Anchor Health And Beauty Care Pvt. ... vs V.Kaushik & Ors.
2012 Latest Caselaw 1005 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                               Judgment reserved on: 27th January, 2012
                                Judgment pronounced on: 14th February, 2012

+      CS(OS) No. 1579/2007

ANCHOR HEALTH AND BEAUTY CARE PVT. LTD.                        ...       Plaintiff

                                       versus
V.KAUSHIK & ORS.                                             ...         Defendants

Advocates who appeared in this case:
For the Plaintiff : Mr Sandeep Sethi, Sr. Adv. with Ms. Pratibha M. Singh,
                    Mr. Sudeep Chatterjee, Mr. Sudeep Bhandari and Mr. Ashwin
                    Kumar, Advs.
For Defendants : Mr. Pravin Anand and Ms. Tanvi Misra, Advs.

CORAM:
HON'BLE MR. JUSTICE V.K.JAIN

V.K. JAIN, J.

IA 21176/2011(O.VI R.17 r/w. S.151 CPC)

1. This is an application under Order VI Rule 17 of the Code of Civil Procedure

seeking amendment of the plaint. The plaintiff company has been using the trade

mark and logo „ANCHOR‟, in a red and white colour combination. The plaintiff

launched a tooth paste "Anchor White - Allround Protection‟ in the year 2005. It

was alleged that in August, 2007, the defendants introduced a new "Strong Teeth"

carton using the terminology "All-Around Decay Protection". It was alleged that

the defendants had thus copied the distinctive features of the plaintiff‟s packaging.

It was further alleged that in the new colour "strong teeth" carton, the use of the

tooth device with bubbles around it is also similar to the tooth device used by the

plaintiff in „Anchor white-Allround Protection‟.

It is also alleged that the defendants were interfering with the business of the

plaintiff in an unlawful manner and had instituted a number of suits against it and

they are also threatening the dealers of the plaintiff. The plaintiff has sought an

injunction restraining the defendants from interfering with the plaintiff‟s legitimate

business and imitating or copying features of the plaintiff‟s range of product

including the term "Allround Protection and Tooth Device in their Colgate Strong

Teeth Carton.

2. This suit was filed on 01.09.2007. During pendency of this suit, the mark

„Allround" has been registered in the name of the plaintiff on 26.08.2008. The suit

was initially titled as a suit for declaration and permanent injunction restraining

tortious acts of unlawful interference. The plaintiff seeks to amend the headings of

the suit as under:-

        Present Heading                     Proposed heading

        "Suit for declaration and           Suit for declaration and
        permanent injunction restraining    permanent            injunction
        tortious acts o0f unlawful          restraining infringement of
        interference in the plaintiff‟s     registered trade mark/passing
        business,    acts   of    unfair    off, tortious acts of unlawful
        competition, economic duress        interference in the plaintiff‟s
        and causing loss by unlawful        business, acts of unfair



         means, inducement of breach of       competition, economic duress
        contract,             harassment,    and causing loss by unlawful

intimidation, deliberate imitation means, inducement of breach etc., and damages." of contract, harassment, intimidation, deliberate imitation etc., and damages."

3. The plaintiff also seeks to insert paragraphs 6(A), 6(B), 6(C) & 12(A) to the

plaint. The proposed paragraphs read as under:-

"6A The trade mark ALLROUND of the plaintiff was applied for on 2nd Sept. 2005 before the Registrar of Trade Marks. The said application bearing no.1381760 now stands registered in favour of the plaintiff for goods falling in class 3 and dates back to 2.9.2005. The said registration was granted on 26th Aug, 2008 during the pendency of the present suit. The mark ALLROUND is associated with the plaintiff exclusively and now stands registered in its favour. The plaintiff has applied for the Legal Proceeding Certificate with respect to the said mark and shall file before this Hon‟ble Court as and when the same is issued by the Registrar of Trade Marks.

6B It is stated that the term ALLROUND with respect to tooth paste has been used by the plaintiff for the first time and in fact the defendant had filed the suit objecting to the packaging of the Anchor tooth paste. It is relevant to point out that the defendant had never claimed any rights in the mark ALLRUOND. The plaintiff is the prior user, owner and the proprietor with respect to the said mark falling in class 3.

6C The plaintiff had also applied for the label/mark for the ANCHOR TOOTHPASTE carton. The defendant had filed the notice o0f opposition. Copy of the said

notice of opposition is filed in the present suit. The defendant had never claimed to be the prior user of the mark.

12A. The use of the term ALL AROUND DECAY PROTECTION is a complete imitation of the plaintiff‟s mark ALLROUND which is a registered trade mark. The use of the same with respect to the identical products constitutes infringement of registered mark and passing off as also dilution of the said mark. The products being competing products, the defendant claiming to be the leading manufacturer of tooth paste, there was no justification in adopting an identical expression which is associated with the plaintiff. The defendant‟s use is clearly subsequent, deliberate, conscious and illegal in nature. The entire purpose has been to ride piggyback upon the enormous reputation which the ANCHOR tooth paste has earned due to the extensive advertising on the electronic media and otherwise. The use of the term ALL AROUND DECAY PROTECTION which encompasses within it the entire mark of the plaintiff ALLROUND is clearly infringement of the registered trade mark, constitutes passing off, acts of unfair competition and dilution."

4. The plaintiff also seeks to amend the prayer clause by inserting the following

sub-paragraphs:-

"15(i)(a) For a decree of permanent injunction restraining infringement and passing off of the registered trade mark, the suit is valued at Ts.200/- and a court fee of Rs.20/- is affixed.

16(i) A decree of permanent injunction be passed restraining the defendants, their officers, servants, agents,

distributors, dealers, investigators and anyone acting for and on their behalf from using the term ALL AROUND DECAY PROTECTION or any other features on the plaintiff‟s carton which violate the plaintiff‟s statutory and common law rights thereby resulting in infringement, passing off, dilution etc."

5. The application has been opposed by the defendants. They have taken a

preliminary objection that the fundamental structure and cause of action is sought

to be altered by making the proposed amendment, converting a non-confusion

plaint into a confusion cause of action. It is also alleged that the limitation for

infringement of trade mark expired in 2010 and, therefore, the proposed

amendment, if allowed, would cause irreparable injury to the defendants. It is

further stated that the defendants have already filed rectification proceedings,

immediately on coming to know of the registration in favour of the plaintiff.

Another ground on which the application has been opposed is that the plaintiff has

not explained why the proposed amendment is sought to be made now, when the

registration in its favour was granted on 26.08.2008.

6. The law of amendment of pleadings in our country is rather liberal in nature, the

legal proposition being with an amendment should ordinarily be allowed, unless it is

likely to prejudice the opposite party or is likely to take away a vested right which has

accrued to the opposite party provided the opposite party can be compensated in terms

of cost. Errors or mistakes, if not fraudulent, should not be made a ground for rejecting

the application for amendment of plaint or Written Statement. If no inconsistent cause

of action is introduced, no vested interest or accrued legal right is affected the

application for amendment is not mala fide and the amendment will not prejudice the

opposite party, it should ordinarily be allowed.

It is also settled proposition of law that the amendment aimed at avoiding

multiplicities of proceedings should generally be allowed.

7. In Suraj Prakash Bhasin v. Raj Rani Bhasin (1981) 3 SCC 652 Supreme

Court inter alia observed as under:-

"... liberal principles which guide the exercise of discretion in allowing amendment are that multiplicity of proceedings should be avoided, that amendments which do not totally alter the character of an action should be readily granted while care should be taken to see that injustice and prejudice of an irremediable character are not inflicted on the opposite party under pretence of amendment, that one distinct cause of action should not be substituted for another and that the subject-matter of the suit should not be changed by amendment."

8. In L.J. Leach and Company Ltd. v. Jardine Skinner and Co. AIR 1957

SC 357, the amendment sought by the plaintiff was resisted by the defendant

contending that it sought to introduce a new cause of action, which was barred by

limitation on the day the amendment was sought and hence would seriously

prejudice the defendants. The amendment was, however, allowed by the Court

considering that it was not foreign to the scope of the suit and all necessary facts

were on record. The amendment allowed by the Court resulted in a suit for

damages for conversion being converted into a suit for damages for breach of

contract after the claim had become a time barred.

9. In Laxmidas Dayabhai Kabarwala v. Nanabhai Chunilal Kabarwala

and Ors. AIR 1964 SC 11 the prayer of the defendant for amendment to treat the

counter claim as a cross-suit was objected by the plaintiff inter alia on the ground

of limitation. The amendment was, however, allowed by the High Court and the

order passed by the High Court was upheld by the Supreme Court which felt that

the Rule that the leave to amend will ordinarily be refused when the effect would

be to take away from a party a legal right which has accrued to him by lapse of

time, applies only when fresh allegations are added or fresh reliefs are sought by

way of amendments.

10. As regards the contention that the suit for injunction, based on infringement

of the trade mark registered in favour of the plaintiff company, during pendency of

the suit, would be barred by limitation, I find no merit in the same, for the simple

reason that infringement of a registered trade mark gives rise to a continuing cause

of action, so long as the alleged infringement persists. Since this is not the case of

the defendants that use of impugned packaging has been discontinued by them, it

cannot be said that a fresh suit, if filed by the plaintiff, alleging infringement of the

trade mark registered in its favour would be barred by limitation.

The learned counsel for the defendants while opposing the proposed

amendment has relied upon A.K.Gupta & Sons v. Damodar Valley Corpn. : AIR

1967 SC 96, Revajeetu Builders And Developers v. Narayanaswamy & Sons And

Others : (2009) 10 SCC 84 and Colgate-Palmolive Company & Ors. : 2008

(38) PTC 276 (Del.)

In A.K.Gupta & Sons (supra), an extra relief was sought to be added by way

of proposed amendment, seeking a decree for recovery of money. It was an

admitted position that on the date the amendment was sought, a suit for money

claim was barred. The Court observed that though the general rule is that a party is

not allowed by amendment to set up a new case or a new cause of action

particularly when a new suit on the new case or cause of action is barred, it is also

well recognized that where the amendment does not constitute the addition of a

new cause of action or raise a different case but amounts to no more than a

different or additional approach to the same facts, the amendment would be

allowed even after the expiry of the statutory period of limitation, the principal

reason being that the object of Courts and rules of procedure is to decide the rights

of the parties and not to punish them for their mistakes. The second reason given

by the Supreme Court for the rule was that a party is strictly not entitled to rely on

the statute of limitation when what is sought to be brought in by the amendment

can be said, in substance, to be already in the pleading sought to be amended. The

Court was of the view that the expression „cause of action‟ in the context does not

mean very fact which it is material to be proved to entitle the plaintiff to succeed.

As regards the matter before it, the Supreme Court was of the view that since the

amendment sought to introduce a claim based on a same cause of action, i.e. the

same contract, had introduced no new case of facts. The learned counsel for the

defendants relied upon the observations made in the minority judgment to the

effect that a suit based on one cause of action cannot be allowed to change into a

suit based on another cause of action. However, in the case before this Court, the

material facts including use of the expression „Allround Protection‟ have already

been pleaded by the plaintiff. The use of the terminology "All-Around Decay

Protection" and Strong Teeth" carton by the defendants have also been pleaded

while filing this suit. Therefore, it is difficult to say that by alleging infringement

based on the trade mark registration granted to the plaintiff during pendency of this

suit, an altogether new cause of action is sought to be pleaded or the existing cause

of action is sought to be substituted by a new cause of action.

11. In Revajeetu Builders And Developers (supra), the Supreme Court after

reviewing the case law on amendment of pleadings, enunciated some basic

principles which are to be taken into consideration while allowing or rejecting an

application for amendment of plaint. These basic principles read as under:-

"On critically analyzing both the English and Indian cases, some basic principles emerge which ought to be taken into consideration while allowing or rejecting the application for amendment.

(1) Whether the amendment sought is imperative for proper and effective adjudication of the case? (2) Whether the application for amendment is bona fide or mala fide?

(3) The amendment should not cause such prejudice to the other side which cannot be compensated adequately in terms of money;

(4) Refusing amendment would in fact lead to injustice or lead to multiple litigation;

(5) Whether the proposed amendment constitutionally or fundamentally changes the nature and character of the case? and (6) As a general rule, the court should decline amendments if a fresh suit on the amended claims would be barred by limitation on the date of application.

12. Applying the aforesaid basic principles, I feel that though the plaintiff has

been rather negligent since it did not seek amendment of the plaint soon after the

trade mark was registered in its favour, this is not a case of fundamental change in

the nature of the suit or the cause of action and since a fresh suit based on

infringement will also not be barred by limitation, there seems to be no

justification for refusing the amendment, so long as the defendants can be

compensated by way of costs. The trial is yet to commence and in fact the suit is

at an initial stage since the issues have been framed and, therefore, there is no

likelihood of any injustice or prejudice being caused to the defendants. On the

other hand, if the proposed amendment is not allowed, it is likely to result in

multiplicity of litigation on account of the plaintiff being compelled to file a fresh

suit on the basis of infringement of its registered trade mark.

In Colgate Palmolive Company (supra), the suit of the plaintiffs was based

on their design registration No.185480. The defendants, in their reply, had pleaded

a prior registration No.185103. The plaintiff then came up with an application for

amendment so as to incorporate the existence of four additional design registrations

of variants of the toothbrush to which the toothbrush design before the Court was

related, thereby seeking to alleged infringement even in respect of those four

designs registrations. The amendment was refused on the ground that infringement

of each registration of each design would rise to a separate cause of action which

was to be specifically pleaded by the plaintiff. However, in the case before this

Court, the case of the plaintiff even in the original plaint is based upon the

expression "Allround" which is the mark registered in its favour during pendency

of this suit. Therefore, the fundamental ground on which the suit is based would

remain the same even if the proposed amendment is allowed. Hence, strictly

speaking, this is not a case of adding an additional cause of action, by way of the

proposed amendment. Here, the plaintiff is seeking only to add an additional

ground, to challenge the use of the impugned mark/expression by the defendants.

For the reasons given in the preceding paragraphs, the proposed amendment

is allowed subject to payment of Rs.50,000/- as costs.

The application stands disposed of.

CS(OS) No. 1579/2007 & IA 9787/2007(O.39 R.1 & 2 CPC)

Written statement to the amended plaint be filed within four weeks. The

replication can be filed within two weeks thereafter. Though I had heard part

arguments on IA 9787/2007, since I am now sitting in a Division Bench and

amendment of the plaint has also been allowed, the matter is released from

part-heard. Be listed before the Roster Bench on 21st February, 2012.

V.K.JAIN, J

FEBRUARY 14, 2012 'sn'