Bombay High Court
Smithkline Beecham Consumer ... vs Hindustan Lever Limited And Anr. on 3 July, 2002
Equivalent citations: (2003)105BOMLR547
Author: A.P. Shah
Bench: A.P. Shah, Nishita Mhatre
JUDGMENT A.P. Shah, J.
1. In this appeal the questions for consideration are whether the Trial Court was right: in trying the issue Nos. 1 and 2 as preliminary issues under Section 9A of the Code of Civil Procedure, 1908 (C.P.C. for short); whether the suit filed by the appellants being Suit No. 6556 of 1999 against the respondents was barred by the provisions of Order II, Rule 2 of the C.P.C. and whether institution of the said suit amounts to abuse of process of law. The learned Trial Judge held that the suit was barred by the aforesaid provisions of Order II, Rule 2. The learned Trial Judge also held that the institution of the suit amounts to abuse of process of law. The suit was accordingly dismissed. For the purpose of brevity and to avoid confusion the appellants are hereinafter referred to as the plaintiffs and the respondents are referred to as the defendants.
2. The plaintiff No. 1 is a German Company engaged inter alia in design and sale of the toothbrushes. The plaintiff No. 2 is a Company registered under the Companies Act, 1956 and advertises, markets and distributes throughout India two models of toothbrushes, the AQUAFRESH FLEX and the ACQUARESH FLEX N DIRECT. These toothbrushes are manufactured for it by Menezis and Schiffer Dental Care Products Ltd. The plaintiff No. 3 is an English Public Company which is a holding Company for the plaintiff Nos. 1 and 2, all of whose issued shares are ultimately owned by it. In 1988 the plaintiff No. 1 commissioned a new design of plastic toothbrush incorporating certain novel product features including an S-shaped (or zigzag) connecting portion between the head and the handle of the toothbrush ("the S-bend"), hereinafter referred to as Mark I toothbrush. The plaintiff No. 1 thereafter commissioned in 1993 the designing of a plastic toothbrush which retained the S-bend configuration but which possessed a head and handle of different appearance, hereinafter referred to as Mark 11 toothbrush. The plaintiff No. 1 materially altered the appearance of the handles of the Mark II toothbrush and this resulted in what is hereinafter referred to as the Mark III toothbrush. In 1996 the 1st defendant Hindustan Lever Limited introduced in the market a toothbrush under the brand name PEPSODENT POPULAR. According to the plaintiffs the shape of the said toothbrush was virtually identical to the Mark II model of the plaintiffs toothbrush. As registered proprietors of the design, the plaintiffs initiated an action in Delhi High Court against the 1st defendant for infringement of registered design and for passing off being Suit No. 2515 of 1996, hereinafter referred to as the Delhi Suit. The defendant No. 2 herein Kewal Raj and Co. Pvt. Ltd. was added as defendant In Delhi Suit on the allegation that the 2nd defendant was marketing and selling the toothbrush In the market under the trade mark OZETTE which was virtually identical to the plaintiffs Mark 1 toothbrush. The plaintiffs averred that though the said design was developed for and on behalf of the plantiff's and was registered in their name around the world, the 2nd defendant had preempted the plaintiffs in India and obtained design registrations of the same and these designs registrations were transferred by the 2nd defendant to the 1st. defendant. The plaintiffs applied for interim relief in the Delhi Suit. The application, however, came to be dismissed on the ground that there was prior publication of the design.
3. The present suit being Suit No. 6556 of 1999 is based on the alleged infringement of the plaintiffs' copy right in mould drawings and copy right in the pilot moulds. The plaintiffs have claimed that designs of tooth-brushes Mark I, II and III were prepared by Hans Halm (Herr Halm), a designer of international repute on the instructions of the plaintiffs. These drawings were then used by machine Boucherie to create to precision pilot moulds. Pilot moulds were made by Roland Beirnaert and Roger Van Marcke, both being Belgian citizens employed under a contract of service with Plast O Form, which is a subsidiary of Machine Boucherie. Machine Boucherie was thereafter instructed by Menezis and Schiffer on the directions of the plaintiff No. 1 to prepare drawings for making of production moulds for this toothbrush. By late 1992 drawings for a production mould had been made by Calu employee of Plast O Form. The drawings for the production mould are the original works of their author Calu, and were produced in the course of and as part of his employment under his contract-of service. The pilot moulds made according to the drawings of Herr Halm are the original work of their respective authors Beirnaert and Van Marcke and were produced in the course of and as part of their employment under their aforesaid contracts of service. The copyright subsists therein in Belgium. By virtue of Section 40 of the Copyright Act, 1957 the said works also attract copyright protection in India. Belgium being a country specified in both the Schedule (Parts I and II) to the International Copyright Order. 1958 (S.R.O. 271 of 21st January, 1958) and in the Schedule (Parts I and II) to the International Copyright Order, 1991 (SO 657 (E), of SO September, 1991).
4. It is averred by the plaintiffs that during the course of the proceedings for design infringement and passing off before Delhi High Court, the plaintiffs found that mould sets had been imported into India by a concern in Baroda by the name Unident Brushes Pvt. Ltd. To enforce its copyrights the plaintiffs issued a letter before action to the 1st defendant making a claim of copyright infringement in the mould and mould drawings used in the manufacture of PEPSODENT POPULAR toothbrushes and sought appropriate undertakings from them for the future and deliver up their moulds. The 1st defendant Dide their letter dated 7.8.1999 comprehensively denied the plaintiffs rights and refused to accede to their demands. The 1st defendant also categorically denied that Unident are their agents for manufacture of PEPSODENT POPULAR toothbrushes and stated that such manufacture was on the basis of principal to principal. In the said letter the 1st defendant disclosed that the 2nd defendant M/s. Kewalraj and Co. was also manufacturing the offending toothbrushes. The plaintiffs claim that this was the very first time that the plaintiffs learnt of the existence of these new moulds having been imported into India in the year 1999 giving rise to a fresh cause of action. The plaintiffs, therefore, issued notice dated 23.9.1999 to the defendants and as no response was received to the said letter filed the present suit praying for injunction thereby restraining the defendants from infringing the copyright of the plaintiffs in mould drawings of the plaintiffs. Alongwith the said suit the plaintiffs took out a Notice of Motion for injunction and appointment of Court Receiver. During the course of hearing of the Notice of Motion the Trial Judge framed following two issues:
(i) Do the defendants prove that the institution of this suit amounts to abuse of the process of the Court? If yes, would the Court has jurisdiction to try the suit?
(ii) Do the defendants prove that the suit is barred by the provisions of Order II, Rule 2 of the Civil Procedure Code, in view of the earlier suit filed by the plaintiffs in Delhi High Court which is pending?
The Trial Judge tried these issues as preliminary issues under Section 9A of the C.P.C. and dismissed the suit by the impugned judgment and order dated 2.8.2001. Being aggrieved by the impugned judgment and order present appeal is filed before this Court.
5. We have heard Mr. Chidambaram, learned Counsel appearing for the appellants/plaintiffs and Dr. Tulzapurkar appearing for the respondents. In view of respective submissions of the learned Counsel, three questions fall for our consideration:
(i) Whether the learned Trial Judge was right in trying the issue Nos. 1 and 2 as preliminary issues?
(ii) Whether the present suit of the plaintiffs is barred by Order II, Rule 2 of the C.P.C.?
(iii) Whether the institution of the present suit amounts to abuse of process of law?
Regarding question (i):
6. For properly appreciating the controversy raised before us it will be useful, if a reference is made to Section 9A of the C.P.C. which reads as under:-
9A. (1) Notwithstanding anything contained in this Code or any other law for the time being in force, if, at the hearing of any application for granting or setting aside an order granting any interim relief, whether by way of stay, injunction, appointment of a Receiver or otherwise, made in any suit, an objection to the jurisdiction of the Court to entertain such a suit is taken by any of the parties to the suit, the Court shall proceed to determine at the hearing of such application the issue as to the jurisdiction as a preliminary issue before granting or setting aside the order granting the interim relief. Any such application shall be heard and disposed of by the Court as expeditiously as possible and shall not in any case be adjourned to the hearing of the suit.
(2) Notwithstanding anything contained in Sub-section (1), at the hearing of any such application, the Court may grant such interim relief as it may consider necessary, pending determination by it of the preliminary issue as to the jurisdiction.
7. Section 9A was introduced in the C.P.C. by the Code of Civil Procedure (Maharashtra Amendment) Act of 1969. By Section 9A, Court is enjoined to determine the issue as to jurisdiction as a preliminary issue, if at the hearing of any application for granting or setting side an interim relief, an objection to the jurisdiction of the Court to entertain such a suit is taken by any party to the suit. From bare reading of Section 9A it is clear that the provisions are mandatory and imperative and decision on the issues cannot be postponed or adjourned. It is not necessary to deal with this aspect of the matter any further, in view of the authoritative pronouncement by the Division Bench of this Court in Sadhguna Chimanlal Shah v. New Sagar Darshan Co-op. Housing Society Ltd. 1980 Mah. L.J. 203. However, the question which is required to be considered is whether issue Nos. 1 and 2 could be tried as preliminary issues under Section 9A of the C.P.C.
8. Mr. Chidambaram strenuously contended that the learned Trial Judge has erred in applying the provisions of Section 9A of the C.P.C. Section 9A only deals with the objection of the jurisdiction of the Court to entertain a suit. The term "jurisdiction" used in Section 9A only means jurisdiction with respect to pecuniary, territorial or subject-matter of the case. The learned Counsel urged that in the instant case, no objection as to the jurisdiction has been raised by the defendants. It has never been any party's case that this Court does not have the jurisdiction to entertain the suit. The application of the provision of Section 9A of the C.P.C. is, therefore, clearly erroneous. The learned Counsel heavily relied upon the following observations of the Full Bench decision of the Andhra Pradesh High Court in A. Venkataseshayya and Ors. v. A. Virayya and Ors. AIR 1958 A.P. 1:
There is an essential distinction between the question of the jurisdiction of a Court to entertain a suit on the rule of law which precludes a man from avowing the same thing in successive litigation. There is also a marked difference between inherent want of jurisdiction to entertain a matter and the irregular exercise of it. The jurisdiction of a Court depends upon the pecuniary and territorial limits laid down by law and also on the subject-matter, while the doctrine of res judicata operates on the decision of a Court in a suit, or other proceedings which the Court has inherent jurisdiction to entertain.
9. Mr. Chidambaram also relied on a Division Bench decision of the Calcutta High Court in Mohesh Chandra Das v. Jamiruddin Molah I.L.R. 28 Cal. 324 where the Court held that the term "jurisdiction" in Section 578 of the Civil Procedure Code, 1882 only means jurisdiction with respect to pecuniary, territorial or subject-matter of the suit and it does not mean local authority of the Court to entertain the suit. Reliance is also placed on the Division Bench decision of Kerala High Court in Panthalakunnummal Pillutty's daughter Kunheem Umma v. Puthalatha Balkrishnan Nair where the Court after referring to the Full Bench decision of Calcutta High Court in Sukh Lal v. Chand (1906) I.L.R. 33 Cal. 68 held that the word "jurisdiction" meant the authority which a Court has to decide matters that are litigated before it or to take cognizance of matters presented in a formal way for its decision. The jurisdiction of a Court may be restricted by a variety of circumstances. The question of jurisdiction has to be considered with reference to the value, place and nature of the subject matter. The classification into territorial jurisdiction, pecuniary jurisdiction and jurisdiction over the subject-matter is obviously of a fundamental character. The general rule is that if the Court rendering a judgment suffers from want of jurisdiction in respect of any one of the above matters its judgment is a nullity and may be ignored. Relying upon the aforesaid decisions Mr. Chidambaram urged that the expression "jurisdiction" in Section 9A is used in a narrow sense that is the Court's authority to entertain the suit at the threshold. He submitted that the suit might be barred due to non-compliance of certain provisions. However, from this it does not follow that the non-compliance with the provision is a defect which takes away the inherent jurisdiction of the Court to try a suit or pass a decree.
10. Per contra, Dr. Tulzapurkar submitted that, the term "jurisdiction" in Section 9A of the C.P.C. is used in wider sense and is not used in a narrow sense as being restricted to pecuniary jurisdiction or territorial jurisdiction or subject-matter. Under Section 9A the Court has to decide not only whether it can act or not but also whether it is prevented from acting by reason of any legal bar even though it may have pecuniary and territorial jurisdiction and jurisdiction over subject-matter. Dr. Tulzapurkar submitted that the word "jurisdiction" is an expression which is used in variety of senses and takes its colour from its context. He relied upon the observations of the Supreme Court in Hari Prasad Mulshankar Trivedi v. V.B. Raju and Ors. :
We are aware of the difficulty in formulating an exhaustive rule to tell when there is lack of power and when there is an erroneous exercise of it. The difficulty has arisen because the word "jurisdiction" is an expression which is used in a variety of senses and takes its colour from its context.
The word "jurisdiction" in Section 9A, according to Dr. Tulzapurkar, is used in the context of an application for interim reliefs and when an objection as to the jurisdiction of the Court: is raised Section 9A requires the Court to decide the issue as to jurisdiction before giving final decision on the application for interim reliefs. He submitted that the word "jurisdiction" is required to be interpreted in a wider sense. If a suit is found not maintainable and the question of maintainability goes to the root of the matter and a decision against such maintainability obviates the necessity of deciding the questions on merits even prima facie for the purpose of granting interim injunction, such question is covered by Section 9A. The learned Counsel referred to the Statement of Objects and Reasons of the Maharashtra Amendment Act, 1969 which according to him indicate clearly that the expression "jurisdiction" in Section 9A is not used in a restrictive or narrow sense.
11. Dr. Tulzapurkar relied upon the decision of the learned Single Judge of this Court (Dharmadhikari, J.) in Union of India v. Laljee Brothers and Ors. . In that case preliminary objections that were raised by the defendants were want of notice under Section 80 of the C.P.C. abatement of the suit, exclusion of jurisdiction under the Income Tax Act, and Section 28 of the Bombay Rent Act. The question before the learned Judge was whether these issues could be fried as preliminary issues. The learned Judge observed at page 29 that "In my mind, the objection based on Section 80 of the Code may not be termed as jurisdictional issue which will debar the Court from entertaining the suit itself, though in a given case the absence of notice might result in dismissal of a suit". The learned Judge, however, again at page 30 observed that "If it is established that in the absence of notice under Section 80 the suit against the Union of India is not maintainable, then also the Court need not enter into the merits of the controversy". Further the learned Judge observed that "If it is established that the suit was already abated and under the law, the Union of India or the auction purchaser cannot be joined as parties to the suit, then also the defendants are entitled to be discharged". Finally the learned Judge at page 30 observed that "As to whether the suit stood abated or not, and whether the Court has jurisdiction to pass an order for joinder of party, are questions which are interrelated. In view of the peculiar facts of this case, the said objections also involve the question of jurisdiction since it has a direct relationship with the objection raised by the Union of India, that a suit itself is either expressly or impliedly barred". The next judgment relied upon by Dr. Tulzapurkar is in the case of Sadhguna Chimanlal Shah (supra). In that case defendants have objected to the jurisdiction of the Court in two different ways; first that the suit is bad without a proper notice under Section 169 of the Maharashtra Co-operative Societies Act, 1960 and the other objection was that the subject-matter of the dispute falls under Section 91 of the said Act. The plaintiffs had asked for interim relief. At the stage of grant of interim relief plaint was amended and limited injunction not to disturb the plaintiffs possession except in due course of law was sought for. The said relief was granted. Against the said order defendants carried the matter in appeal. The Division Bench held that the issues will have to be tried as preliminary issues under Section 9A of the C.P.C.
12. The question thus lies in a narrow compass. Whether the word "jurisdiction" under Section 9A has to be read in a narrow sense confining its application to value, place and nature of subject matter or whether it should be given wider meaning to cover cases where the suit is barred by a statute. As early in 1984 in Heydon's case (1584) 76 E.R. 637 it was said that "for the sure and true interpretation of all statutes in general" four things are to be considered : (i) what was the common law before the making of the Act, (ii) what was the mischief and defect for which the common law did not provide, (iii) what remedy the Parliament hath resolved and appointed to cure the disease of Commonwealth, and (iv) the true reason of the remedy. In R.M.D. Chamarbangwalla v. Union of India the Court approved the rule in Heydon's case and held that "In interpreting an enactment the Court should ascertain the intention of the Legislature not merely from a literal meaning of the words used but also from such matters as the history of the legislation, its purpose and the mischief it seeks to suppress. Though the Court refused to look at the statement of objects and reasons for the purpose of construing the provision, it held that having regard to the history of the legislation, the declared object thereof and the wording of the statute the words had to be given a restricted meaning. In Utkal Contractors and Joinery Pvt. Ltd. and Ors. v. State of Orissa and Ors. . Chinappa Reddy, J. speaking for the Bench observed: ".. A statute is best understood if we know the reason for it. The reason for a statute is the safest guide to its interpretation. The words of a statute take their colour from the reason for it. How do we discover the reason for a statute? There are external and internal aids. The external aids are Statement of Objects and Reasons when the Bill is presented to Parliament, the reports of Committees which preceded the Bill and the reports of Parliamentary Committees. Occasional excursions into the debates of Parliament are permitted. Internal aids are the preamble, the scheme and the provisions of the Act."
13. There is thus ample authority justifying the Court in looking into the history of the legislation not for the purpose of construing the Act, but for the limited purpose of ascertaining the background, conditions and circumstances which led to its passing, the mischief it was intended to prevent and remedy it furnished to prevent such mischief. The statement of objects and reasons also can be legitimately used for ascertaining the object which the legislative had in mind, though not for construing the Act. The statement of objects and reasons of Maharashtra (Amendment) Act of 1969 recites: "The effect of the judgment of the High Court in Institute Indo-Portuguese v. Borges is that the Bombay City Civil Court for the purposes of granting interim relief cannot or need not go into the question of jurisdiction. Sometimes declaratory suits are filed in the City Civil Court without a valid notice under Section 80 of the Code of Civil Procedure, 1908. Relying upon another judgment of the High Court recorded on the 7th September, 1961 in Appeal No. 191 of 1960, it has been the practice of the City Civil Court to adjourn a notice of motion for injunction in a suit filed without such valid notice, which gives time to the plaintiff to give the notice. After expiry of the period of notice, the plaintiff is allowed to withdraw the suit with liberty to file a fresh one. In the intervening period, the Court grants an ad interim injunction and continues the same. This practice of granting injunctions, without going into the question of jurisdiction even though raised, has led to grave abuse. It is therefore proposed to provide that if a question of jurisdiction is raised at the hearing of any application for granting or setting aside an order granting an interim relief the Court shall determine that question first."
14. The statement of objects and reasons specifically refers to the practice followed in the City Civil Court in filing the suits against the Government without giving notice under Section 80 of the C.P.C. and in continuing such interim relief, by permitting the plaintiff to withdraw the suit and file a fresh suit. The Legislature intended to stop this abuse of process and therefore provision of 9A was introduced by the Amendment Act of 1969 requiring the Court to decide the issue of jurisdiction at the time of granting the interim relief or consider the application for vacating the interim relief. Section 9A casts a duty on the Court to forthwith hear the application for granting or setting aside the order granting an interim relief and determine the question of the jurisdiction of the Court wherever it is taken. The decision on the issue of jurisdiction of Court cannot be postponed or adjourned. The object underlying Section 9A is to decide the question about the jurisdiction of the Court at the interlocutory stage itself to avoid hearing of issues on merits even for prima facie purpose of grant of interim reliefs. The terra "jurisdiction" as used in Section 9A will have to be construed harmoniously with Section 9 of the C.P.C. Section 9 lays down that the Courts shall (subject to the provision herein Contained) have jurisdiction to try all suits of a civil nature excepting suits of which their cognizance is either expressly or impliedly barred. The scope of Section 9A will have to be considered keeping in view the provisions of Section 9. In Official Trustee West Bengal and Ors. v. Sachindra Nath Chatterjee and Anr. the Court observed:
From the above discussion it is clear that before a Court can be held to have jurisdiction to decide particular matter it must not only have jurisdiction to try the suit brought but must also have the authority to pass the orders sought for. It is not sufficient that it has some jurisdiction in relation to the subject-matter of the suit. Its jurisdiction must include the power to hear and decide the questions at issue, the authority to hear and decide the particular controversy that has arisen between the parties.
Therefore, it is not sufficient that the Court has territorial or pecuniary jurisdiction or jurisdiction in relation to subject-matter of the suit. If the suit is barred by any statute the Court will have no authority to hear and decide the controversy between the parties. Considering the history of the legislation, the background and the circumstances in which Section 9A was enacted and the object of Section 9A, we are inclined to agree with the submission of Dr. Tulzapurkar that the Legislature has used the word "jurisdiction" in a wider sense and the Court is required to consider the bar to the maintainability of the suit under Section 9A of the C.P.C.
Regarding question (ii):
15. Now we proceed to consider the moot question as to whether the second suit was barred by the provisions of Order II, Rule 2 of the C.P.C. The said rule and its sub-rules and illustration below it read as under:
2. Suit to include the whole claim.
(1) Every suit shall include the whole of the claim which the plaintiff is entitled to make in respect of the cause of action; but a plaintiff may relinquish any portion of his claim in order to bring the suit within the jurisdiction of any Court.
Relinquishment of part of claim.
(2) Whether a plaintiff commits to sue in respect of or intentionally relinquishes, any portion of his claim, he shall not afterwards sue in respect of the portion so omitted or relinquished.
Omission to sue for one of several reliefs.
(3) A person entitled to more than one relief in respect of the same cause of action may sue for all or any of such reliefs; but if he omits, except with the leave of the Court, to sue for all such reliefs, he shall not afterwards sue for any relief so omitted.
Explanation.- For the purposes of this rule an obligation and a collateral security for its performance and successive claims arising under the same obligation shall be deemed respectively to constitute but one cause of action.
Illustration.- A lets a house to B at a yearly rent of Rs. 1200. The rent for the whole of the years 1905, 1906 and 1907 is due and unpaid. A sues B in 1908 only for the rent due for 1906. A shall not afterwards sue B for the rent due for 1905 or 1907.
16. A perusal of Order II, Rule 2 of the C.P.C. clearly reveals that this provision applies to cases where the plaintiff omits to sue portion of the cause of action to which such a suit is based either by relinquishing the cause of action or by omitting a part of it. The provision has, therefore, no application to cases where the plaintiff bases his suit on separate and distinct causes of action and chooses to relinquish one or the other of them. In such a case, it is always open to the plaintiff to file a fresh suit on the basis of a distinct cause of action which he may have so relinquished. In the case of Mohammad Khalil Khan v. Mahbub Ali Mian (1948) 75 I.A. 121 the Privy Council laid down the test to be applied in cases falling under Order II, Rule 2 as follows (at page 66):
The principles laid down in the cases thus far discussed may be thus summarized: (1) The correct test in cases falling under Order 2, Rule 2 is "whether the claim in the new suit is, in fact, founded on a cause of action distinct from that which was the foundation for the former suit. Moonshee Buzloor Ruheen v. Shumsoonissa Begum (1867) 11 Moo Ind. App. 551 (2). The cause of action means every fact which will be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment Read v. Brown (1889) 22 Q.B.D. 128 (3) If the evidence to support the two claims is different then the causes of action are also different Brunsden v. Humphrey (1884) 14 B.D. 141 (4). The causes of action in the two suits may be considered to be the same if in substance they are identical (Brunsden v. Humphrey), (5) The cause of action has no relation whatsoever to the defence that may be set up by the defendant, nor does it depend on the character of the relief prayed for by the plaintiff. It refers "to the media upon which the plaintiff asks the Court to arrive at a conclusion in his favour; Muss Chanel Kour v. Partap Singh (1887-88) 15 I.A. 856 (PC), (6). This observation was made by Lord Watson in a case under Section 43 of the Act of 1882 (corresponding to Order 2, Rule 2) where plaintiff made various claims in the same suit.
17. In Kewal Singh v. Mt. Lajwanti the suit was filed on three distinct causes of action under Section 14A(1), and 14(1)(e) and (f). However, the cause of action relating to Section 14(1)(e) and (f) was given up and subsequently the landlady sought amendment seeking revival of cause of action based on Section 14(1)(e). Following the decision in Privy Council in the case of Mohammad Khalil Khan (supra) the Court held (at page 164):
Applying the aforesaid principles laid down by the Privy Council we find that none of the conditions mentioned by the Privy Council are applicable in this case. The plaintiff had first based her suit on three distinct causes of action but later confined the suit only to the first cause of action namely the one mentioned in Section 14A(1) of the Act and gave up the cause of action relating to Section 14(1)(e) and (I). Subsequently, by virtue of an amendment she relinquished the first cause of action arising out of Section 4A(1) and sought to revive her cause of action based on Section 14(1)(e). At the time when the plaintiff relinquished the cause of action arising out of Section 14(1)(e) the defendant was not in the picture at all. Therefore, it was not open to the defendant to raise any objection to the amendment sought by the plaintiff. For these reasons, we are satisfied that the second amendment application was not barred by the principles of Order 2, Rule 2 of the C.P.C. and the contention of the learned Counsel for the appellant must fail.
18. Order II, Rule 2 requires that the cause of action in the earlier suit must be the same on which the subsequent suit is based and unless there is identity of causes of action in both the suits the bar of Order II. Rule 2 will not get attracted. If there is recurring cause of action or there is fresh cause of action and if the plaintiff is pursuing the suit on such cause of action the bar under Order II, Rule 2 would not be attracted. In this connection we may refer to a recent decision of the Supreme Court in Bengal Waterproof Ltd. v. Bombay Waterproof Mfg. Co. 1997 P.T.C. 17. In that case the plaintiff was the proprietor of a registered trade mark "DUCK BACK" and also the owner of the copyright in the artistic design of the word "DUCK BACK" registered under the Copyright Act. The defendants started manufacturing and marketing similar products under the trade mark "DACK BACK" which phonetically and visually resembled the plaintiffs trade mark resulting in confusion amongst consumers and amounted to passing off of plaintiffs goods, as the goods of the defendants. The plaintiffs therefore filed suit in the City Civil Court at Hyderabad for infringement of registered trade mark "DUCK BACK" and prayed for permanent injunction on that basis. The City Civil Court dismissed the suit on the ground that the defendants had not infringed the plaintiffs trade mark "DUCK BACK" since the defendants were trading in their own name "DACK BACK" and, therefore, the reliefs as prayed for in the plaint, were not maintainable and could not be granted. After dismissal of the suit defendants continued with the manufacture and sale of the product under their trade mark "DACK BACK". The plaintiff filed a fresh suit for perpetual injunction. The suit was dismissed on the ground that it was barred by Order II, Rule 2. The Supreme Court while setting aside the said order held:
The aforesaid averments in the plaint clearly show that the present suit is not based on the same cause of action on which the earlier suit was based. The cause of action for filing this present second suit is the continuous and recurring infringement of plaintiffs' trade mark by the defendants continuously till the filing of the present second suit. We asked the learned Counsel for the defendants as to whether pending the suit and at present also the defendants are trading in the offending goods, namely bearing the mark "DACK BACK" and he informed us that "defendants even at present are carrying on this business. Therefore, pending the second suit all throughout and during the pendency of these proceedings the defendants have carried on the business of trading in the commodity waterproof raincoats "DACK BACK". It is obvious that thus the alleged infringement of plaintiffs trade mark "DUCK BACK" and the alleged passing off action on the part of the plaintiffs goods has continued all through-out uninterrupted and in a recurring manner. It is obvious that, such infringement of a registered trade mark carried on from time to time would give a recurring cause of action to the holder of the trade mark to make a grievance about the same and similarly such impugned passing off actions also would give a recurring cause of action to the plaintiff to make a grievance about the same and to seek appropriate relief from the Court. 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 afresh 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 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 licence to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts. We posed a question to the learned Counsel for the defendants as to whether after the disposal of the earlier suit if the defendants had suspended their business activities and after a few years had resumed the same and had started selling their goods under the trade mark DACK BACK by passing them off, the plaintiff could have been prohibited and prevented by the bar of Order 2, Rule 2, Sub-rule (3) from filing a fresh suit in future which such future infringement or passing off took place. He rightly and fairly stated that such a suit would not be barred. But his only grievance was that whatever was the infringement or passing off alleged against the defendants in 1980 had, according to the plaintiff, continued uninterrupted and, therefore, in substance the cause of action in both the suits was identical. It is difficult to agree. In cases of continuous causes of action or recurring causes of action bar of Order 2, Rule 2, Sub-rule (3) cannot be invoked. In this connection it is profitable to have a look to Section 22 of the Limitation Act, 1963. It lays down 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. As act of passing off is an act of deceit and tort every time when such tortuous act or deceit is committed by the defendant the plaintiff gets afresh cause of action to come to the Court by appropriate proceedings. Similarly infringement of a registered trade mark would also be continuing wrong as so long as infringement continues. Therefore, whether the earlier infringement has continued or a new infringement has taken place cause of action for filing afresh suit would obviously arise in favour of the plaintiff who is aggrieved by such fresh infringements of trade mark or fresh passing off actions alleged against the defendants. Consequently, in our view even on merits the learned Trial Judge as well as the learned Single Judge were obviously in error in taking the view that the second suit of the plaintiff in the present case was barred by Order 2, Rule 2, Sub-rule (3) of the C.P.C.
(emphasis supplied)
19. In the light of the principles laid down by the Privy Council and affirmed by the Supreme Court can it be said that the suit of the plaintiffs is barred by Order II, Rule 2 of the C.P.C.? The plaintiffs filed the suit in Delhi High Court for infringement of design and for passing off as also unfair competition. Primary relief claimed in that suit was injunction restraining the application of the design articles in question (toothbrushes) for the purpose of sale and by way of ancillary relief, mandatory orders including deactivation or handing over of moulds, dies and casts and other material used for applying design on the offending articles were claimed. The present suit of the plaintiff is based on the infringement of their copyright and relief has been claimed in that respect. The cause of action in the present suit is importation of infringing copy (moulds) into India. According to the plaintiffs it is only in August, 1999 they acquired knowledge of the existence of Bombay mould. In fact the learned Trial Judge has recorded a prima facie finding of fact that mould has been imported in Bombay in 1999. Thus the cause of action in the present suit has accrued much after the filing of the Delhi Suit. The issues involved in Delhi Suit are different from the issues involved in the present suit. The evidence in the Delhi Suit is entirely different from the evidence in the present suit. The Delhi Suit was based upon an action for design infringement for which the evidence required is a copy of the design registration. In respect of passing off the evidence to establish the right is advertisements and sale of toothbrushes of the plaintiffs. In a copyright action the evidence will be totally different. In any event every fresh act of importation of a fresh mould would give to the plaintiffs under Section 51 read with Section 2(m) of the Copyright Act, 1957. In the facts of the present case, admittedly the cause of action upon which the plaintiffs have sued is different and distinct from the cause of action in the Delhi proceedings. As observed by the Supreme Court in Bengal Waterproof Ltd.'s case whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach of such trademark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. The ratio of this judgment is clearly applicable to the facts of the present case. It is, therefore, not possible to sustain the finding of the learned Single Judge that the suit of the plaintiffs was barred by Order II, Rule 2.
Regarding question (iii):
20. Having held that the suit is not barred under Order II, Rule 2 of the C.P.C. the question of the said suit being an abuse of process of law really does not survive. Dr. Tulzapurkar, however, urged that if one looks into the material on which the Delhi Suit was filed, it is clear that cause of action was available to the plaintiffs when the plaintiffs discovered that the defendants Pepsodent Popular toothbrush were available in the market and that by reason of sale of said Pepsodent Popular toothbrush, plaintiffs rights were allegedly violated. He submitted that the plaintiffs could have also claimed infringement of copyright in Delhi Suit. Moreover, the plaintiffs chose not to agitate violation of copyright in that suit and when they could not succeed in getting interim relief they moved the Court at Baroda and thereafter this Court. This conduct of the plaintiffs, according to Dr. Tulzapurkar, amounts to abuse of process of law. Dr. Tulzapurkar relied upon the decision of the Supreme Court in the case of State of U.P. v. Nawab Hussein . We are unable to accept the submission of the learned Counsel. In Nawab Hussein's case the Supreme Court was concerned with a question whether the suit was barred by res judicata. There the petitioner who was dismissed from service filed a writ petition for quashing the disciplinary proceedings on the ground that he was not afforded a reasonable opportunity to meet the allegations against him and the action taken against him was mala fide. The Petition was dismissed. Thereafter he filed a suit in which he challenged the order of dismissal, on the ground, inter alia, that he had been appointed by the I.G.P. and that the Dy. I.G.P. was not competent to dismiss him by virtue of Article 311(1) of the Constitution. The Supreme Court held that the suit was barred by the principles of constructive res judicata. Thus the Supreme Court was dealing with a case where the previously instituted proceedings and the proceedings in which a decision was given were in respect of the same cause of action i.e. dismissal from service. The said decision has no application to the facts of the present case. In the present case the suit is based on totally different cause of action and the basis, of the said suit is importation of moulds into Bombay in 1999. In the circumstances it is difficult to accept the argument that the proceedings in the said suit amount to abuse of process of law.
21. In the result Appeal succeeds. Impugned judgment and order of the learned Trial Judge is set aside. The suit is restored to file. The Trial Court shall hear and decide the Notice of Motion on merits as expeditiously as possible and preferably within a period of 4 months. All contentions of the parties on merits are left open.
On the request of the learned Counsel for the respondents operation of this order is stayed for a period of six weeks.
Certified copy expedited.