Delhi High Court
Cadbury Uk Limited & Anr vs Lotte India Corporation Ltd on 30 July, 2019
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 30th July, 2019
+ CS(COMM) 1259/2016
CADBURY UK LIMITED & ANR ..... Plaintiffs
Through: Mr. Chander M. Lall, Sr. Adv.
With Mr. Karan Bajaj, Ms.
Jyotideep Kaur, Ms. Nancy Roy
& Mr. K. Roda, Advs.
Versus
LOTTE INDIA CORPORATION LTD ..... Defendant
Through: Mr. Gaurav Pachnanda, Sr.
Adv. With Mr. Mohit Goel, Mr.
Sidhant Goel, Ms. Eshna
Kumar, Mr. Aditya Goel & Mr.
Deepankar Mishra, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.12329/2017(of the defendant under Section 10 CPC) & IA
No.3474/2019(u/O.VI R.17 CPC filed by the plaintiffs)
1. IA No.12329/2017 of the defendant filed under Section 10 CPC
and IA No.3474/2019 of the plaintiffs for amendment of the plaint are
for consideration.
2. Though, the senior counsel for the plaintiffs suggested that the
application filed earlier in point of time being the application under
Section 10 of the CPC, be taken up for consideration first, but after
hearing the Senior Counsel for the defendant on the said application to
some extent, I am of the opinion that once an application for
amendment of the plaint is pending consideration, even if filed after
the filing of an application under Section 10 of the CPC, the
amendment application should be decided first, inasmuch as the
CS(COMM) No.1259/2016 Page 1 of 9
applicability of Section 10 will have to be seen in the light of the
amended plaint.
3. The Senior Counsels have been heard on the application of the
plaintiffs under Order VI Rule 17 CPC.
4. The plaintiffs instituted this suit for permanent injunction, to
restrain the defendant from passing off its confectionary as that of the
plaintiffs under the mark CHOCLAIRS, by use of the marks
CHOCLAIRS/PARRY'S CHOCLAIRS/LOTTE CHOCLAIRS or any
other mark similar to the trade mark CHOCLAIRS of the plaintiffs.
5. The plaintiffs now want to amend the plaint to, in addition to
the relief on the ground of passing off, also claim reliefs already
claimed of injunction and ancillary reliefs, on the ground of
infringement by the defendant of the mark of the plaintiffs. It is
pleaded, that during the pendency of the suit, the mark CHOCLAIRS
of the plaintiff no.1, has been registered.
6. Considering that the amendment sought is to plead an event
subsequent to the institution of the suit and that issues in the suit have
not been framed as yet and the trial has not begun, the amendments
sought are found to be relevant to the adjudication of the matter in
controversy and are allowed.
7. IA No.3474/2019 is allowed and disposed of.
8. With respect to the application under Section 10 of the CPC, the
Senior Counsel for the defendant has contended, (i) that the defendant,
in June, 2013, instituted a suit against both the plaintiffs, in the High
Court of Madras, to restrain the plaintiffs herein from infringing the
defendant's trade mark PARRY'S CHOCLAIRS, by use of
CS(COMM) No.1259/2016 Page 2 of 9
CHOCLAIRS or any other trade mark containing the word
CHOCLAIRS, in respect of chocolates, confectionary, candies
including toffees and from in any other manner passing off their goods
as those of defendant, and for ancillary reliefs; (ii) no ex parte order
sought was granted to the defendant in the Madras Suit but summons
thereof were ordered to be issued; (iii) the plaintiffs, immediately on
receipt of the summons of the Madras suit, instituted the present suit
in this Court, for restraining the defendant as aforesaid, from passing
of its goods as that of the plaintiffs and which suit now stands
amended to also include the reliefs on the ground of infringement; (iv)
that in the present suit filed by the plaintiffs herein, ex parte injunction
was granted to the plaintiffs and which ex parte injunction has since
been confirmed and has attained finality; (v) owing to the said interim
injunction, the defendant stands restrained from using the mark
CHOCLAIRS or any other mark containing the word CHOCLAIRS;
and, (vi) that though the defendant in its written statement filed to the
present suit did not take any plea of Section 10 of CPC, but
subsequently, after about four years of the institution of the present
suit, in the year 2013, has filed IA No.12329/2017 for stay of
proceedings in this suit.
9. The Senior Counsel for the defendant has referred to
Durgaprasad Vs. Kantichandra Mukherji AIR 1935 Cal 1, Suraj
Industries Vs. Manek Industries (1991) 11 PTC 141, Xpress
Logistics Service Vs. Inditex Trent Retail India (P) Ltd. 243 (2017)
DLT 510, and Aspi Jal Vs. Khushboo Rustom Dadyburjor 2013 (4)
CS(COMM) No.1259/2016 Page 3 of 9
SCC 333, to contend that Section 10 of the CPC is attracted to the
present situation and is mandatory.
10. The Senior Counsel for the defendant has also taken me through
the written statement filed by the plaintiffs herein in the Madras suit,
to show that the plaintiffs therein have taken a plea of the Madras suit
being required to be stayed in view of the subsequent filing of the
present suit.
11. Per contra, the Senior Counsel for the plaintiffs has contended,
(i) that the plea of Section 10 of the CPC has been taken after five
years of the institution of the present suit; (ii) that in fact the defendant
was proceeded against ex parte in the present suit but subsequently, by
an order of the Supreme Court, got the suit restored to its original
number and is now participating in the same and which explains why
issues have not been framed in the present suit as yet; (iii) that the
defendant also applied to the Supreme Court for transfer of the present
suit to Madras, but vide the order dated 6th October, 2017 the Transfer
Petition (Civil) No.1724/2017 was dismissed by the Supreme Court
(iv) that the defendant had also approached the Supreme Court by way
of SLP(C) No.24206/2017; (v) that the Supreme Court vide order
dated 6th October, 2017 in Civil Appeal No.15866/2017, while
granting liberty to the defendant to contest the suit and restoring the
suit to the position where it was prior to the defendant being
proceeded ex parte, directed this Court to ensure that the trial is
expedited; (vi) that the application under Section 10 of the CPC is in
overreach to the said direction of the Supreme Court; and, (vii) that
Section 10 of the CPC is not even attracted to the Madras suit
CS(COMM) No.1259/2016 Page 4 of 9
inasmuch as in the Madras suit, reliefs have been sought by the
defendant only and no relief has been sought by the plaintiffs and the
plaintiffs cannot be granted reliefs in the Madras suit as sought by the
plaintiffs in the present suit; reliance is placed on Durga Prasad supra
and on Aspi Jal supra in this regard.
12. I have considered the rival contentions.
13. On enquiry, it is informed that both the suits are at about the
same stage i.e., pleadings have been completed and issues have not
been framed.
14. However, while in the present suit, there is an interim injunction
till the disposal of the present suit, restraining the defendant from use
of the subject mark, there is no interim order in favour of the
defendant in the Madras suit. Resultantly, till the disposal of the lis
between the parties, whether by the Delhi Court or by the Madras
Court, it is the defendant herein who stands restrained.
15. Though, I do not agree with the contention of the Senior
Counsel for the plaintiffs, of Section 10 being not attracted owing to
the plaintiffs being not the claimants of the reliefs in the Madras suit,
inasmuch as the test to be applied is of Section 11 of the CPC, and the
language whereof only requires that the Court where the earlier suit is
pending is competent to try the subsequent suit, and which cannot be
disputed in the present case, and whether the decision in the
previously instituted suit acts as res judicata in the subsequent suit,
but for the reasons here-in-after appearing, it is not deemed necessary
to deal in detail with the said aspect.
CS(COMM) No.1259/2016 Page 5 of 9
16. Section 10 of the CPC, though held in several of the judgments
cited at the Bar, to be mandatory, is a procedural Section, enacted in
public interest, inter alia to prevent the parties and the Court at more
than one place being vexed with the same question. A decree passed
in contravention of Section 10 CPC, is not a nullity.
17. In my view, the same cannot be applied pedantically, in all
situations, even when application thereof would result in miscarriage
of justice.
18. I feel, that mandatory application of Section 10 would result in
miscarriage of justice because the same would result in the interim
order against the defendant continuing and which would again be
against the spirit of the various statutes with which the subject is
concerned. Both, plaintiffs as well as the defendant, ought to have
surety/certainty of their affairs and the Court cannot mechanically
contribute to a situation where both continue to carry on business and
invest monies therein, without knowledge of whether they have a right
to subject trade mark or not.
19. It has been held by the Supreme Court in Pukhraj D. Jain Vs.
G. Gopalakrishna (2004) 7 SCC 251 that, a) mere filing of an
application under Section 10 of CPC does not in any manner put an
embargo on the power of the Court to examine the matter on merits; b)
it is not for the litigant to dictate to the Court as to how the
proceedings should be conducted and it is for the Courts to decide
what will be the best course to be adopted for expeditious disposal of
the case; and, (c) that it is always open to the Court to decide the
CS(COMM) No.1259/2016 Page 6 of 9
relevant issues and not keep a suit pending which has been instituted
with an oblique motive and to cause harassment to the other side.
20. Since the interim order has been granted in the present suit, it is
deemed expedient that the proceedings in the present suit be
expedited, as also mandated by the Supreme Court in order dated 6th
October, 2017 aforesaid. There is merit also in the contention of the
Senior Counsel for the plaintiffs, that all the aforesaid facts were in the
knowledge of the Supreme Court while passing the aforesaid orders of
dismissal of the Transfer Petition and directing the trial in the Delhi
suit to be expedited. Allowing the application under Section 10, by
mechanically applying Section 10, would also be in contravention of
the spirit of the said orders.
21. Section 10 is intended to put a stop to the suit at the threshold,
to avoid duplication of proceedings. The defendant having applied
for stay of proceedings after four years of the institution of the present
suit, is not entitled to mandatory application of Section 10 for this
reason as well.
22. Rather, I find it inexplicable as to why the defendant, while
suffering an interim stay in this suit, is also wanting to get the
proceedings in the present suit stayed and which would perpetuate the
interim order in operation against the defendant. Moreover, even after
the Madras suit is decided, if in favour of the defendant, this Court
will still have to consider, whether the interim order is to continue or
not.
23. For all the aforesaid reasons, I do not find any reason to stay the
proceedings in the present suit under Section 10 of the CPC.
CS(COMM) No.1259/2016 Page 7 of 9
24. IA No.12329/2017 is dismissed.
IA No.936/2018(u/O.XXXIX R.2A CPC)
25. This application has been filed by the plaintiffs under Order
XXXIX Rule 2 A of the CPC.
26. The Senior Counsels have been heard thereon as well.
27. The Senior Counsel for the plaintiffs contends that vide ex parte
order dated 8th July, 2013, the defendant, besides being restrained
from manufacturing, selling, marketing, promoting or in any other
manner whatsoever using the marks CHOCLAIRS / PARRY'S
CHOCOLAIRS / LOTTE CHOCLAIRS / CHOCOLAIRS / LOTTE
CHOCOLAIRS, were also restrained from asserting any right to use
and/or also from applying to register or to maintain the applications, or
to register any of the said marks or any other similar mark in violation
of the plaintiffs rights, but the defendant in spite of the said order,
applied to the Registrar of Trade Marks for renewal of the registration
of the mark PARRY'S CHOCOLAIRS.
28. Considering that the defendant, in applying for renewal, was
exercising a statutory right and the purport of the order to be not to so
restrain the defendant from exercising statutory rights and which
would have resulted in an undue benefit to the plaintiff, of thereafter
contending that the registration earlier in favour of the defendant had
also lapsed, I am not inclined to proceed with this application.
29. The application is disposed of.
CS(COMM) No.1259/2016
30. The amended plaint stated to be filed along with the application
for amendment is taken on record and be transposed to Part I File.
CS(COMM) No.1259/2016 Page 8 of 9
31. The defendant to file written statement to the amended plaint
within 30 days.
32. Replication within further 30 days thereafter.
33. List for framing of issues, if any, on 28th November, 2019.
RAJIV SAHAI ENDLAW, J.
JULY 30, 2019 'ak' (Corrected & released on 17th August, 2019) CS(COMM) No.1259/2016 Page 9 of 9