

NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined 3.1 It was also the case and averments of the plaintiff found in paragraph 13 of the plaint that the defendant was in employment of the plaintiff and the documents signed and verified by the defendant in that respect were produced. It was the averment that the defendant is well aware of the use of the mark/trade name GLOBELA as well as the goodwill earned by the plaintiff. The defendant's dishonest and illegal action of adopting the mark GLOBELA amounted to piracy, it was averred.

3.2 It was averred by the petitioner-plaintiff that the respondent-defendant was employee of the petitioner during period from August 2006 to September 2006. Figures on record, offer letter dated 23.07.2006 issued by the petitioner to the respondent, inviting him as business manager with effect from 17.08.2006. The bank statement showing the payment of salary by the petitioner to the respondent is also placed on record.

3.3 It is the say of the plaintiff that despite in knowledge about the trademark and trade name of the petitioner, the respondent started to use the trademark for his own products after he left the services of the petitioner. In the suit, the respondent-defendant filed his written statement (Exhibit 12) and also filed application under Order Page 3 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined VII Rule 11, CPC (Exhibit 16). In paragraphs 17 and 18 of the written statement the respondent- defendant contended that the trademark and the trade name 'GLOBELA' was adopted by the respondent since 2006 and that he had started manufacturing, marketing and selling the pharmaceutical preparations under the said trade name since 2006.

3.4 On 12.01.2017, the trial court rejected application under Order VII Rule 11 of the CPC, of the respondent. Interim injunction below Exhibit 5 came to be granted by the trial court in favour of the plaintiff-petitioner on 18.04.2017.

3.5 It was stated that though the order below Exhibit 5 and Exhibit 16 were not challenged by the respondent-defendant, the court below dismissed the suit of the petitioner on 30.06.2018, on the ground that the evidence was not lead. The petitioner challenged the said judgment and order dated 30.06.2018 by filing First Appeal No. 4158 of 2018 before this Court, which came to be disposed of by order dated 19.02.2020 whereby the suit was remanded to the trial court for fresh consideration. In the year 2021, the suit was transferred to the Commercial Court and came to be numbered as Commercial Trademark Suit No. 25 of 2021.

NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined 3.6 The petitioner-plaintiff thereafter filed application for amendment (Exhibit 150). The respondent-defendant also filed application (Exhibit 169) seeking amendment in the written statement. The petitioner filed reply (Exhibit

171) to the amendment application of the defendant to object the proposed amendments on the ground that the proposed amendment introduced new case and inconsistent defence.

3.7 The court below passed common order dated 22.02.2023 below Exhibit 150 and Exhibit 169 allowing both the applications. The said order insofar as it relates to Exhibit 169 application, is under challenge in this petition.

3.8 At the cost of repetition, the suit was for permanent injunction to retrain the acts of infringement of trademark and passing off by the plaintiff whose case was that he was a prior user of trademark 'GLOBELA' since 2006. He also held, admittedly the certificate of registration of the trademark dated 08.02.2006. The said certification of the trademark is produced on record. In the written statement, the defendant also claimed that he was using the same trademark since 2006. Now in the pleading Exhibit 169, the amendment which was sought for by the defendant may be highlighted in its material part.

NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined 3.8.1 Following amendments are proposed in place of paragraph 16, as originally pleaded in the plaint, "That the defendant is a proprietary concern of Mr. Jigar Thakar. Mr. Jigar Thakar had first of all got the logo and design of "Globela Inc" created with the help of one graphic designer Mr. Aashir Dalal of M/s. Pearl Advertising. The same artist has after creating said label/logo design, raised an invoice addressing to the defendant. A copy of Invoice dated 30/11/2005 of the said artist along with said final logo/design are collectively annexed with the separate list of documents accompanying the written statement. The logo was thus created in November 2005 by the artist on the behest of the defendant. Thereafter, the defendant had booked office No.TF-3 in Shivalaya Complex-3, Vasna Road, Vadodara in the name of his firm M/s. Globela Inc. for which he had paid an amount of Rs.8,000/- as booking charges to the builder. A copy of the receipt voucher issued by the builder M/s. Shanti Developers on 26/12/2005 towards the same is annexed with the separate list of documents accompanying the written statement. Subsequently, the defendant had purchased the said office in the name of his proprietary firm M/s. Globela Inc. for which a sale deed dtd. 07/10/2006 was registered with the Sub-Registrar Officer at Vadodara. A copy of Sale Deed along with Index are collectively annexed with the separate list of documents accompanying the written statement. The defendant was doing his business of marketing and selling pharmaceutical and medical preparations from the said office since the year 2006."

NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined 3.8.2 Similarly, in paragraph 17, the last line reading as "was honestly and bona-fidely adopted by the defendant in the year 2006", deleted and the ground "was honestly and bona-fidely adopted by the defendant since 30/11/2005" was substituted. In paragraphs 18, 21, 23, 24, 42, 47 and at every place, where it was stated that the defendant was using the trademark since 2006, the date 30.11.2005 is sought to be substituted to put up a case that he was using the trademark since November 2005.

4. Learned advocate for the petitioner, challenging the legality of the order granting amendment in the written statement, firstly submitted that the amendment has changed the nature of the defence. It was submitted that the defendant in his original written statement, never claimed that he was the prior user of the mark nor the defendant disputed that the petitioner was a registered proprietor of GLOBELA.

4.1 It was the case of the defendant in the original written statement, submitted learned advocate for the petitioner, that he had been using trademark GLOBELA from the year 2006. Paragraphs no.16 to 18, 21, 23, 24, 42, 47 and 49 of the written statement were referred to by learned advocate for the petitioner to highlight what he submitted.

NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined 4.1.1 It was submitted that under the pretext of typographical error, a substantial change by way of amendment is sought to be introduced in the defence, as it was sought to be inserted by the defendant that he had been using the trademark since the year 2005, in contrast to earlier pleading in defence that the user was since 2006.

4.1.2 It was next submitted on behalf of the petitioner that when the petitioner was prior user of the trademark and the said aspect was not disputed in the original written statement, the respondent-defendant cannot be permitted to resile from his admission in that regard. It was submitted that in paragraph 10 of the plaint, the necessary averments have been made by the plaintiff to which, in the original written statement, the defendant responded as per the paragraph 34 wherein the factum of priority in adoption and continuous use of the trademark was not denied.

4.1.3 It was submitted by the petitioner further that the defendant has to specifically deny and traverse the averment without which there is no denial of the contention. It was submitted that the amendment surreptitiously sought to introduce the case of prior user by the defendant which was never the original case put up. It was submitted that by seeking amendment, the defendant has stated Page 8 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined that he was using the trademark since November 2005, which was entirely a new case, which could not be permitted to be introduced by way of amendment.

4.1.4 Submitting further, learned advocate for the petitioner canvassed that the amendment granted by the court seeks to introduce a new case, which causes serious prejudice to the plaintiff. It was submitted that the tenor of the original written statement of the defendant was that the use and adoption of the trademark from 2006 and that now it is sought to be contended that he was using the trademark since 2005. It was submitted that the rights under the Trademark Act are statutory rights and in working of such rights, the aspect of prior user becomes important.

4.1.5 It was also highlighted by learned advocate for the petitioner that the respondent was the employee of the petitioner and in the reply to the notice, the respondent stated that the payment made to him was not salary, but was in the nature of consultancy charges, which in any view showed that the respondent-defendant was working with the petitioner and that was aware about the reputed use of the trademark GLOBELA by the plaintiff.

4.2 On the other hand, learned advocate for the Page 9 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined respondent submitted that even the plaintiff had not mentioned the exact date of user in his plaint, but vague statement was made that the GLOBELA was used since 2006. It was stated that by seeking amendment in the written statement, the defendant wanted to make the defence precise, which was omitted in the original written statement inadvertently.

4.2.1 Learned advocate for the respondent referred to the different paragraphs from the plaint to submit that the entire case about the prior user was vaguely pleaded by the plaintiff and that the amendment in the written statement as prayed for and granted would crystallise the issues.

4.2.2 It was submitted also that in the suit, earlier, interim injunction was granted, however, the suit came to be finally dismissed and this court remanded the suit as no evidence was led. Therefore, it was submitted that the entire controversy became large before the court and in that context also the amendment prayed for in the written statement were rightly allowed. It was submitted that even the plaintiff had filed application Exhibit 150 seeking more than one amendments.

NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined 4.2.3 It was submitted that the original suit was only with the prayer of infringement of trademark under the Trade Mark Act, 1999, however, the plaintiff sought to add the prayer regarding the breach of copyright also under the Copyright Act, 1957. It was sought to be contended that such amendment by the plaintiff ought not to have been granted as it amounted to changing the nature of the suit.

4.2.4 It was submitted that on the other hand, the amendment sought by the defendant in the written statement was to specify the user date by proposing change from the words "since 30.11.2005" to "since the year 2006". It was submitted that the amendment prayed for in the written statement would help the court to decide the controversy as to which party used the mark GLOBELA in prior point of time.

4.2.5 Learned advocate for the respondent relied on the decision of the Supreme Court in P.A. Jayalakshmi V. H.Saradha [(2009) 14 SCC 525], in which the Supreme Court considered the distinction between Order VIII Rule 9 and Order VI Rule 17, CPC, to submit on that basis that additional pleadings could always be permitted. By relying on the decision of the Supreme Court in B.K. Narayana Pillai vs. Parameshwaran Pillai [(2000) 1 SCC 712], Page 11 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined it was submitted that same principles as applicable to the amendment of the plaint are applicable in respect of the amendment to the written statement and that the courts are more generous in allowing amendment in written statement since the question of prejudice is less likely to operate in that event.

4.2.6 It was submitted that the defendant has a right to take alternative plea and the amendment prayed for by the defendant ought to have been seen in that perspective. It was submitted that the amendment of the defendant in the written statement would not be said to be constituting a new cause of action, but was only a different or additional approach to the same facts, therefore, was rightly granted.

4.3 At the outset, it is to be stated that the plaintiff as well as the defendant both filed their amendment application Exhibit 150 and Exhibit 169 respectively for seeking amendment in the plaint and the written statement. Both were granted. The defendant has not challenged the grant of amendment in the plaint, which was the order below Exhibit

150. The contentions however were sought to be raised in this proceedings on the score of granting of amendment in favour of the plaintiff. The Court is not concerned with the same and they have no Page 12 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined relevance to the issues involved in the present case.

5. In order to appreciate the contention that the amendment in written statement allowed by the Commercial Court below has permitted the respondent-defendant to alter his case, and to set at naught the case of the plaintiff, which otherwise is not denied in the original statement, paragraph 10 of the plaint may be noticed, which is reproduced herein, "It is once again reiterated that the GLOBELA used as a trade mark upon and/or in relation to the goods of the plaintiffs since the year 2006. Owing to continuous use of the trademark GLOBELA since more then 3 years. the said mark have acquired a distinct connotation and have come to be exclusively associated with the plaintiffs merchandise in the mind of purchasing public and in the trade. Furthermore in the course of the trade, the plaintiffs are commonly referred to as GLOBELA and the goods of the plaintiffs are referred to as GLOBELA merchandise. By virtue of priority in adoption and continuous use thereof under the said trade marks, the plaintiffs alone have the exclusive right to use the trademarks GLOBELA. It is further submitted that the reputation and goodwill of the trade mark GLOBELA extends far and wide and beyond the scope of the actual goods manufactured by the Plaintiffs and the very mention of the word GLOBELA with or without any additions / suffix would normally be co - related with the goods of the plaintiffs and none else."

NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined 5.1 The plaintiff pleaded as could be seen above, firstly that GLOBELA trademark was used since 2006. It was also the case that the plaintiff alone had the exclusive right to use the trademark GLOBELA. The specific case of the plaintiff was that he was the user of the trademark since the year 2006 and that his was the exclusive user of the trademark GLOBELA since prior point of time with reputation and goodwill.

5.1.1 These averments and the case pleaded was responded by the defendant in paragraph 34 of the written statement thus, "With reference to Para 10 of Suit and injunction application the defendant categorically denies the averments and contentions. The plaintiffs are call upon to prove their statement by way of strict documentary proof recognized by law. The defendant deny that owing to continuous use of the trademark GLOBELA since more then 3 years, the said mark have acquired a distinct connotation and have come to be exclusively associated with the plaintiffs merchandise in the mind of purchasing public and in the trade. It is also deny by the plaintiff that, the plaintiffs are commonly referred to as GLOBELA and the goods of the plaintiffs are referred to as GLOBELA merchandise. The defendant deny that by virtue of priority in adoption and continuous use thereof. under the said trade marks, the plaintiffs alone have the exclusive right to use the trademarks GLOBELA. The defendant deny that that the reputation and goodwill of the trade mark Page 14 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined GLOBELA extends far and wide and beyond the scope of the actual goods manufactured by the Plaintiffs and the very mention of the word GLOBELA with or without any additions/suffix would normally be co-related with the goods of the plaintiffs and none else. The defendant states and submits that it TAU appears that the plaintiff is self-praised and opened its mouth too wide as if the plaintiff is the absolute owner and/or the original or creator of the word GLOBELA, and acquired goodwill and market reputation qua all the goods available in the market."

5.1.2 The defendant denied that owing to the continuous use of the trademark GLOBELA since more than three years the trademark, had acquired distinct connotation. It was further denied the case of the plaintiff in this way, "The defendant deny that by virtue of priority in adoption and continuous use thereof under the said trade marks, the plaintiffs alone have the exclusive right to use the trademarks GLOBELA. The case of the prior user of the plaintiff since 2006 was not refuted by the defendant specifically. It was a general denial throughout in paragraph 34.

5.2 It is the settled principle of law that averment has to be specifically denied and traversed. Order VIII Rule 5, CPC, says about specific denial. Sub-rule (1) thereof says that every allegation of fact in the plaint if not denied specifically or by necessary implication or Page 15 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined stated to be not admitted in the pleading of the defendant, shall be taken to be admitted.

5.2.1 It is also the trite principle that each averment of fact should be separately denied. The denial should be in separate part, even if the allegations or averments is compounded, but consist of distinct facts.

5.2.2 In Lohia Properties (P) Ltd., Tinsukia Dibrugarh, Assam vs. Atmaram Kumar [(1993) 4 SCC 6], it was an issue of non-denial of allegation of fact in the written statement. Service of notice terminating the tenancy on the defendant-tenant was specifically averred in the plaint by the plaintiff-landlord. In the written statement, the defendant only stated that the notice referred to in the plaint was not according to law. The Supreme Court held that in absence of specific or implied denial of the allegation, the allegation of service of notice must be taken to have been admitted. It was observed that the Rule 5 of Order VIII provides that all the allegations of fact in the plaint, if not denied in the written statement, shall be taken to be admitted by the defendant.

5.2.3 The statement in the plaint in the present case that the plaintiff had been using the trademark since 2006 has not been denied Page 16 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined specifically by the defendant nor it is denied by necessary implication. It is also not specifically stated and it is not specifically admitted. It tantamount to non-traverse of the averments in the plaint. Non-traverse of the averments amounts to admission. Denial of a sentence is not the denial of the contention. It remains a vague denial. The averment that the petitioner is the prior user of the trademark GLOBELA since 2006 was required to be specifically denied by the defendant. As it is not done, that it amounted to, in eye of law, an admission.

5.2.4 The amendment sought for by the defendant that he was using the trademark since 2005 as per his earlier case, has to be viewed also in the context that the case of the plaintiff about user since 2006 did not receive a specific denial in the original written statement. The date of user is an important aspect in the trademark suit. The case of the plaintiff that he was using the trademark since 2006, when not initially controverted, but by way of amendment, it was sought to be superseded by the defendant that his user was 2005.

5.2.5 By pleading such case for the first time, the defendant in fact took away the right in the nature of uncontroverted pleading argued in favour of the plaintiff. In that sense, the amendment by Page 17 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined the defendant in the written statement was also introduction of a new case on his part, causing prejudice to the plaintiff.

5.2.6 allegation of fact must either be denied specifically or the denial shall come with necessary implication. If plea of denial is absent in that manner, the allegations shall be taken to be admitted. The non-traverse would constitute an implied admission.

5.3 The respondent wanted to predate the date of user to 30.11.2005 by seeking amendment, which was impermissible. Furthermore, the defendant sought the amendment of the above nature in the written statement not on the basis of any solid plea, but on the premise that inadvertently and by clerical mistake and typographical mistake, the date of user was not precisely stated. This ground itself is inconceivable in law.

5.4 The principles relating to grant or to refuse the amendment are well settled. In B.K. Narayana Pillai (supra), the Supreme Court observed that the purpose and object of Order VI Rule 17, CPC, is to allow the either party to alter or amend his pleadings in such a manner and on such terms as may be just. It was stated that the principles are equally applicable to the amendments in the written Page 18 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined statements, "The defendant has a right to take alternative plea in defence which, however, is subject to an exception that by the proposed amendment other side should not be subjected to injustice and that any admission made in favour of the plaintiff is not withdrawn. All amendments of the pleadings should be allowed which are necessary for determination of the real controversies in the suit provided the proposed amendment does not alter or substitute a new cause of action on the basis of which the original lis was raised or defence taken.

(para 4) 5.4.1 It was further observed explaining the principles, "Inconsistent and contradictory allegations in negation to the admitted position of facts or mutually destructive allegations of facts should not be avowed to be incorporated by means of amendment to the pleadings. Proposed amendment should not cause such prejudice to the other side which can not be compensated by costs. No amendment should be allowed which amounts to or relates in defeating s legal right accruing to the opposite part on account of lapse of time. The delay in Filing the petation for amendment of the pleadings should be properly compensated by costs and error or mistake which, if not fraudulent, should not be made a ground for rejecting the application for amendment of plaint or written statement."

(Para 4) 5.5 When the defendant seeks to incorporate that he was using the trademark in question since 2005, Page 19 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined substituting his case as originally pleaded that the user was from 2006, such amendment could not be viewed generously nor it could be treated as an alternative, to be permitted by way of amendment. It really altered the whole basis of defence of the defendant other than what was pleaded. Earlier pleading had created a right in favour of the plaintiff.

5.6 The impermissibility of granting amendment in the written statement by the respondent-defendant as sought for has the specific context of provisions of Section 34 of the Trademarks Act, 1999. This provision endows a specific right in favour of a person who is prior user of the trademark.

5.6.1 Section 34 of the Trade Marks Act, reads as under, "34. Saving for vested rights Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior-

(a) to the use of the first-mentioned trade mark in relation to those goods or services be Page 20 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first- mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;

whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only to the registration of the first- mentioned trade mark."

5.6.2 The petitioner-plaintiff had made an averment in the plaint that he was using the trademark GLOBELA since 2006 and the case was responded by the defendant claiming that he was also using the trademark since the same year. However, in the amendment sought for in the written statement, a different case altogether was pleaded in the sense that the assertion was made that the user of the trademark by the defendant was since 2005.

5.6.3 When the petitioner pleaded that it was a prior user and the trademark was used by him from 2006, the legal right was available to the petitioner under Section 34 of the Trademarks Act in absence of denial and in absence of the plea by the defendant that his user of the trademark was before 2006.

5.6.4 The petitioner had right to establish the Page 21 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined factum of prior user taking advantage of the case in defence as originally pleaded by the defendant, which was in form of kind of right flowing from section 34 of the Trademarks Act, which again was not specifically denied in the averments, as stated above. The amendment sought by the defendant prejudicially affected the interest and right of the plaintiff which was settled in the original pleadings.

5.7 In Ganga Bai vs. Vijay Kumar [1974 AIR 1126], it was observed that though the power to allow an amendment is undoubtedly wide, the exercise of far- reaching discretionary powers has to be governed by the judicial considerations. It was stated that wider the discretion, greater ought to be the care and circumspection on the part of the court. The court has to be circumspect indeed to ensure that in the guise of allowing the amendment, literally, the vested right of the parties are not affected or prejudice or that the party seeking amendment does not reap an undue advantage.

5.8 Similarly, in M/s. Modi Spinning and Weaving Mills Co. Ltd. vs. M/s. Ladha Ram and Co.[(1976) 4 SCC 320], pertinent observations were made about the impermissibility to resile from admissions made in the pleading or where there was no denial stating that such situation would invest with the Page 22 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined other party, a valuable right. It was stated that the defendant could not be allowed to completely change the case made in the written statement and substitute an entirely different and new case.

5.8.1 In M/s. Modi Spinning and Weaving Mills Co. Ltd. (supra), it was held that inconsistent plea which would displace the plaintiff completely from the admissions made by the defendant in the written statement cannot be allowed. If such amendments which allowed in the written statement, the plaintiff will irretrievably prejudiced and that he would be denied the opportunity of extracting the admission from the defendants.

5.8.2 In M/s. Modi Spinning and Weaving Mills Co. Ltd. (supra), the suit was filed by the plaintiff for claiming a decree of Rs.1,30,000/- from the defendant. The defendant in their written statement admitted that by virtue of an agreement dated 07.04.1967, the plaintiff worked as their stockist-cum-distributor. Later, the application for amendment was moved to amend the written statement to add new paragraph taking the plea that the plaintiff was mercantile agent-cum-purchaser. In other words, the defendant wanted to go behind the earlier admission that the plaintiff was stockist-cum-distributor. The rejection of such amendment was upheld.

NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined 5.8.3 The Supreme Court observed, "...once the written statement contains an admission in favour of the plaintiff, by amendment such admission of the defendants cannot be allowed to be withdrawn if such withdrawal would amount to totally displacing the case of the plaintiff and which would cause him irretrievable prejudice."

5.9 The decision of the Bombay High Court in Rasiklal Manikchand Dhariwal vs. Kishore Washwani [2005(2) Mh.L.J. 611] was a case containing the fact akin to one on hand. In that case, there was an admission on the part of the plaintiff in the plaint that he was user of the trademark 'Manikchand' in respect of the tobacco product from 1961. The amendment was proposed by defendant no.2 who claimed the user of trademark 'Manikchand' since 1959. The plaintiff sought amendment to alter the case that his user of trademark 'Manikchand' was from 1958 instead of 1961. The Bombay High Court held that the amendment sought for defeated the vested right of the defendant no.2. The High Court rejected the amendment in the plaint in that regard.

5.9.1 The Bombay High Court observed in paragraphs 20 and 21 thus, "The plaintiffs have by making averments in the plaint as made in paragraphs 5, 6 and 22 of the plaint has admitted that the user of Page 24 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined the trade mark "Manikchand" in respect of the tobacco product was only from 1961. Once the said averment is made, it is not open for the plaintiff to go back on the said averment and thereafter now contend that it is not from 1961 but much prior thereto."

5.9.2 The High Court proceeded to held, "...this is significant because the proposed defendant no. 2 in a suit filed in District Court, Mandaleshwar, in State of Madhya Pradesh has specifically made a plea that the user by them is from 1959 i.e. prior in point of time than the user by the plaintiff herein. In light of the averments made by the proposed defendant no. 2, the plaintiffs in the present case are seeking to amend the suit by going further back in time to 1958. I am not inclined to grant such an amendment in favour of the plaintiffs in view of the admission on the part of the plaintiffs that they are using the mark from 1961. The contention of the learned counsel for the plaintiffs, that the plaint never contain an admission of the fact it is only the written statement which can be treated as containing any admission of any of the particular fact, I am not inclined to accept the same."

5.9.3 While in the present case, the statement on oath was in written statement, the Bombay High Court in that case observed, "The statement made in the plaint on oath is the statement on solemn affirmation and it is treated as a statement of fact which is an admission of the particular set of facts the plaintiff in the plaint and it is this case which is required to be proved by the Page 25 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined plaintiff at the trial of the suit and the defendants are required to meet."

5.9.4 Said the Bombay High Court further, "Once I permit substitution of the paragraph which contains admission that the user of the mark was from 1961 then obviously the plaintiff will be entitled to go back to 1958 and defeat the right which is created in favour of the proposed defendant no. 2 to contend that they are prior user of the mark in point of time. This right is a legal right vested under section 34 of the Trade Marks Act, 1999."

5.9.5 And finally stated, "....if I grant permission to add paragraphs as prayed in the schedule to the chamber summons would deprivate the right of the defendant and prejudicially affect the interest of the defendant as well as the proposed defendant and in view thereof, I am of the opinion that the plaintiff cannot be permitted to amend the chamber summons as set out in the schedule thereto in so far as paragraphs 5 and 6 thereof are concerned."

6. For all the aforesaid reasons and discussion, the amendment prayed for by the defendant in the written statement amounted to introducing a clear new case. Secondly, the amendment is of the nature, which has clear tendency of taking away the vested right created in favour of the plaintiff in terms of section 34 of the Trade Marks Act, 1989. Third, it completely alters the very defence of the Page 26 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined defendant as originally advanced to the serious prejudice and statutory rights of the plaintiff. The amendment, fourthly stated, took away the right accrued for the petitioner-plaintiff which had definitely accrued from earlier pleadings and defence raised by the defendant. Finally and fifthly, the change of stand and introduction of new case by proposing the amendment have to be viewed in the context of total picture of rival case inter alia that the defendant was in employment of the plaintiff in same way as shown by the plaintiff in his case.

6.1 The trial court allowed the amendment on the ground that the defendant wanted to give the exact date. The reasoning of the trial court could be said to be too naive to be countenanced in law and in view that the amendment of such kind and nature cannot be granted, which affects the settled right of the plaintiff or thereby the admissions are resiled from by the party.

6.2 A clear error was committed by the Commercial Court below in allowing the application Exhibit 169 permitting the respondent-defendant to amend the written statement.

7. The impugned order below Exhibit 169 dated 22.02.2023 passed by the 11th Additional District Page 27 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023 NEUTRAL CITATION C/SCA/6595/2023 CAV JUDGMENT DATED: 09/11/2023 undefined Judge, Surat - Commercial Court in Commercial Trade Mark Suit No. 25 of 2021 is hereby quashed and set aside. The petition is allowed.

(N.V.ANJARIA, J) (NISHA M. THAKORE,J) BIJOY B. PILLAI Page 28 of 28 Downloaded on : Fri Nov 10 21:02:16 IST 2023