Delhi High Court - Orders
Travellers Exchange Corporation ... vs Celebrities Management Private ... on 5 March, 2020
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
$~1 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 51/2016, IA No.1110/2016(u/O.XXXXIX R.1&2 CPC), IA No.12318/2019(u/S.124 of Trade Mark Act, 1999) TRAVELLERS EXCHANGE CORPORATION LIMITED & ORS ..... Plaintiffs Through: Mr. J.Sai Deepak with Mr. Mohit Goel, Mr. Aditya Goel, Mr. Karmanya Dev Sharma & Mr. R. Abhishek, Advs. versus CELEBRITIES MANAGEMENT PRIVATE LIMITED ..... Defendant Through: Mr. Abhishek Puri with Mr. V.Siddharth & Mr. Manan Gambhir, Advs. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW ORDER
% 05.03.2020 IA No.1814/2020(u/O.VI R.16 CPC) & IA No.1815/2020(u/S.151 CPC)
1. IA No.1814/2020 has been filed for striking off from the written statement to the amended plaint, portions beyond the amendment permitted. IA No.1815/2020 is for suspension of time for filing additional pleading i.e. the replication.
2. The counsel for the plaintiffs has contended that (i) the application of the plaintiff, in this suit for permanent injunction restraining infringement of trade mark, under Section 124 of the Trade Marks Act, 1999 is pending consideration; (ii) in view of Patel Field Marshal Agencies Vs. P.M. Diesels Ltd. (2018) 2 SCC 112, the amendment of the plaint was allowed to take the pleas of invalidity of the registration in favour of defendant; (iii) CS(COMM) 51/2016 Page 1 of 4 that the defendant, in the written statement to the amended plaint has pleaded a large number of other registrations obtained by the defendant, of marks similar/deceptively similar to the mark subject matter of the present suit; (iv) that the pleadings of the plaintiffs in the amended plaint are wide enough to cover besides the registrations pleaded in favour of defendant, also any other registration in favour of the defendant besides the registrations expressly pleaded in the plaint; and, (v) that the plaintiffs will withdraw IA No.1814/2020 on clarification being rendered by this Court that the plaintiffs, while urging the application under Section 124 of the Trade Marks Act, shall also be entitled to argue with respect to the new registrations disclosed by the defendant in the written statement to the amended plaint.
3. The counsel for the defendant has contended that the defendant, in the written statement earlier filed, had pleaded that several other applications for registrations were pending consideration and the registrations since obtained have been pleaded in the written statement to the amended plaint. It is further urged that the plaintiffs, with a click of the mouse could have discovered all the registrations in favour of the defendant i.e. which have been pleaded by the defendant in the written statement to the amended plaint and having not done so, cannot now be permitted to urge, as sought to be done.
4. I have enquired from the counsel for the defendant, whether availability of a particular plea from the information on the internet or otherwise, which is not pleaded, can be ground for dismissal of an application for amendment, to now plead the same. To my knowledge, there CS(COMM) 51/2016 Page 2 of 4 is no such principle.
5. The counsel for the defendant has referred to Micolube India Ltd. Vs. Maggon Auto Centre & Anr. 150 (2008) DLT 458, particularly to paragraph 24 thereof holding as under:-
"In considering this aspect of the matter, it is important to note the submissions made by the learned Counsel for the defendants that when a party comes to Court for an infringement action, then it is duty-bound to conduct a search to ascertain as to whether the defendants have any registration in respect of the trade mark in question. I agree with this submissions made by the learned Counsel for the defendants. It is relevant to note that based on the averments made in the plaint with regard to registration of the trade mark in question, the Court takes a prima facie view at the ex parte stage and decides to grant or not to grant an injunction. It is, therefore, the duty of the plaintiff to state clearly as to whether the defendants have or do not have a trade mark registration in respect of the mark in question and in respect of the impugned goods and services."
6. What is relied upon, has been observed in the context of an application under Order XXXIX Rule 1 and 2 CPC and would have no application while considering a situation as has arisen herein. Once the plaintiff states that its pleadings are wide enough to cover any other registrations in favour of defendant also and the plaintiff is not seeking to file an additional pleading, though an application therefor being IA No.1815/2020 has been filed but not pressed, in my view, expediency requires that the clarification as sought be rendered.
7. I have however enquired from the counsel for the plaintiffs, whether the plaintiffs, in the replication to the written statement to the amended plaint, would take a new plea with respect to the registrations now disclosed by the defendant in its written statement aforesaid. It is felt that if the CS(COMM) 51/2016 Page 3 of 4 plaintiffs do so, the defendant would have no opportunity to respond to the same.
8. The counsel for the plaintiffs states that no new ground with respect to invalidity of the new registrations disclosed, than the grounds which are already taken in the plaint, shall be taken.
9. Thus, clarifying that the plaintiff, in the arguments on the application under Section 124 of the Trade Marks Act shall also be entitled to urge with respect to the trade mark registrations disclosed by the defendants in their written statement to the amended plaint, IA No.1814/2020 and IA No.1815/2020 are disposed of as withdrawn and not pressed.
10. The replication be filed within 30 days.
11. List for framing of issues, if any, and for consideration of the pending applications on 6th August, 2020.
RAJIV SAHAI ENDLAW, J MARCH 05, 2020 „ak‟..
CS(COMM) 51/2016 Page 4 of 4