Vatika Resorts Pvt. Ltd. vs Vatika Grand
2009 Latest Caselaw 750 Del

*          HIGH COURT OF DELHI : NEW DELHI

+              IA No.4329/2008 in CS (OS) No.1011/2002

                        Judgment reserved on:    19th February, 2009
%                       Judgment decided on :          5th March , 2009

Vatika Resorts Pvt. Ltd.                           ......Plaintiff
                      Through: Mr. Pravin Anand with Ms. Hima
                               Lawrence, Adv.

                        Versus

Vatika Grand                                           .....Defendants
                        Through: Ms. Pratibha M. Singh, Adv. with
                                 Ms. Nidhi Bisht, Adv.

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                      Yes

2. To be referred to Reporter or not?                   Yes

3. Whether the judgment should be reported              Yes
   in the Digest?

MANMOHAN SINGH, J.

1. By this order I shall dispose of the application being I.A.

No.4329/08 under Order 6 Rule 17 read with Section 151 CPC seeking

amendment of the plaint.

2. The plaintiff has filed the instant suit for permanent

injunction restraining passing off, damages, rendition of accounts etc

against the defendant in the month of May 2002. Issues in the matter

have been framed on 8th August 2007. The matter is now ripe for

plaintiff's evidence.

3. It is averred in the application that during the pendency of

the suit, the trade mark Vatika was registered in favour of Vatika

Township Pvt Ltd on 11th May 2006 bearing No. 1043034 in Class 16

and by virtue of the amendment made in the trade mark when the

application was pending, the said trade mark was registered in the name

of Vatika Landbase Pvt Ltd and the said name was changed to Vatika

Ltd who is the now the registered proprietor of the trademark Vatika.

Meanwhile on 20th February, 2008 Vatika Ltd assigned the said

trademark to the plaintiff by way of Assignment Deed alongwith

goodwill and necessary request on Form TM-23 which has been filed by

the plaintiff for assignment of the said trademark. It is further

contended that as a result of the said assignment, valuable statutory

rights have come to vest in the plaintiff which the plaintiff did not have

at the time of institution of the suit. In view thereof, the plaintiff has

made the prayer to amend the plaint as per the details given in Para 9 of

the application.

4. The application of the plaintiff has been opposed by the

learned counsel for the defendant on various grounds, the details of

which are given as under:-

a) That the defendant is the prior user of the trade mark

Vatika in relation to Restaurant and Banquet Hall

Services and the said name has been used continuously

since 1992 and the plaintiff is trying to undermine the

proprietory rights of the defendant in relation to the said

mark by adopting the back door entry approach on the

basis of assignment deed executed in its favour by one of

the sister concerns.

b) That when the issues were framed, the plaintiff was given

time to produce the evidence which was not produced by

the plaintiff within the time granted by the court and this

application has been filed to stall the progress of the suit.

c) That the registration is granted only in Class 16 and,

therefore, the plaintiff's suit is not maintainable for

infringement of trade mark as the relevant clause dealing

with Hospitality Services is Class 42 and not Class 16.

The plaintiff cannot restrain the defendant for

infringement of trade mark on the basis of the

registration granted in Class 16 as on the date of filing of

the suit, the new Trade Mark Act, 1999 was not in

existence and under the old Act the suit for infringement

in relation to different category of goods was not

maintainable in view of Section 29 of the Trade and

Merchandise Mark Act, 1958.

5. I have heard learned counsel for the parties and have also

considered the decisions given by various courts on this aspect of the

matter. No doubt the amendment cannot be allowed which would have

the effect of substituting one cause of action for another or changing the

subject matter of the suit. The amendment sought would also not be

allowed which would deprive the other party of a legal right accrued by

lapse of time. But it is the duty of the court to allow amendment of the

pleadings when it is necessary for the purpose of determining the real

question of controversy in the suit. It is the duty which has been cast

upon the courts so that substantial justice may be done for which the

court exist.

6. In the present case, it is an undisputed fact that the plaintiff

has filed the suit for permanent injunction, passing off etc. seeking the

injunction from using the mark Vatika against the defendant. The trade

mark Vatika on the date of filing of the suit was not registered/assigned

in favour of the plaintiff. The said trade mark was registered and

assigned in favour of the plaintiff during the pendency of the suit. It is

also a matter of fact that the evidence in the matter is yet to commence

and it is also well established law that while considering the

amendment, the merit of the case is immaterial.

7. There are various decisions given by this court in the similar

situation wherein the trademark was registered during the pendency of

the suit for passing off and amendment was allowed by the courts, the

parties were permitted to incorporate the claim of infringement of

trademark in the plaint.

8. It is well settled law that while considering the issue of

amendment in the written statement to be allowed or not, the court does

not go into the merit of the matter nor it decides whether or not the

claim made therein is bona fide or not. (Ref: 2003 (27) PTC 175 (SC)

Lakha Ram Sharma vs. Balar Marketing Pvt. Ltd.)

9. In the case of Anglo Dutch Color & Varnishing Works

Ltd. vs. Indian Trading House, 1984 PTC 54 where the amendment of

a plaint is sought by the plaintiff raising an additional ground as to

infringement of trademark registered during the pendency of suit is

allowed even when the original suit was based on infringement of

copyright and passing off action. It was held that as the amendment

sought is necessary for a decision of real dispute between the parties

particularly when it will not prejudice the defendants in any manner

even though it introduced to a new cause of action in the strict and

technical sense, the application for amendment of the suit is allowed

subject to payment of costs.

10. In the case of Savitri Minda vs. Minda Industries, 1997

PTC 257, this Court allowed the amendment of the plaint under Order

VI Rule 17 observing that the courts should be liberal in the matter of

allowing amendment unless serious injustice or irreparable loss is

caused to the other side. The Courts exist to decide the rights of the

parties and not to punish them for the mistake they make in the conduct

of their cases.

11. In Sinhal Metal Industries Pvt. Ltd. vs. Royal Enterprises,

1998 PTC 128 amendment of plaint under Order VI Rule 17 is allowed

when there was a suit for passing off, and registration of mark was

obtained during pendency of the suit. It was held that the refusal of

amendment likely to lead to multiplicity of proceedings.

12. In the case of Laxmi & Co. Vs. Dr. Anant R. Deshpande

and Anr. AIR 1973 SC 171 it was held as under :

"Where, subsequent to the institution of the suit events happen which give the plaintiff a new cause of action for the relief claimed or the right to a new or additional

relief he will, as a general rule, be allowed to amend the plaint by moulding it in an appropriate manner."

13. Ordinarily under order VI Rule 17, all amendments ought to

be allowed which satisfy the two conditions (a) of not working

injustice to the other side and (b) of being necessary for the purpose of

determining the real question in controversy between the parties.

14. While considering an application under Order 6 Rule 17

CPC, the court cannot decide about the falsity or correctness of the

amendment sought to be made. The main consideration which must

weigh with the court is whether such amendment is necessary for just

and final determination of the controversy between the parties or not.

15. In the case of Rajesh Kumar Aggarwal and Ors. Vs. K.K.

Modi and Ors. AIR 2006 SC 1647, it was held as under :

"19.While considering whether an application for amendment should or should not be allowed, the Court should not go into the correctness or falsity of the case in the amendment. Likewise, it should not record a finding on the merits of the amendment and the merits of the amendment sought to be incorporated by way of amendment are not to be adjudged at the stage of allowing the prayer for amendment.........."

16. In the case of State of A.P. v. Pioneer Builders,(2006) 12

SCC 119, at page 127, it was observed as under :

"21. Principles governing amendment of pleadings are well settled. Order 6 Rule 17 CPC deals with the amendment of pleadings and provides that the court may at any stage of the proceedings allow either party to alter or amend pleadings in such a manner and on such terms as may be just and all such amendments shall be made as may be necessary for the purpose of determining the real questions in controversy between the parties. It is trite that though an amendment cannot be claimed as a matter of right under all circumstances, yet the power to allow

the amendment is wide and can be exercised at any stage of the proceedings in the interest of justice. It is equally well settled that unless serious injustice or irreparable loss is likely to be caused to the other side, the court should adopt liberal approach and not a hypertechnical approach, particularly in a case where the other side can be compensated with costs. Dominant object to allow the amendment in the pleadings liberally is to avoid multiplicity of proceedings. (See L.J. Leach & Co. Ltd. v. Jardine Skinner & Co. AIR 1957 SC 357, Ganga Bai v. Vijay Kumar (1974) 2 SCC 393 and B.K. Narayana Pillai v. Parameswaran Pillai (2000) 1 SCC 712) Nevertheless, one distinct cause of action cannot be substituted for another nor the subject-matter of the suit can be changed by means of an amendment. The following passage from the decision of the Privy Council in Ma Shwe Mya v. Maung Mo Hnaung AIR 1922 PC 249 succinctly summarises the principle which may be kept in mind while dealing with the prayer for amendment of the pleadings: (IA pp. 216-17) "All rules of court are nothing but provisions intended to secure the proper administration of justice, and it is therefore essential that they should be made to serve and be subordinate to that purpose, so that full powers of amendment must be enjoyed and should always be liberally exercised, but nonetheless no power has yet been given to enable one distinct cause of action to be substituted for another, nor to change, by means of amendment, the subject-matter of the suit."

17. In the case of Usha International vs. Usha Television

Limited, 2002 (25) PTC 184 (Del)(DB) it was held that 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 in 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 previous judicial time and saving of avoidable expenses

for the litigants.

18. The contention of the defendant that the suit for

infringement on the basis of registration in Class 16 for infringement

of trade mark is not maintainable has no force as at this stage the

court is not deciding any issue or defence raised by defendant on

merits of the case. In case the suit for infringement is not

maintainable as alleged by the defendant, even if the amendment is

allowed it will have to be considered in accordance with law at the

final stage. Similarly, the contention of the defendant that the

registration has been obtained by the plaintiff from the back door as

the plaintiff himself has not obtained the registration has no force as

the plaintiff has claimed the ownership of the registered trademark

which has been assigned in its favour. Also, the plea of the defendant

that the original registration was obtained by the plaintiff through its

sister concern in order to defeat the rights of the defendants has no

force as in case the defendant is the earlier user of the mark in

question, the right of the defendant is otherwise protected under

Section 33 of the Trade and Merchandise Marks Act, 1958 and if

even the amendment is allowed, in my opinion, there would not be

any change in the nature of matter as cause of action in infringement

and passing off actions are substantially the same in law. The

decision cited by the defendant in the case of Godej Sara Lee vs.

Karam Chand Appliances 2007 (35) PTC 341 therefore, does not

help the case of the defendant in view of the decision given by the

Division Bench of this court in the case reported in 2002 (25) PTC

184 Delhi (supra) on the similar facts.

19. In view of my above discussion, amendment sought by the

plaintiff is allowed as no prejudice is caused to the defendants in any

manner. I am of the considered view that the proposed amendment is

necessary for the purpose of determining the real matter in

controversy between the parties. Amended plaint be filed within two

weeks from today. The defendant is granted four weeks thereafter to

file the written statement.

20. The application IA No. 4329/2008 under Order VI Rule 17

CPC stands disposed of in the above terms.

CS(OS) No.1011/2002

List the matter on 11th May, 2009 for further directions.

MANMOHAN SINGH, J March 05, 2009 SD