Banyan Tree Holdings (P) Limited vs Mr. Jamshyad Sethna & Anr
2015 Latest Caselaw 8644 Del

*           IN THE HIGH COURT OF DELHI AT NEW DELHI

%                        Judgment pronounced on: 20th November, 2015

+                          CS(OS) No.2172/2007

            BANYAN TREE HOLDINGS (P) LIMITED            ..... Plaintiff
                          Through    Mr.Pravin Anand, Adv. with
                                     Mr.Aditya Gupta & Mr.Vishnu Rege,
                                     Advs.

                       versus

            MR. JAMSHYAD SETHNA & ANR                ..... Defendants
                          Through   Mr. Riju Raj Jamwal, Adv.

            CORAM:
            HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J.

1. By way of this order, I propose to decide the following applications filed by the parties:

i. I.A. No.12577/2007, under Order XXXIX Rules 1 and 2 CPC, filed by the plaintiff;

ii. I.A. No.12925/2015, under Section 24 CPC, filed by the plaintiff;

iii. I.A. No.16501/2015, under Order VI Rule 17 CPC, filed by the defendant; and

iv. I.A. No.2072/2009, under Order VII Rule 11 CPC, filed by the defendant.

2. The plaintiff has filed the present suit for permanent injunction restraining passing off, unfair competition, dilution of trademark, rendition of accounts of profits, delivery up, damages, etc. against the defendants.

I.A. No.12577/2007(u/o XXXIX R.1 & 2 CPC)

3. The abovementioned application has been filed by the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 CPC seeking ad-interim injunction.

4. Brief facts of the case are that the plaintiff is a Company publicly listed, organized and existing under the laws of Singapore having its registered office at 211, Upper Bukit Timah Road, Singapore 588182. Mr.Lee Kin Meng is duly authorised to sign, verify and institute the present suit.

5. The plaintiff's group of companies is one of the world's most famous and well known hotel and resort chain group using the trademark BANYAN TREE and its device.

6. The plaintiff's flagship company Banyan Tree Resort was launched in 1994 in Laguna Phuket under the trademark BANYAN TREE and its device. It is averred in the plaint that this was the first time the plaintiff's predecessor-in-title coined, adopted and used the trademark BANYAN and its device. It is submitted that the mark BANYAN TREE and its device were adopted as arbitrary marks and were also not being used by a third party for commercial use in relation to hotels, resorts or spas, etc. Hence, the mark is inherently distinctive of the business and products of the plaintiff and the continuous use of the trademark BANYAN TREE by the plaintiff group since the year 1994 has created goodwill and reputation in the said mark that is associated with the plaintiff and the plaintiff alone.

7. The plaintiff Group's services and products under the trademarks BANYAN TREE and its device have been widely promoted inter alia through print and audio-visual media including television programmes, advertisements, articles and write-ups appearing in leading

newspapers, magazines, journals, etc. all of which enjoy a wide viewership, circulation and readership all over the world. Many of these forms of media also have a substantial reach and circulation in India and are viewed by millions of Indians who travel abroad or who subscribe to the same in India every year. In addition, many people from all over the world including India access the plaintiff Group's websites: www.banyantree.com, www.banyantreespa.com, www.banyantreegallery.com, www.banyanresorts.com that have been registered since as early as 1996 and become acquainted with the plaintiff Group's business, services and products which further contributed to the reputation and notoriety of the mark BANYAN TREE and its device of the plaintiff.

8. The plaintiff Group, being prior in the adoption and use of the mark BANYANTREE and its device, is its proprietor and thus, entitled to the use of these marks under common law rights, to the exclusion of all others. Apart from having common law rights in the mark BANYAN TREE and its device, the plaintiff also has statutory right in the same. It is submitted that the plaintiff has registered or has sought to register the mark BANYAN TREE and its device in more than 30 countries of the world.

9. The plaintiff is, thus, the registered owner of the trademark BANYAN TREE as well as the device of BANYAN in various countries. This ownership of the said marks was transferred to the plaintiff vide a Deed of Assignment in favour of the plaintiff along with all the goodwill by one Tropical Resorts Management Co. Ltd., a company with contact address at 211, Upper Bukit Timah Road, Singapore 588182. The said Deed of Assignment was executed on 22nd May 2006. The plaintiff, thus, by virtue of the said assignment, became the owner of the mark

BANYAN TREE and also its device mark. A copy of the Deed of Assignment along with details of the applications granted under the trademark BANYAN TREE and its device all over the world, has been placed on record.

10. The defendant No.1 is the Managing Director of defendant No.2 which is Banyan Tours and Travels (Pvt.) Ltd. having its office at 207 Konark Shram, 156, Madan Mohan Malviya Road, Tardeo, Mumbai 400034 and also at 58-59, Regal Building, Parliament Street, New Delhi. It is the case of the plaintiff against the defendant that sometime in 2004 it came to the knowledge of the plaintiff's predecessor in title that the defendants had applied for registration of the mark BANYAN and a BANYAN tree device under the Trademarks Act, 1999 vide application numbers 999920 and 999921 in Class 16 of the said Act. The predecessor-in-title of the plaintiff, M/s Tropical Resorts Management Ltd. had filed opposition against the purported registration applications in 2004. The said application were thereafter abandoned in February 2005 since the defendants failed to file any counter statements to the oppositions filed by the plaintiffs predecessor in-title and thus, the cases were closed.

11. In June, 2005 the defendants filed an application No.1366027 in Class 39 and application No.1366028 in Class 39 seeking registration of the mark BANYAN with device, opposition to which was filed by the plaintiff in May 2006 and September 2006 respectively. While the said applications were under contest before the trademarks registry, the defendants instituted a suit against Tropical Resorts Management Ltd. (predecessor in title of the plaintiff) bearing title as 'Banyan Tours and Travel & Anr. v. M/s Tropical Resorts Management', being Suit No.80 of 2007 in the Tis Hazari Court, Delhi, claiming damages for

infringement of copyright, trademark, passing off and unfair competition. The defendants also claimed to be the proprietor of the trademark BANYAN and a Banyan Tree device and sought to restrain the plaintiff's predecessor in title from using the trademark BANYAN TREE and its device.

12. The case of the plaintiff against the defendant is that the mark BANYAN and its device which is sought to be adopted by the defendants is deceptively similar to the mark BANYAN TREE and its device of the plaintiff. The use of the trademark BANYAN by the defendants for the particular goods and services complained of by the plaintiff cannot be explained. The adoption by the defendants of the mark BANYAN and its device has no logical source of adoption other than imitation and malafide intention to ride upon the reputation and goodwill of the plaintiff. The defendants have also adopted the website www.banyantours.com which was created on 16th August 2003. The adoption of the mark BANYAN TREE and its device by the plaintiff is much prior to the filing of the application for registration of the mark BANYAN and its device by the defendants and also much prior to the alleged use of it by the defendants. It is submitted that the defendants belong to the same trade/ industry and therefore, there exists every reason for the defendants to have been aware of the plaintiff's marks and also the goodwill and reputation of the said marks worldwide.

13. The plaintiff submits that there is no way in which the defendants could have honestly or by sheer coincidence adopted such a well known mark for their goods, except for ulterior gains. The conduct of the defendants is totally dishonest and is solely motivated to create mass deception and confusion by running a trade/business under an identical trademark. The defendants' activities are clearly

motivated to encash upon the hard earned reputation and goodwill of the plaintiff's well known and recognized trademark BANYAN TREE and its device.

14. The following defences are raised:

i) The suit is barred by limitation as the plaintiff have been aware of the business of the defendants as way back as 2001 and therefore the cause of action if at all that accrued to the plaintiff within 3 years from the said date. The suit has been filed only in the year 2007 therefore the suit is hopelessly bared by limitation.

ii) The plaintiffs have no area of operation from India nor do they have any office in India, while the defendants are a company incorporated within India and have their area operations in India and have been actively conducting business since 1996 without any interruption. The plaintiffs are only trying to take advantage of the goodwill and reputation of the defendants and to encash on the presence of the defendants' business which the defendants have established for the last 12 years in India and abroad under the trademark of BANYAN and its device.

iii) The defendants' suit against the plaintiff's predecessor is pending disposal before the District Court being suit No.80/2007 titled as 'Banyan Tours & Travels P. Ltd. & Anr. v. Tropical Resorts Management Ltd'.

iv) The defendant No.2 is one of the leading tour and travel companies including camping and adventure sports and lay special emphasis on providing services to suit the clients and to provide such hospitality designed to fit into its natural

surrounding, using indigenous resources as far as possible which may reflect the landscape and architecture of the area of travel and also catering to all such needs of clients visiting India and taking the advantage of the facilities and other opportunities available in India with regards to well known tourists spots in India.

v) The plaintiffs are conducting a business of hotels, resorts and spas while the defendants are primarily conducting services relating to travel and tourism in India through their company and the trademark BANYAN and its device. There is no trade connection between the business of the plaintiff and defendants.

15. The application was heard on merits. In support of his submissions, the learned counsel for the plaintiff has relied upon certain judgments. He argued that one of the essential ingredients is goodwill. The classic case of passing off as it existed since its genesis always insist the existence of goodwill of a merchant in order to give him a locally enforceable right to sue for passing off. This has been explained by Kerly's in his book called Law of Trade Marks and Trade Names (Fourteenth Edition) (South Asian Edition 2007), wherein the concept of goodwill has always been categorized as local in character and the learned author observed thus as under:-

"Since an essential ingredient of passing off is damage (or prospective damage) to goodwill, he (the Plaintiff) must show that he had, at the date when the Defendants started up, in this country not merely a reputation but a goodwill capable of being damaged. Goodwill, however, is local; it is situated where the business is. Thus a foreign claimant may have a reputation in this country-from travellers or periodicals of international circulation or, increasingly, from exposure on the Internet-yet still fail in an action for

passing off because he has here no business and so no goodwill. Such cases have been not uncommon in recent years, and have caused considerable difficulty. Where there is a substantial reputation here, our courts will often accept minimal evidence that a business exists here, but there has to be some".

16. This concept of goodwill and the insistence of localized business has been traditional concept of passing off which sometimes is called as classic case of passing off. The concept of passing off has undergone changes due to advent of technology and modernization. The Courts entertaining the case of passing off can discount the localized existence of goodwill and the business in the territory specific if the substantial nature of reputation has been proved which has some kind of nexus in the territory where the protection is sought and the said concept in the modern language is called trans-border reputation whereas the goodwill is always local in character, the concept of reputation is dynamic and is all encompassing.

17. The reputation of a person can transcend boundaries by virtue of its advertisement in the newspapers, media circulation, expatriate reputation due to cultural akinness and all other relevant factors which connect one countries business with that of another. This has been aptly explained by the Division Bench of this Court in the case of N.R.Dongre v. Whirlpool Corporation, AIR 1995 Delhi 300 wherein the concept of trans-border reputation was approved in the following words:-

"(25) Thus a product and its trade name transcend the physical boundaries of a geographical region and acquire a trans border or overseas or extraterritorial reputation not only though import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trade and its trade mark can be available at a place where goods are not being marketed and consequently not

being used. The manner in which or the source from which the knowledge has been acquired is immaterial".

18. The said judgment of Whirlpool [supra] has been approved by the Supreme Court in the case of N.R. Dongre and Ors. vs Whirlpool Corpn. and Anr., 1996 (2) Arb.LR 488 (SC) wherein the law laid down by the Division Bench of this Court was again reiterated. This exposition of 1996 in the case of Whirlpool [supra] has been further revisited by the Courts in India more importantly in the case of Allergan Inc. v. Milment Oftho Industries, 1999 PTC (19) (DB) 160 wherein it has carefully analyzed the interplay between the goodwill and reputation in a case of passing off action and has laid down that the Courts in India have followed the third approach which is a middle path wherein strict insistence of localized business is not necessary. However, reputation which is sought to be protected has to be substantial one having global character. The observation made by Hon'ble Judge is as under:-

"13. Reputation is the connection that the public makes between a particular product or service and a particular source which may or may not be known. Some Courts have held that reputation which is built up on the basis of trade within the country is entitled to protection from passing off. Others Court have made some concession to the communication explosion and held that if the plaintiff has a reputation in another country, his right to the mark will be protected if it is coupled with some actual or proposed business activity within the country (See Alain Beniardin et Cie v. Pavilion Properties, (1967) RFC 581; Amway Corporation. v. Eurway Int. Ltd. (1974) RFC

82."Still other Courts have held that with the increase in international commerce, mass media communications and the frequency of the foreign travel, political and geographic boundaries do not stem the exchange of ideas and instant information. Local business is not an essential ingredient of a passing off action. However, the reputation must be well

established or a known one See : Panhard et Levassor v. Panhard Motor Co. Ltd., (1901) 18 RPC 405; Sheraton Corpn. v. Sheraton Motels, (1964) RPC 202; Orkin Exterminating Co. Tnd. v. Pest Co. of Canada (1985) 5 Canadian Patent Reporter 433; Vitamins L. D.'s Application for Trademark, 1956 (1) RPC 1. The decisions which reflect the first and second view have so held for reasons which are partly historic, partly geographic and partly because reputation was equated with goodwill. Goodwill has been defined as the benefit derived from reputation. It is not the reputation required to found a passing off action. The law of passing off is not trammelled by definitions of goodwill developed in the field of revenue law [per Hockhart J., Conagra Inc. v. McCain Foods (Aust) P. Ltd., 1993 (23) IPR 193 231]. It is an asset of a business assessable in terms of money and transferable (See IRC v. Muller, (1901) AC 217, Trego v. Hunt (1896) AC 7; ITC v. B.C. Srinivas Shetty. In my opinion reputation framing the basis of a passing off action need not be so localised. Whatever the compulsion for the Courts taking the first or second view in other countries, as far as this country is concerned, Courts in India prescribe to the third view and have held that a plaintiff with a reputation which is established internationally can sue to protect it in this country even if it does not have any business activity here. In other words reputation of a product may precede its introduction and may exist without trade in such product in the country. See N.R. Dongre v. Whirlpool Corporation, (DB); J. N. Nichols (Vimto) Ltd. v. Rose & Thistle, 1994 PTC 83 (DB); Calvin Klein Inc. v. International Apparels, (1995) FSR 515 : 1995 IPLR 83; Conagra Inc. v. McCain Foods (Supra) at p. 133."

19. The said judgment passed in the case of Milment (supra) by Division Bench of Kolkata High Court has been further approved by Supreme Court of India in the case of Milment Oftho Industries v. Allergan Inc., (2004) 12 SCC 624 wherein the Supreme Court has laid down as under :

"It must also be remembered that nowadays goods are widely advertised in newspapers, periodicals, magazines and other media which is available in the country. This

results in a product acquiring a worldwide reputation. Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be who is first in the market".

It was further observed on the facts of the case as under:

"(9) In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first in the world market. The Division bench had relied upon material which prima facie shows that the Respondents product was advertised before the Appellants entered the field. On the basis of that material the Division Bench has concluded that the Respondents were first to adopt the mark. If that be so then no fault can be found with the conclusion drawn by the Division Bench."

20. The position of law uptill Milment (supra) has been followed that the Courts in India by placing reliance on the said decision have proceeded to grant interim orders to the multi-nationals having their brands which are of global character and prevented the misuse of the said brands by protecting trans-border reputation subject to fulfilling of essential characteristics necessary to prove trans-border reputation. The decision in the case of Milment (supra) was also rendered in the year 2004 when the impact of internet, e-commerce, social media was yet to be seen and realized.

21. In the case of Cadbury U.K. Limited & Anr v. Lotte India Corporation Ltd., reported in 2014 (57) PTC 422 (Delhi) wherein the

decision of law relating to trans-border reputation has been further strengthened and has been taken to another level wherein the Court has not merely relied upon the decision of Milment (supra) and Whirlpool (supra) but has also extended the principle of trans-border reputation by observing that the existence of a merchant on web pages which are of foreign origin and social media are sufficient to show the trans-border nature of reputation without having any activity in India at the relevant time. Though it is very broad extension of the concept of trans-border reputation, but it is a question of fact in each case as to how the internet documents are sufficient to show the global character of the trademark and the reputation attached to the same. The impact of the said decision which has been given very recently is yet to be seen and analyzed by the other Courts in India in the upcoming times. Effectively, the concept of trans-border reputation and goodwill is interesting in academic sense. However, due to advent of internet media, international travel, the insistence on the localized business as well as trans-border reputation is nowadays more or less dealt with in a kind of presumptive approach rather than by actual establishment of the same. As the international businesses grow and proximity between the markets would increase, over the time this concept will become weaker and on one good day world will be treated as one market and injunction order could be passed against the registered proprietor on the basis of unregistered trademark in an action of passing off as held in the case of Whirlpool (supra).

In Cadbury UK Limited (supra) in para 33 of the said decision, the following principles have been sumarized:

"Legal principles summarized

33. The position, therefore, that emerges from the above case law is:

(a) The concept of goodwill is derived from reputation but the reputation need not be necessarily a local reputation. It can even be a spill over in India of the international reputation enjoyed by the Plaintiff's mark.

(b) It is not necessary for the Plaintiff to actually show the presence of or sale of its products in India as long as it is able to establish that it enjoys a spill over reputation in India. In other words, the reputation of a product may precede its introduction and may exist without trade of the product in the country.

(c) The proof of reputation can be in the form of advertisements in the media and general awareness which in the modern day context would include advertisements or display on the internet and social media. The reputation must be shown to exist at the time the Defendant enters the market.

(d) A mechanical incantation of reputation is not sufficient. There must be some material that the product is known to the Indian consumer. The material will be scrutinised by the Court from many relevant perspectives including the class of consumers likely to buy the product (See the decision dated 15th March 2010 of this Court in CS (OS) 626 of 2006 Roca Sanitario S.A. v. Naresh Kumar Gupta).

(e) Although in the internationalisation of trade there could be a possible confusion with the domestic trader bona fide adopting business names similar to names legitimately used elsewhere, a dishonest adoption or use of a mark similar to one having a reputation in the market, with a view to causing deception or confusion in the mind of the average consumer, may invite an injunction including the class of consumers likely to buy the product (See the decision dated 15th March 2010 of this Court in CS (OS) 626 of 2006 Roca Sanitario S.A. v. Naresh Kumar Gupta).

(f) Although in the internationalisation of trade there could be a possible confusion with the domestic trader bona fide adopting business names similar to names legitimately used elsewhere, a dishonest adoption or use of a mark

similar to one having a reputation in the market, with a view to causing deception or confusion in the mind of the average consumer, may invite an injunction."

22. Even the test of confusion and deception in order to prove the case of passing off has been very well discussed in the case of Laxmikant V. Patel v. Chetanbhat Shah and Another, reported in (2002) 3 SCC 65, wherein the Supreme Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It was held that a competitor initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.

It was also held in Laxmikant V. Patel (supra) that the principles which apply to trademark are applicable to trade name also. Para 10 of the aforesaid judgment reads as under:-

"The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in

confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."

In this case, the Supreme Court further observed that:

"Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."

23. With regard to the plea of delay and latches raised by the defendants, it is settled law and it has been rightly discussed in the case of M/s. Bengal Waterproof Ltd. v. M/s. Bombay Waterproof Manufacturing Co., AIR 1997 SC 1398 as under :

"20. ......It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper relief, for all times to come in future defendant of such a suit should be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts."

24. Despite of the above, the learned counsel for the plaintiff submits that in case the defendants will restrict their business activities only pertaining to corporate name Banyan Tours and Travels Private Limited, the plaintiff may not press the interim order in respect

of trading style. Learned counsel for the defendants, during the course of arguments, informed the Court that the defendants may be agreeable to the suggestion given by the learned counsel for the plaintiff. However, despite of assurance given by him to inform the Court after taking instructions within two weeks after reserving the orders, no information was received from the defendants' side. The Court under these circumstances has no option but to pass the orders in the pending applications.

25. Under these circumstances, the prayer made in the application is allowed restraining the defendants, their proprietors or partners or Directors, as the case may be, their principal officers, servants, agents and all others acting for and on behalf of the defendants from using the name/mark BANYAN or its device and/or any other name or device including the website www.banyantours.com which is deceptively or confusingly similar to the trademark BANYAN TREE and its device of the plaintiff or under any other mark whether in the form of a word or label as may be identical or deceptively similar with the plaintiff's trademark BANYAN TREE and its device in any manner so as to cause confusion or deception leading to passing off of the defendants' goods or business as those of the plaintiff and amounting to unfair competition and dilution of trademarks, except that the defendants would be entitled to use the mark BANYAN which can be used pertaining to the activities of travel agent under the name of Banyan Tours and Travels Private Limited during the pendency of the suit.

26. The application is accordingly disposed of.

I.A. No.12925/2015 (u/s 24 CPC, by plaintiff)

27. Plaintiff has filed the above mentioned application under Section 24 read with Section 151 CPC seeking for consolidation of Suit

No.80/2007 filed before the Tis Hazari Court, Delhi and C.S. (OS) No.2172/2007 filed before this Court.

28. It is the case of the plaintiff that the defendants have filed multiple suits in various jurisdictions and forums on the same facts and the same cause of action against the plaintiff. This multiplicity of suits by the defendants is a clear abuse of the process of law.

29. It is admitted that the defendants have preferred a Suit bearing No.80/2007 which is pending disposal in the District Court, Tis Hazari Delhi. The present suit filed by the plaintiff is barred by Section 10 CPC. Thus, the prayer made in the application is not maintainable.

30. With respect to the Suit being O.S.No.4/2012 which has been filed before the District Court at Alappuzha in Kerala has been filed for a fresh cause of action and the plaintiff is one of the defendants. The counter claim filed by the defendants in the present suit is maintainable. The defendants are seeking an amendment.

31. The plaintiff has not impleaded Tropical Management Ltd. who is predecessor-in-interest of the plaintiff, hence the application is liable to be dismissed.

32. Having examined the contents of the application, since the trade marks/names/devices in both the matters filed by the parties against each other are the same, it would be appropriate that the suit filed by the defendants in the District Court being Suit No.80/2007 pending in Tis Hazari Courts, Delhi be clubbed with the present suit. The evidence in both the matters may be recorded in the suit pending in this Court.

33. The application is disposed of.

I.A. No.16501/2015 (u/o VI Rule 17 CPC, by defendants)

34. The defendants have filed the above mentioned application

under Order VI Rule 17 read with Section 151 of CPC for amendment of plaint/counter claim in August, 2015 to bring on record the date of cause of action which accrued to the defendants/applicants in filing the counter claim. Reply to the said application was also filed.

35. The defendants submit that the plaintiff moved an amendment application being I.A. No.300/2013 on 7th January, 2013 to bring on record the factum of registration of trademark No.1254023 and incorporate prayer for infringement of trademark. Subsequently another I.A. No.3765/2014 was filed by the plaintiff. During the pendency of these proceedings, the plaintiff became aware of certain new trademark registrations under No.1513432, 1513433, 1513434 which as claimed by the plaintiff were not in their knowledge at the time of filing of the first amendment application being I.A. No.300/2013. It is further stated that the defendants have also got a registered trademark under No.1542478 as on 27th March, 2007.

36. It is the case of the defendants that since the case was amended by the order of the Court, a fresh cause of action was accrued giving rise to the defendants/applicants in fling a counter claim against the plaintiff.

37. However, inadvertently the defendants/applicants did not mention the date of order which gave rise in filing the counter claim against the plaintiff. Accordingly, the defendant seeks to amend the plaint/ counter claim as detailed in para 6 of the application being I.A. No.16501/2015.

38. The plaintiff has stated in its reply that the counter claim filed by the defendant is itself not maintainable. Further the reliefs claimed in the counter claim have already been sought in two separate proceedings, which are at an advance stage.

39. It is the admitted position that apart from filing the suit in the District Court, the defendants have also filed the counter-claim in the suit filed by the plaintiff wherein the abovementioned application has been filed for amendment of the counter-claim. By the said application, the defendants wish to bring on record the additional subsequent events in the present proceedings. It is also a matter of fact that the contents of the written statement/counter-claim and the suit filed in the District Court are of the similar nature.

40. Under these circumstances, the prayer made in the application is allowed. The amendment sought by the defendants be read as a part of the written statement/counter-claim.

41. The application is accordingly disposed of.

I.A. No.2072/2009 (u/o VII Rule 11 CPC, by defendants)

42. The above mentioned application has been filed by the defendants under Order VII Rule 11 read with Section 151 CPC with Section 3 of the Limitation Act for rejection of plaint.

43. It is stated that the defendants company was registered and incorporated in the year 1996 under Indian Company Act, 1956 by the promoters. The defendants had filed for registration of the trademark under class 16 before the Trade Mark Registry Mumbai in 2001 which was opposed by the plaintiffs in the year 2004 as submitted by the plaintiffs in the plaint, therefore it is stated that TRML had complete knowledge of the business of the defendants as way back in April 2004 and the present suit was filed only in the year November 2007 which is after more than 3 years. It is the case of the defendants that the suit is barred by limitation.

44. Further the defendants states that no cause of action has been specifically pleaded and from the plaint it is quite evident that the

plaintiffs do not even have any office in India nor do they had any such business operations in India prior to 2002 which is dealing only with Spa that too in association with the Oberoi's and not with any other business while the defendants have been in business of travel Trade as way back in 1996 and are still continuing the same even today. Thus, the plaintiff is only trying to seek an undue advantage and the Trade Mark Device is being dishonestly used which would cause an unfair advantage to the plaintiff and contrary to the defendants interest.

45. It is the case of the defendants that the plaintiff has falsified the defendants' trademark device of Banyan logo as the defendants have been using the trademark device since 1996 and have got original work and prior user.

46. It is settled law that in trademark matter, each infringing sale gives a fresh cause of action. The said aspect has been dealt with by the Supreme Court of India in M/s Bengal Waterproof Ltd. (supra). Even otherwise, in case the Article 88 and Section 22 of the Limitation Act are read conjointly, it is clear in my mind that in the case of a continuing breach of contract or in the case of a continuing tort, a fresh period of limitation begins to run at every moment of the time during which the breach or the tort, as the case may be, continues.

47. In the present case, admittedly, the defendants are subsequent users of the trademark BANYAN and BANYAN TREE device. It is a continuous cause of action. The passing off is one of the facet of tort. In case both the provisions are read, prima facie it appears to the Court that the suit is not barred by limitation. The application is wholly misconceived and the same is filed contrary to law already settled. The application is accordingly dismissed.

CS(OS) No.2172/2007 List the matter before the Joint Registrar on 22nd December, 2015 for further proceedings.

(MANMOHAN SINGH) JUDGE NOVEMBER 20, 2015