Usha International And Anr. vs Usha Television Limited
2002 Latest Caselaw 415 Del

JUDGMENT

Dalveer Bhandari, J.

1. This appeal is directed against the order dated 23.11.1995 passed in an application for amendment( IA No. 442 of 1994) in Suit No. 607 of 1985. The amendment has been declined by the learned Single Judge and this appeal is directed against the said order.

2. Brief facts necessary to dispose of this appeal are recapitulated. The appellants (plaintiffs in suit) have filed a suit for permanent injunction restraining the defendants, its servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in television sets and VCRs under the trade mark 'USHA' or from doing any other thing as is likely to pass off the defendant's good or business as the goods or business of the plaintiffs.

3. The appellants had filed an application of amendment of the plaint under Order 6 Rule 17 of the Code of Civil Procedure to include the relief of infringement of trademark in a suit for passing off on the registration being granted by the Registrar of Trade Marks. The Hon'ble Single Judge dismissed the application and hence the present appeal. It is submitted that the appellants had acted with due diligence and had filed the application at the earliest on being granted the registration by the Registrar.

4. The Learned Single Judge dismissed the appellant's application on 19.10.1995 holding that the amendment of the plaint would alter the nature of the Suit for passing off for the infringement of the plaintiff's registered trademark.

5. Mr. Pravin Anand, the learned counsel for the appellants, assailing the judgment/order of the learned Single Judge submitted that the fundamental principle that governs the law relating to passing off actions are the same that relate to infringement and therefore, the said amendment relating to the trademark in issue should be and was not brought in for the first time in the amendment. Mr. Anand also submitted that when a registration is granted, the date of application is considered the date of registration. In the instant case the suit was instituted subsequent to the application of trademark and the same had been pleaded in the plaint. Therefore, the adjudication by the Trademarks Registry related to a time period prior to the institution of the suit and would be relevant. He also submitted that to avoid multiplicity of proceedings such an amendment ought to have been allowed.

6. Mr. Anand placed reliance on the judgment of this Court (in I.A. No. 35/94 in Suit No. 738 of 1992) delivered by the learned Single Judge on 2.12.1997 allowing the application under Order 6, Rule 17 CPC. The Court observed that the plaintiff obtained the registration of its mark 'CLASSIC' bearing No. 5036098 for tooth brushes, hair brushes, nail brushes in Clause 21 under the Trade and Merchandise Act, 1958. The plaintiff had filed a suit for passing off. After obtaining the registration of its mark, by this application the plaintiff wants to amend the plaint. The Court observed that the fundamental principles which govern the law relating to infringement are same as are governing the law of passing off. Action for passing off is brought by a user of trade mark when the trade mark is not registered. The fact remains that the plaintiff alleges that it has suffered on account of similar goods being passed off by the defendant as that of the plaintiff. Action for infringement on the same principle lies when the trade mark is registered. The Court allowed the application and took the amended plaint on record.

7. Mr. Anand also placed reliance on the order passed by this Court in IA No. 52 of 1980 in Suit No. 29 of 1976 titled Anglo Dutch Colour & Varnishing Works Ltd. v. Indian Trading House (1984 PTC 54). In this case also amendment of the plaint was sought by the plaintiff raising an additional ground of infringement of his trade mark and the container design which was registered during the pendency of the suit. The Court observed that "there can be no shadow of doubt that the amendment sought in the instant case is necessary for a decision of real dispute between the parties viz. what are their respective rights vis-a-vis a particular trade mark and the general design and get-up of the container in which their respective goods are marketed. This dispute was substantially involved in the instant case as originally framed and all the basic facts had been stated therein except that the registration of the design of the plaintiff was not there. So, amendment, if allowed, will not prejudice the defendants in any manner even though it introduced a new cause of action in the strict technical sense."

8. The Court further observed that "it is well settled that the main considerations to be borne in mind in exercising the discretion are that the rules of procedure have no other aim than to facilitate the task of administering justice, that multiplicity of suits should be avoided and that the interest of substantial justice should be advanced."

9. Mr. Pravin Anand, the learned counsel for the appellants, also placed reliance on the judgment of the Madras High Court in A. Abdul Karim Sahib v. A. Shanmugha Mudaliar (1967 MLJ 468). The Court observed that "the statute law relating to infringement of trade mark is based on the same fundamental principles as the general law relating to passing off. Though there may be some procedural differences between the two actions, in substance and in effect an action for passing off can easily be telescoped into an action for infringement of trade mark and vice versa. Hence a suit instituted for an injunction restraining the defendant from marketing certain goods under a mark which is deceptively similar to the plaintiff's mark can be amended into one for infringement of trade mark under the Trade and Merchandise Marks Act, 1958 if the plaintiff has obtained registration of his mark under the Act after the institution of the suit. Such an amendment will not change the cause of action and would only be in the nature of an alternative relief. In this judgment the Court also observed that by allowing the amendment multiplicity of suits are also avoided.

10. The Full Bench of the Madras High Court in Subramaniam v. Sundaram (1963) 1 MLJ 113 considered the propriety of a Court taking note of subsequent events. It is no doubt true that a suit has to be decided on the facts and circumstances existing on the date of its institution, but circumstances do warrant a Court taking into consideration supervening events as well provided the justice of the case requires. The Full Bench observed that "the discretion of the Court, under its inherent powers, to adjust the parties on the basis of events happening after the starting of the action, is well recognised and accepted as a rule of justice, equity and good conscience. In some case, it is almost the duty of the Court to advert to the subsequent events brought to its notice lest it should fail to do substantial justice between the parties." The Full Bench considered the propriety of a Court taking note of subsequent events. It is no doubt true that a suit has to be decided on the facts and circumstances existing on the date of its institution, but circumstances do warrant a Court taking into consideration supervening events as well provided the justice of the case require.

11. In another case Lydia Margaret Santhanam and Anr. v. David Thamburaj and Anr. (1966) 1 MLJ 408 the Madras High Court held that "the test for allowing applications for amendment of plaints would be, not merely whether a new cause of action is introduced but whether if it is allowed, thereby the defense would in any way be prejudiced, either by deprivation of the plea of limitation or any other plea ... A new cause of action can well be allowed to be taken by way of an amendment provided it is an alternative plea."

12. In Nichhalbhai v. Jaswantlal their Lordships of the Supreme Court observed that "if the amendment is refused the plaintiff may have to bring another suit and the object of the rule for allowing amendments to the plaint is to avoid multiplicity of suits."

13. We passed over the matter and waited for the counsel for the respondent, but none appeared for the respondent.

14. We have heard the learned counsel for the appellants and carefully perused the judgments cited at the Bar. In our opinion, the law relating to infringement and passing off are fundamentally similar. The supervening event of registration of trade mark under the Trade and Merchandise Marks Act, 1958 is a fact which can be taken note of an on that basis the application for amendment deserves to be allowed.

15. The rule of amendment of pleadings has to be governed on the basic rule of justice, equity and good conscience. When this principle is applied, the amendment as prayed has to be allowed. We are satisfied that the alternative plea that is sought to be raised by the appellant is the amendment application is only by way of expatiating his rights which he has secured by a statute. Apart from this, the main consideration for allowing the application is to avoid multiplicity of proceedings which means saving of precious judicial time and saving of avoidable expenses for the litigants.

16. On consideration of the totality of facts and circumstances, the order of the leaned Single Judge is set aside and consequently the application for amendment is allowed subject to payment of Rs. 1,000/- to be paid to the respondent within four weeks from today. Consequently the impugned judgment of the learned Single Judge is set aside.

17. This FAO(OS) is allowed and disposed of. Consequently we direct that the Suit No. 607 of 1985 be listed before the learned Single Judge for appropriate directions on 8.7.2002.