Madras High Court
M/S.Minister White Clothing vs K.R.Nagarajan
Author: R.Subramanian
Bench: R.Subramanian
A.No.2213 of 2021 in CS No.114 of 2010
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on Delivered on
04.08.2021 17.08.2021
CORAM
THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN
Application No.2213 of 2021
in CS No.114 of 2010
M/s.Minister White Clothing,
(A Unit of OTTO Clothing Pvt. Ltd.)
No.1, Pinjala Subramaniam Street,
Thyagaraya Nagar, Chennai 600 017
Rep by its Director, S.Pothiraj ... Applicant/Plaintiff
Vs.
K.R.Nagarajan ... Respondent / Respondent
Prayer: Petition filed under Order XIV Rule 8 of the Original Side Rules,
read with Order VI Rule 17 of the Code of Civil Procedure, praying to
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A.No.2213 of 2021 in CS No.114 of 2010
permit the Applicant/Plaintiff to amend the plaint in para 23 so as to include
the prayer as “For Permanent injunction restraining the defendant by itself,
its agents, servants, or any one claiming through it from in any manner
infringing the Plaintiff's Trade Mark “Minister White” by using “Minister
White” or any other mark or marks which are in any way identical or
deceptively similar or colourable imitation of the plaintiff's registered
trademark”.
For Applicant : Ms.T.G.Niranjana
for M/s. Surana & Surana
For Respondent : Mr.N.Shrivatsav
for Mr.M.R.Gokulakrishnan
ORDER
This application has been filed seeking amendment of the plaint to incorporate prayer for infringement of the Trademark of the plaintiff. 2/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010
2. The suit was originally filed by M/s.New Look Textiles, as a passing off action seeking an injunction restraining the defendant from using the plaintiff’s trademark ‘Minister White’ written in a particular font in English. The plaint alleges that an application for registration of the said mark is pending. The defendant applied for registration of a deceptively similar trademark ‘Minister Cotton’ written in a particular style and font during July 2009. On coming to know about the application of the defendant, the plaintiff sent a cease and desist notice to the defendant on 22.12.2009. Since the defendant sent a reply notice on 23.01.2010 refusing to comply with the demand of the plaintiff, the plaintiff came up with a suit for injunction claiming that the defendant is attempting to pass of its goods as that of the plaintiff’s by adopting a deceptively similar trademark.
3. During the pendency of the suit, the plaintiff was able to obtain registration of the mark ‘Minister White’ in Registration No.1685561. Thereafter, it appears that the original plaintiff M/s. New Look Textiles, had 3/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 assigned the right in the trademark namely ‘Minister White’ in favour of M/s.New Look Garments (I) Private Limited, under a deed of assignment dated 31.03.2011. And another deed of assignment dated 29.08.2014, the assignee viz. M/s. New Look Garments India Private Limited, had assigned the trademark ‘Minister White’ bearing No.1685561 in Class 25 and ‘Minister White’ bearing No.2747588 in Class 24, to the partnership firm M/s.Minister White Apparels. The said partnership firm assigned the said trademark to the present plaintiff under a deed of assignment dated 21.05.2019.
4. Upon such assignment, the present plaintiff sought to substitute itself in the place of the original plaintiff M/s.New Look Textiles, and the said application for substitution in Application No.6609 of 2019, was allowed by this Court on 10.09.2019. The plaintiff would now seek to amend the plaint to incorporate the prayer for infringement of the trademark on the ground that it is entitled to sue for infringement by virtue of acquisition of proprietary rights over the trademark ‘Minister White’. 4/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010
5. This attempt of the plaintiff is stoutly resisted by the defendant/respondent contending that the application itself is belated. It is also contended that the plaintiff cannot convert a common law suit of passing off into a statutory suit for infringement.
6. Heavy reliance is placed by the defendant on the judgment of this Court in Maya Appliances v. Urooj Ahmed Lords Enterprises (India), reported in 2017 (1) LW 417, wherein a Hon’ble Single Judge of this Court had taken the view that a suit for passing off which is one under common law cannot be converted into a suit for infringement which is a statutory remedy.
7. I have heard Ms.T.G.Niranjana, learned counsel appearing for M/s.Surana & Surana for the applicant and Mr.N.Shrivatsav, learned counsel appearing for Mr.M.R.Gokulakrishnan, appearing for the respondent.
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8. Ms.T.G.Niranjana, learned counsel appearing for the applicant/plaintiff would vehemently contend that the application for amendment having been filed prior to the commencement of trial, the Courts will have to adopt a liberal approach. She would also point out that the prayer which is sought for was not available to the original Plaintiff at the time of the institution of the suit as the application for registration was only pending. Contending that introduction of a prayer based on a subsequent cause of action has always been permitted by the Court. The learned cousel would also point out that this Court had even earlier in A.Abdul Karim Sahib v. A.Shanmugha Mudaliar, reported in (1967) 80 LW 414, held that an amendment seeking to incorporate the relief of infringement of a trademark in a passing of action is permissible. She would also rely upon the judgment of the Division Bench of the Delhi High Court in Usha International and another v. Usha Television Limited, reported in 2002 SCC online Del 306, wherein the Delhi High Court had permitted such amendment. It is also pointed out that the decision of the Delhi High Court 6/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 is based on the judgment of this Court in Lydia Margaret Santhanam v. David Thamburaj, reported in (1966) 1 MLJ 408 and the judgment of a Full Bench of this Court in Subramaniam v. Sundaram, reported in (1963) 1 MLJ 113. Reliance is also placed on a judgment of mine in ITC Limited v. Maurya Hotel (Madras) Pvt Ltd, in Application No.2209 of 2021 dated 22.07.2021.
9. Contending contra Mr.N.Shrivatsav, learned counsel appearing for the respondent/defendant would submit that the plaintiff had obtained a registration even in 2011, but did not choose to seek to incorporate the prayer for infringement till 2021. He would also contend that the suit was posted for trial and after taking adjournments, the plaintiff has come up with this application. Therefore, the proviso to Order VI Rule 17 stood attracted and hence the application for amendment cannot be allowed. Drawing my attention to the judgment of this Court in Maya Appliances v. Urooj Ahmed Lords Enterprises (India), reported in 2017 (1) LW 417, Mr.N.Shrivatsav, would contend that the suit based on the common law remedy of passing off 7/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 cannot be converted into a suit for infringement which is a statutory suit.
10. I have considered the rival submissions.
11. The power to allow amendment is very wide and is only subject to a very few restrictions including the one in proviso to Order VI Rule 17 which was introduced by the Civil Procedure Code Amending Act in the year 2002. The power to amend includes even the power to take note of subsequent events. A Full Bench of this Court in Subramaniam v. Sundaram, reported in (1963) 1 MLJ 113, had held that the Court can take note of subsequent events and the Court has the discretion under its inherent powers to adjust the rights of the parties on the basis of events happening after the starting of the action. Therefore, the power of the Court to grant an amendment of plaint based on subsequent events is well recognised and is no longer res integra.
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12. In A.Abdul Karim Sahib v. A.Shanmugha Mudaliar, reported in (1967) 80 LW 414, Hon’ble Mr.Justice Ramaprasada Rao, as he then was, had considered a similar application for amendment wherein the plaintiff sought for incorporating the prayer for permanent injunction based on infringement of trademark which the plaintiff obtained after the filing of the suit. After considering the law relating to amendment and the judgment of the Hon’ble Supreme Court in Nichalbhai v. Jaswantilal, reported in AIR 1966 SC 997, this Court held as follows:
“Having regard to the above well-accepted judicial pronouncements, I am of the opinion that the supervening event of registration of the trade mark under the Trade and Merchandise Marks Act, 1958, is a factor which I can take note of, and on that basis, allow the amendment prayed for, in the interests of justice. Apart from it, this rule of amendment of pleadings is an essential rule of justice, equity and 9/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 good conscience, and I am satisfied that the alternative plea that is sought to be raised by the petitioner in the amendment petition is only by way of expatiating his rights which he has secured by statute, whilst at the same time asking for one and the same relief originally prayed for namely, a permanent injunction against the defendant restraining him from imitating his trade mark. I do not think that the learned District Judge is right when he observed that the original cause of action is different from the cause of action now sought to be introduced by this amendment. I am also of the opinion that no prejudice would be caused to the defendant who is already opposing the main suit, namely, the action for passing off. Whatever evidence the defendant can have in the suit for passing off is certainly available to him in the suit for infringement 10/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 as well. As Rajagopala Ayyangar, J., has said the fundamental principles in both the actions, that is action for passing off and action for infringement, are almost similar. Above all by allowing the amendment, multiplicity of suits are avoided; and this has to be done as pointed out by the Supreme Court. In this view, I set aside the order of the learned District Judge and allow the Civil Revision Petition, but in the circumstances no costs.”
13. Reference could also be made to a judgment of this Court in P.L.Anwar Basha v. M.Natarajan, reported in AIR 1980 Mad 56, wherein this Court had after referring to Kerly’s ‘Law of Trade Marks and Trade Names’ concluded that while a Writ for infringement could be issued before registration of the mark provided that registration has been applied for, since registration is dated back to the application, a suit which combines both actions for infringement and passing off would be maintainable. 11/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 However, the said judgment did not deal with the scope of the power of the Court to allow an amendment by which the plaintiff could be permitted to include a prayer for infringement based on a registration obtained after the institution of the suit.
14. From the above, it could therefore be seen that in A.Abdul Karim Sahib v. A.Shanmugha Mudaliar, reported in (1967) 80 LW 414, Hon’ble Mr.Justice Ramaprasada Rao, as he then was, had taken the view that the Court has the power to allow an amendment to incorporate a prayer for infringement based on subsequent registration in a suit for passing off which is already pending. However, in Maya Appliances v. Urooj Ahmed Lords Enterprises (India), reported in 2017 (1) LW 417, Hon’ble Mr.Justice M.Sundar, had taken the view that a passing of action being a common law remedy cannot be converted into a suit for infringement. This conclusion of the learned Judge is based on the judgment in Premier Distilleries P. Ltd. V. Sushi Distilleries, reported in (2001) 3 LW 585. Unfortunately, the judgment of the Hon’ble Mr.Justice Ramaprasada Rao, as 12/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 he then was, in A.Abdul Karim Sahib v. A.Shanmugha Mudaliar, was not brought to the notice of the Hon’ble Mr.Justice M.Sundar, when he decided Maya Appliance’s case.
15. In Premier Distilleries P. Ltd. v. Sushi Distilleries, reported in (2001) 3 LW 585, the Court was not concerned with the power of the Court to allow amendment of plant. The facts therein are as follows:
The plaintiff which has its place of business at Bangalore had sought leave to institute a suit in this Court claiming an injunction against passing off by the defendant, which is a company having its place of business at Pondicherry. It was alleged that a part of the cause of action for the suit arose in Chennai, as the plaintiffs application for registering it as the owner of a trade mark "Royal Gold Cup" whisky was filed before the Registrar of Trade Marks at Madras on 18.3.1998. Leave was granted on 4.1.2001. Upon appearance, the defendant sought for revocation of leave which was denied. The defendant filed an Appeal before the Division Bench, wherein the plaintiff contended that upon registration the trademark it will date back to 13/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 the date of application and therefore the fact that the plaintiff had filed an application for registration with the trademark office at Madras would entail the plaintiff to maintain the suit for passing off at Madras. While rejecting the above contention, the Division Bench held as follows:
“10. The argument advanced that registration if granted would date back to the date of application and that the plaintiff would have the right to seek amendment of the plaint to seek relief on the ground of infringement as well, is wholly irrelevant so far as the cause of action for bringing a suit for passing off is concerned. While it may be convenient to the plaintiff to institute a suit in a court where he may later on be able to bring a suit for infringement of the trade mark, that convenience of the plaintiff is in no way relevant for deciding as to whether a cause of action for filing a suit for passing off can be said to have arisen in a place where, the deceit alleged to have been practised by the defendant had in fact, not 14/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 been practised within the jurisdiction of the court in which the suit is brought.
11. The cause of action is not to be confused with convenience. Many things may be convenient to a plaintiff, but they do not become part of bundle of facts requiring to be established for obtaining the decree in the suit. The argument advanced for the plaintiff is also far fetched. It seeks to presume that the plaintiff in a suit for passing of who has applied for registration of the mark will pursue the effort to have the trade mark registered;
that such effort will be successful; that such an event will occur when the suit is still pending; that the suit will continue to pend till the registration is effected; that plaintiff would be seeking an amendment to add a prayer with regard to infringement and that the plaintiff would be ultimately in a position to establish infringement. The cause of action is something which has occurred and 15/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 which gives a right to take action. The cause must precede the action and not follow it. The events contemplated by the plaintiff as being capable of occurring at a point of time in the future, merely on account of those possibilities, will not constitute a cause of action for relief for securing which, those events are not materially relevant.”
16. The Division Bench did not consider the scope of power of the Court to allow an amendment in a suit for passing off based on a subsequent registration. What was denounced by the Division Bench was the claim that this Court had jurisdiction on the assumption that the plaintiff would be successful in getting the mark registered and the plaintiff could sue for infringement thereafter. While considering the fact whether this Court had jurisdiction to entertain a suit for passing off, the Division Bench held that the pendency of the application for registration before the trademark registry 16/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 at Madras will not confer jurisdiction of this Court to entertain a suit for passing off, it is in that sense, in my considered opinion, the Division Bench said that the cause must proceed the action and not follow it. I am therefore of the considered opinion that the judgment of the Division Bench in Premier Distilleries P. Ltd, cannot be taken as a precedent to conclude that the plaintiff cannot be allowed to incorporate a prayer for infringement in a pending suit for passing off, after having obtained a registration subsequent to the filing of the suit.
17. The real test as pointed out by the Hon’ble Supreme Court in Nichalbhai v. Jaswantilal, reported in AIR 1966 SC 997, would be whether the plaintiff would be in a position to bring in another suit for infringement, if the amendment is refused. The object of the Rule for allowing amendment of the plaint is to avoid multiplicity of proceedings. Insofar as the suits for infringement or passing off are concerned they belonged to the category of suits which have continues cause of action. Every sale made or every infringement would constitute a new cause of action for the plaintiff. This 17/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 has been so laid down by the Hon’ble Supreme Court in Bengal Waterproof Limited v. Bombay Waterproof Manufacturing Company and another, reported in (1997) 1 SCC 99. While considering the bar under Order II Rule 2 of the Code of Civil Procedure, the Hon’ble Supreme Court concluded that a cause of action in these kinds of suits is a recurrent cause of action and therefore, the bar under order II Rule 2 would not apply.
18. Hon’ble Mr.Justice M.Sundar, in Maya Appliances v. Urooj Ahmed Lords Enterprises (India), reported in 2017 (1) LW 417, had taken the view that a suit for passing off which is a common law remedy cannot be converted into a suit for infringement by incorporating a prayer for infringement on the basis of subsequent registration, which runs counter to the judgment of the Hon’ble Mr.Justice Ramaprasada Rao, in A.Abdul Karim Sahib v. A.Shanmugha Mudaliar, reported in (1967) 80 LW 414. Judicial discipline requires me to refer the matter to a Larger Bench for resolution of the conflict.
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19. I therefore direct the Registry to place the papers before the Hon’ble The Chief Justice for appropriate orders.
17.08.2021 Index: Yes Internet: Yes Speaking order jv 19/20 http://www.judis.nic.in A.No.2213 of 2021 in CS No.114 of 2010 R.SUBRAMANIAN,J.
jv Pre Delivery Order Application No.2213 of 2021 in CS No.114 of 2010 17.08.2021 20/20 http://www.judis.nic.in