Delhi High Court

M/S Dabur India Ltd. vs M/S Alka Ayurvedic Pvt. Ltd. on 14 November, 2014

$~8

*       IN THE HIGH COURT OF DELHI AT NEW DELHI

+     CS (OS) NO. 2639/2008

      M/S DABUR INDIA LTD.                                      .... Plaintiff

                         Through:     Mr. Hemant Singh, Adv. with
                                      Ms. Mamta R. Jha, Adv. and
                                      Mr. Manish K. Mishra, Adv.

                         versus

      M/S ALKA AYURVEDIC PVT. LTD.                            .... Defendant

                         Through:     Mr. M.K. Miglani, Adv. with
                                      Mr. Aayushmaan Gauba, Adv.

      CORAM:
      HON'BLE MR. JUSTICE G.P. MITTAL

                         ORDER

% 14.11.2014

I.A. No. 10059/ 2013 (Order VI Rule 17 CPC) in CS (OS) No. 2639/ 2008

1. By virtue of this application under Order VI Rule 17 read with Section

151 CPC, the Plaintiff seeks amendment of paras 2 (ii) and 20 of the

reply to preliminary submissions/ objections and para 9 of the

replication.

2. The dispute between the parties is with regard to infringement and

passing off in respect of trademark 'HAJMOLA'. The learned Single

Judge vide order dated 17.12.2008 granted an ex-parte injunction in

favour of the Plaintiff. The order was vacated on 06.10.2009 on the

grounds, inter alia, that the Defendant was the registered owner of the

alleged infringing trademark 'PACHMOLA' and that the said fact had

not been disclosed by the Plaintiff. So much so, that the same had not

even been admitted in the replication although a specific plea was

taken by the Defendant in the written statement that a search report

was filed in the case of Pankaj Goel v. M/s. Dabur India Limited, FAO

(OS) No. 82/ 2008, wherein the registered trademark 'PACHMOLA'

had come to the notice of the Plaintiff. The packaging of the impugned

product was also filed in the said case.

3. The plea taken by the Plaintiff is that in the case of Pankaj Goel

(supra), there were several trademarks which were similar to the

trademark 'HAJMOLA' and there were several marks with the name

'PACHMOLA'. One trademark registered in the name of

'PACHMOLA' was in the name of one Pritam Dass and it was for this

reason that in the replication, the Plaintiff had denied knowledge of

the registration of the trademark 'PACHMOLA' in the name of the

Defendant.

4. Furthermore, the Plaintiff seeks permission to take a plea that the

registration has been granted to the Defendant in contravention of the

provisions of the Trade Marks Act, 1999 and therefore, is invalid

registration. The same is liable to be cancelled and the Plaintiff has

filed a cancellation Petition being ORA/146/2011/TM/DEL.

5. The application is opposed on the ground, first, that the replication is

not a part of the pleadings and second, that the trial of the suit has

begun as the evidence by way of Affidavit has already been filed. In

support of the contention, reliance is placed on the judgment of this

Court in Mohd. Saleem and Ors. v. Naseer Ahmed, AIR 2007 Delhi 48.

6. Although initially, the learned counsel for the Defendant also pointed

out that there was registration in the name of the Defendant, yet while

going through the documents, it was admitted that there was no

registration of the trademark 'PACHMOLA' in the name of Alka

Ayurvedic Pvt. Ltd., the Defendant herein and it was merely an

application filed in the year 2005, which had been opposed.

7. It is true that normally replication is not part of the pleadings.

However, if the replication is permitted to be filed to controvert the

averments made in the written statement, it will be a part of the

pleadings. In this case, the Plaintiff sought permission to file

replication which was allowed. Thus, the replication will be treated as

part of the pleadings.

8. Hence, the amendment sought cannot be declined on the ground that

the replication cannot be permitted to be amended. As far as judgment

in Mohd. Saleem and Ors. v. Naseer Ahmed is concerned, the issue

before the learned Single Judge was whether the trial begins with the

settlement of issues or not and it was held that the trial does not begin

with the settlement of issues. The learned counsel for the Defendant

refers to para 14 of the report in Mohd. Saleem, where it was held as

under:-

"14. The conspectus of the aforesaid pronouncements and definitions as to when a commencement of trial takes place leaves no manner of doubt that it refers to a stage after framing of issues and after the hiatus period thereafter where steps have to be taken to start the trial by examination of witnesses whether in the form of filing of affidavit or otherwise."

9. In the instant case, examination of the witnesses has not begun.

Though, examination in chief by way of affidavit had been filed in the

court, yet the Affidavit is still to be tendered in evidence. All the more,

the Plaintiff has given an explanation as to why it was not aware of the

registration of the mark 'PACHMOLA' of the Defendant, the reason

being that the mark was registered in the name of one Pritam Dass.

The Defendant has nowhere stated in the written statement (as to how

the Defendant became the registered proprietor of the mark

'PACHMOLA'). In paras 4 and 5 of the application, the Plaintiff has

stated:

"4. The fact is that (a) there was no pleading in "Pankaj Goel" case that PACHMOLA was a registered trade mark in favour of the respondent; (b) there were no documents produced in "Pankaj Goel" case establishing registration of trade mark PACHMOLA in favour of the respondent; (c) the trade mark search report produced in "Pankaj Goel" case contained several trademarks with "MOLA" as suffix including the trade mark PACHMOLA. None of them reflected that they belonged to the Defendant namely "Alka Ayurvedic Pvt.Ltd.", who has been sued by the Plaintiff as per its name appearing on PACHMOLA packaging as its manufacturer.

The trade mark registration (PACHMOLA label) now relied upon in written statement by the Defendant is in the name of Pritam Dass. It was reflected in name of one Mr.Pritam Dass in the search report produced on record in "Pankaj Goel" and the Plaintiff had no reason to connect the said entry with the Defendant, which is private limited company incorporated under The Companies Act as Alka Ayurvedic Pvt. Ltd. The Plaintiff wishes to incorporate the abovementioned facts by way of clarification in the replication.

5. This Hon'ble Court was pleased to grant ad interim injunction order dated 17.12.2008 restraining the Defendant from using the trade mark PACHMOLA. However, vide order dated 06.10.2009, the ad interim injunction order was vacated on the ground that the Plaintiff has failed to explain how and why it was not aware about the impugned trade mark registration of the Defendant and the replication of the Plaintiff is also

"evasive" in this respect. The Learned Single Judge further observed that despite having become aware of the impugned registration of the Defendant's trade mark, the Plaintiff has merely denied it, whereas, the Plaintiff could have very well verified the same and made express plea in respect thereof. Based on such observation, the Learned Single Judge also found that there is no plea of invalidity of Defendant's registration raised by the Plaintiff and therefore the ex-parte injunction order dated 17.12.2008 was vacated."

Thus, it cannot be said that the explanation is far-fetched on the

ground that there was lack of due diligence on the part of the Plaintiff

(applicant). Hence, the Plaintiff cannot be denied the amendment

sought on account of proviso of Rule 17 of Order VI, CPC.

10. At this stage, it will be pre-judging the matter to say that the Plaintiff

was very much aware of the registration of the Defendant's trademark

'PACHMOLA'. Since the Plaintiff wants to explain as to how it could

not have the knowledge of registration and why it was not pleaded

even in the replication, the amendment sought must be allowed. It

goes without saying that the Defendant shall have right to rebut the

same by filing a sur-rejoinder.

11. Since the amendment has been sought after a considerable delay and

the Defendant has been put to inconvenience and expenditure, the

amendment is allowed, subject to payment of costs of ₹ 50,000/- to be

paid to the Defendant within four weeks.

12. The application is accordingly allowed.