Delhi High Court
Bajaj Resources Limited & Anr vs Goyal Herbals Private Limited & Ors on 22 January, 2025
Author: Amit Bansal
Bench: Amit Bansal
$~12
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision:22nd January, 2025
+ CS(COMM) 1564/2016
BAJAJ RESOURCES LIMITED & ANR .....Plaintiffs
Through: Ms. Kruttika Vijay, Ms. Geetanjali
Visvanathan, Mr. Sauhard Alung and
Mr. Shivansh Tiwari, Advocates.
versus
GOYAL HERBALS PRIVATE LIMITED & ORS.....Defendants
Through: Mr. Jaspreet Singh Kapur, Mr. Wasim
Ansari and Ms. Shweta Sharma,
Advocates.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
I.A. 1586/2025 (condonation of delay in filing reply to application under
Order VI Rule 17 of CPC)
1. This application has been filed on behalf of the defendants seeking
condonation of delay of 19 days in filing reply to the plaintiffs' application
under Order VI Rule 17 of the Code of Civil Procedure, 1908 (hereinafter
'CPC').
2. For the reasons stated in the application, the same is allowed.
3. Delay of 19 days in filing reply to the application is condoned.
4. Accordingly, the application stands disposed of.
I.A. 39862/2024 (Order VI Rule 17 of CPC)
5. The present suit has been filed for permanent injunction restraining the
defendants from using the mark 'ALMOND DROPS' amounting to
infringement of trade mark/ trade dress, passing off and infringement of
copyright along with other ancillary reliefs.
6. During the pendency of the suit, the present application has been filed
on behalf of the plaintiffs under Order VI Rule 17 of the CPC seeking leave
to amend the plaint.
7. By way of the present application, the plaintiffs seek to amend the
plaint to bring on record facts pertaining to the following:
7.1. Three trade mark registrations and one pending trade mark application,
all of which were filed by the plaintiff no.1 after the institution of the suit. The
details of the aforesaid registrations/ application are provided below:
S. Trade Mark Date of Date of Date of
No. Mark Application Publication Registration
Application
No.
1. 4964451 ALMOND 04.05.2021 06.03.2023 28.07.2023
DROPS
2. 4979103 ALMOND 20.05.2021 25.09.2023 27.02.2024
DROPS
3. 5842987 10.03.2023 04.03.2024 20.07.2024
4. 6253726 BAJAJ 10.01.2024 Pending Pending
ALMOND
DROPS
7.2. An interim order of injunction and a decree passed by this Court on 11th
May, 2022 and 26 th July, 2022 respectively in favour of the plaintiffs and
against the defendants' bottle manufacturer in a subsequent suit, which would
be relevant in the present suit.
7.3. The plaintiffs' sales turnover and advertising expenses in relation to
their flagship product under the mark 'BAJAJ ALMOND DROPS HAIR
OIL' subsequent to the filing of the suit.
7.4. The change in name and authorized signatories of the plaintiffs and the
plaintiff no.1's conversion from a public company to a private limited
company.
8. Briefly, the undisputed facts of the present case which are relevant in
the present application are set out below:
8.1. The present suit was instituted in November 2016.
8.2. The plaintiffs had set up a case for infringement of trade mark/ trade
dress as well as for passing off in the original plaint.
8.3. The issues in the present suit were framed on 2 nd November, 2018.
8.4. The sole witness of the plaintiffs tendered his evidence by way of an
affidavit on 6 th September, 2019. The cross-examination of the plaintiffs'
witness concluded on 2 nd March, 2022.
8.5. The parties were thereafter referred to the Mediation Centre by this
Court on 1 st May, 2023. The mediation, however, failed on 6th October, 2023.
8.6. Since then, there has been no further proceedings in the present suit.
9. Ms. Kruttika Vijay, counsel appearing on behalf of the plaintiffs, has
made the following submissions:
9.1. All the amendments sought to be introduced in the plaint are pursuant
to events which occurred after the trial had commenced in the suit. Therefore,
in spite of the plaintiffs' necessary due diligence, the aforesaid amendments
could not have been introduced prior to the commencement of trial in the suit.
9.2. Subsequent to the registration of the trademarks 'ALMOND DROPS'
and ' ' in favour of the plaintiff no.1, it acquired statutory rights in
relation to the same which include the right to institute a suit for infringement
of the said trademarks/ trade dress against the defendants.
9.3. The aforesaid amendments are necessary for determining the real
question in controversy between the parties and the present application has
been filed to avoid multiplicity of proceedings.
9.4. Neither the aforesaid amendments change the nature and character of
the present suit nor do they set up a new case which is foreign to the case set
up in the original plaint.
9.5. There is no interim injunction in favour of the plaintiffs and against the
defendants in the present suit. Therefore, despite the fact that there will be an
ostensible delay by way of the aforesaid amendments, no prejudice will be
caused to the defendants if the present application is allowed.
9.6. In support of her submissions, counsel for the plaintiff has relied upon
the following judgments: Life Insurance Corporation of India v. Sanjeev
Builders Private Limited and Another [(2022) 16 SCC 1] and Pravesh
Narula Trading as M/s. Capital Enterprises v. Raj Kumar Jain Trading as
M/s. Bholaram Puranmall and Another [2024 SCC OnLine Del 7537].
10. Mr. Jaspreet Singh Kapur, counsel appearing on behalf of the
defendants, does not object to amendment mentioned in paragraph no.7.4
above. However, he opposes the remaining amendments sought to be
introduced.
11. He has made the following submissions:
11.1. On the first date of hearing in the present suit, an ex-parte ad interim
injunction in favour of the plaintiffs was denied on the ground that the
plaintiffs did not have any registration for the mark ALMOND DROPS.
Further, the defendants, in their written statement, pleaded that the plaintiffs
cannot claim any statutory right over the descriptive words 'ALMOND
DROPS', picture of almonds and colour combination of golden and brown
and the same are not registrable. Despite the aforesaid, the plaintiffs took no
steps to apply for registration of the mark 'ALMOND DROPS' until May
2021.
11.2. During the cross-examination of the plaintiffs' witness, he stated that
he is not aware if the plaintiffs have filed any application for the mark
'ALMOND DROPS' or for the colour combination of golden and brown.
11.3. The plaintiffs, on 31 st May, 2022, moved an application for producing
additional documents. However, they did not file copies of the trade mark
applications for the mark 'ALMOND DROPS'. The plaintiffs have therefore
failed to exercise due diligence in bringing the aforesaid amendments on
record.
11.4. The plaintiffs are intentionally delaying the present proceedings.
Further, by way of the present application, the plaintiffs have mala fidely
endeavoured to improve the case set up in the original plaint.
11.5. The aforesaid amendments, if allowed to be taken on record, would
change the nature and character of the suit as the parameters in a passing off
action differ from those in an infringement action.
11.6. For the aforesaid reasons, the defendants would be prejudiced in case
the present application is allowed and the aforesaid amendments are taken on
record.
12. I have perused the material on record and heard the counsel for the
parties.
13. The original plaint filed in the suit was in respect of infringement of
trade mark/ trade dress, infringement of copyright and passing off. At the time
of filing of the suit, the plaintiff only had one trade mark registration in its
favour, i.e., for the mark ' ' in Class 3.
14. Subsequently, during the pendency of the suit, the plaintiff no.1 applied
for and obtained three other trade mark registrations, as mentioned
hereinabove, as a result of which, the plaintiff no.1 now enjoys statutory rights
in the said registered marks.
15. In Life Insurance Corporation (supra), the Supreme Court has
elucidated the principles relating to amendment of the plaint which are set out
below:
" 71. Our final conclusions may be summed up thus:
71.1. Order 2 Rule 2CPC operates as a bar against a subsequent suit if the
requisite conditions for application thereof are satisfied and the field of
amendment of pleadings falls far beyond its purview. The plea of
amendment being barred under Order 2 Rule 2CPC is, thus, misconceived
and hence negatived.
71.2. All amendments are to be allowed which are necessary for
determining the real question in controversy provided it does not cause
injustice or prejudice to the other side. This is mandatory, as is apparent
from the use of the word "shall", in the latter part of Order 6 Rule 17CPC.
71.3. The prayer for amendment is to be allowed:
71.3.1. If the amendment is required for effective and proper adjudication
of the controversy between the parties.
71.3.2. To avoid multiplicity of proceedings, provided
(a) the amendment does not result in injustice to the other side,
(b) by the amendment, the parties seeking amendment do not seek to
withdraw any clear admission made by the party which confers a right on
the other side, and
(c) the amendment does not raise a time-barred claim, resulting in divesting
of the other side of a valuable accrued right (in certain situations).
71.4. A prayer for amendment is generally required to be allowed unless:
71.4.1. By the amendment, a time-barred claim is sought to be introduced,
in which case the fact that the claim would be time-barred becomes a
relevant factor for consideration.
71.4.2. The amendment changes the nature of the suit.
71.4.3. The prayer for amendment is mala fide, or
71.4.4. By the amendment, the other side loses a valid defence.
71.5. In dealing with a prayer for amendment of pleadings, the court should
avoid a hypertechnical approach, and is ordinarily required to be liberal
especially where the opposite party can be compensated by costs.
71.6. Where the amendment would enable the court to pin-pointedly
consider the dispute and would aid in rendering a more satisfactory
decision, the prayer for amendment should be allowed.
71.7. Where the amendment merely sought to introduce an additional or a
new approach without introducing a time-barred cause of action, the
amendment is liable to be allowed even after expiry of limitation.
71.8. Amendment may be justifiably allowed where it is intended to rectify
the absence of material particulars in the plaint.
71.9. Delay in applying for amendment alone is not a ground to disallow
the prayer. Where the aspect of delay is arguable, the prayer for amendment
could be allowed and the issue of limitation framed separately for decision.
71.10. Where the amendment changes the nature of the suit or the cause of
action, so as to set up an entirely new case, foreign to the case set up in the
plaint, the amendment must be disallowed. Where, however, the amendment
sought is only with respect to the relief in the plaint, and is predicated on
facts which are already pleaded in the plaint, ordinarily the amendment is
required to be allowed.
71.11. Where the amendment is sought before commencement of trial, the
court is required to be liberal in its approach. The court is required to bear
in mind the fact that the opposite party would have a chance to meet the
case set up in amendment. As such, where the amendment does not result
in irreparable prejudice to the opposite party, or divest the opposite party
of an advantage which it had secured as a result of an admission by the
party seeking amendment, the amendment is required to be allowed.
Equally, where the amendment is necessary for the court to effectively
adjudicate on the main issues in controversy between the parties, the
amendment should be allowed."
16. In a recent judgment in Pravesh Narula (supra), a Coordinate Bench
of this Court had also allowed an application for amendment of the plaint in
similar circumstances where amendment was sought after the closure of the
plaintiff's evidence. The Court relied upon the observations of the Division
Bench in Usha International v. Usha Television Ltd. [2022 SCC OnLine Del
306], and the same are as under:
"11.In Nichhalbhai v. Jaswantlal, AIR 1966 SC 997 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."
xxx xxx xxx
13. 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 trademark under the Trade and Merchandise
Marks Act, 1958 is a fact which can be taken note of and on that basis the
application for amendment deserves to be allowed.
14. 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 precious judicial time and saving of avoidable expenses
for the litigants."
17. In Pravesh Narula (supra), the Court also relied on the observations of
the Supreme Court in Rajesh Kumar Aggarwal v. K.K. Modi [(2006) 4 SCC
385], which are as under:
" 15. The object of the rule is that the courts should try the merits of the
case that come before them and should, consequently, allow all
amendments that may be necessary for determining the real question in
controversy between the parties provided it does not cause injustice or
prejudice to the other side.
16. Order 6 Rule 17 consists of two parts. Whereas the first part is
discretionary (may) and leaves it to the court to order amendment of
pleading. The second part is imperative (shall) and enjoins the court to
allow all amendments which are necessary for the purpose of determining
the real question in controversy between the parties.
17. In our view, since the cause of action arose during the pendency of the
suit, proposed amendment ought to have been granted because the basic
structure of the suit has not changed and that there was merely change in
the nature of relief claimed. We fail to understand if it is permissible for
the appellants to file an independent suit, why the same relief which could
be prayed for in the new suit cannot be permitted to be incorporated in the
pending suit.
18. As discussed above, the real controversy test is the basic or cardinal
test and it is the primary duty of the court to decide whether such an
amendment is necessary to decide the real dispute between the parties. If
it is, the amendment will be allowed; if it is not, the amendment will be
refused. On the contrary, the learned Judges of the High Court without
deciding whether such an amendment is necessary have expressed certain
opinions and entered into a discussion on merits of the amendment. In cases
like this, the court should also take notice of subsequent events in order
to shorten the litigation, to preserve and safeguard the rights of both
parties and to subserve the ends of justice. It is settled by a catena of
decisions of this Court that the rule of amendment is essentially a rule of
justice, equity and good conscience and the power of amendment should
be exercised in the larger interest of doing full and complete justice to the
parties before the court."
18. In light of the aforesaid judgments, the Court, in Pravesh Narula
(supra), held that the power of the Court to allow amendment even after
commencement of trial is not restricted. It was also observed that if the
amendment is not allowed, the same would result in unnecessary multiplicity
of litigation between the parties.
19. In the present suit, the aforesaid three registrations in favour of the
plaintiff no.1 were clearly granted subsequent to the commencement of the
trial in the present suit.
20. It cannot be disputed that the plaintiff no.1 has the statutory right to
institute a fresh suit for infringement of trademarks/ trade dress, which were
subsequently registered in its favour. Therefore, by allowing the aforesaid
amendments to be taken on record in the present suit, the Court would avoid
multiplicity of litigation between the parties.
21. It is the concern of the defendants that taking the aforesaid amendments
on record would delay the suit as, pursuant thereto, the defendants would be
filing an amended written statement, resulting in framing of additional issues
and the requirement for leading fresh evidence.
22. It is, however, an admitted position that there is no interim injunction
in favour of the plaintiffs and against the defendants. Therefore, in my view,
any delay in the disposal of the suit would not prejudice the defendants.
23. The original plaint filed in the suit was in respect of infringement of
trade mark/ trade dress and passing off, among other reliefs. Therefore, the
aforesaid amendments do not, in any manner, change the nature and character
of the present suit.
24. In light of the aforesaid, I am of the considered view that the
amendment to take on record subsequent trade mark registrations in favour of
the plaintiff no.1 and a pending trade mark application ought to be allowed.
25. By way of the present application, the plaintiffs also seek to bring on
record facts, along with supporting documents, pertaining to a subsequent suit
against the defendants' bottle manufacturer, which was decided by this Court
in favour of the plaintiffs. The aforesaid suit and orders/judgment therein are
judicial records and would be relevant for the adjudication of the present suit.
Therefore, amendment with regard to the aforesaid is liable to be allowed.
26. Further, the plaintiffs seek to place on record their updated sales
turnover and advertising expenses in relation to their flagship product under
the mark 'BAJAJ ALMOND DROPS HAIR OIL' from the financial year
2015-16 to 2023-24 to substantiate their enhanced goodwill and reputation
under the aforesaid mark subsequent to the institution of the present suit. The
aforesaid figures are for the period subsequent to the filing of the present suit
and do not set up any new claim or cause of action in the present suit. Hence,
the amendment with regard to the aforesaid is also liable to be allowed.
27. In view of the discussion above, the present application for amendment
of plaint is allowed and the plaintiffs are permitted to place on record the
amended plaint.
CS(COMM) 1564/2016 & I.A. 5462/2022, I.A. 9673/2022
28. In view of the order passed above in I.A. 39864/2024, the plaintiffs
shall file the amended plaint within two (2) weeks.
29. The defendants shall file their amended written statement within thirty
(30) days thereafter.
30. Mr. Kapur submits that rectification petition in respect of one of the
trade mark registrations granted in favour of the plaintiff no.1 subsequent to
the institution of the present suit has already been filed on behalf of the
defendants. He submits that in view of the aforesaid, the present suit is liable
to be stayed.
31. Let the defendants move an appropriate application in this regard.
32. List before the Joint Registrar on 19 th March, 2025 for completion of
pleadings.
AMIT BANSAL, J
JANUARY 22, 2025
kd
