Calcutta High Court (Appellete Side)
Sony Kabushiki Kaisha vs Mahaluxmi Textile Mills on 27 February, 2020
Author: Hiranmay Bhattacharyya
Bench: Hiranmay Bhattacharyya
1
IN THE HIGH COURT AT CALCUTTA
CIVIL REVISIONAL JURISDICTION
Before:
The Hon'ble Justice Hiranmay Bhattacharyya
C.O. 3008 of 2011
Sony Kabushiki Kaisha
Vs.
Mahaluxmi Textile Mills
For the petitioner : Mr. Debnath Ghosh, Ms. Adreka Pandey,
Mr. Gautam Banerjee......advocates
For the opposite party : Mr. Haradhan Banerjee, Mr. Amitava Pain,
Mr. Nilmoni Das, Mr. Subharangshu Dutta,
Mr. Partha Paratim Mukhopadhyay ....Advocates
Heard on : 20.02.2020
Judgment on : 27.02.2020
Hiranmay Bhattacharyya, J.:
The instant application is at the instance of the plaintiff in a suit for permanent injunction and is directed against an order being no. 97 dated April 30, 2011 passed by the learned Additional District Judge 7th court at Alipore in Title Suit No. 129 of 1997 whereby the application for amendment of plaint was rejected.
The petitioner claims to be the registered proprietor in India of the trade mark "SONY" in respect of electronic goods. The products manufactured by the petitioner with the trade mark "SONY" are available and marketed throughout India. SONY also forms the most distinctive feature of petitioner's corporate name and trading style. Investigation carried out by the petitioner revealed that the opposite party was using the trade mark 2 "SONY" for hosiery goods. The opposite party is marketing and selling the hosiery goods under trade mark "SONY" with the object of deceiving the public and leading them to believe that in purchasing the goods offered for sale by the opposite party they were buying the goods manufactured by the petitioner.
The instant suit was filed sometimes in the year 1997. The petitioner claims that at that point of time the application for registration of the trade mark "SONY" in respect of class of goods manufactured and offered for sale by the opposite party was pending with the Registrar of Trade Marks. The suit was instituted on the ground that the opposite party is passing off the trade mark of the petitioner and a prayer for permanent injunction restraining the opposite party from manufacturing, selling, offering for sell or distributing goods under a mark which is deceptively similar to the petitioner's mark or a colourable imitation of the petitioner's mark "SONY" was made.
The petitioner obtained registration of the trade mark "SONY" in respect of class of goods manufactured and offered for sell by the opposite party during the pendency of the instant suit. Immediately thereafter the petitioner filed an application under Order 6 Rule 17 of the Code of Civil Procedure (for short "the Code") for amendment of the plaint for incorporating the fact of registration of the said trade mark. The petitioner also prayed for addition of a relief in the form of permanent injunction restraining the opposite parties from infringing the petitioner's registered trade mark.
3The Learned Trial Judge by the order impugned rejected the application for amendment of plaint upon holding that when the suit was filed the plaintiff had no cause of action for infringement of trade mark as the application for registration of the trade mark was pending at the time of filing of the suit. The Learned Judge further held that the proposed amendment, if allowed, would change the nature and character of the suit which is not permissible in law.
Being aggrieved, the petitioner preferred the instant application.
Mr. Ghosh, the learned advocate for the petitioner submitted that the proposed amendments, if allowed, will not change the nature and character of the suit as the suit will still remain a suit for permanent injunction. He further submitted that since the petitioner obtained registration of the trade mark subsequent to the filing of the suit, such fact is to be taken note of by the court in order to render complete justice to the parties. By relying on a Full Bench judgment of the Delhi High Court in the case of Carlsberg Breweries versus Som Distilleries and Breweries Ltd. reported at AIR 2019 Delhi 23, Mr. Ghosh submitted that when a composite suit based on two causes of action i.e. a claim for design infringement and for passing off is maintainable, the proposed amendment incorporating the facts relating to infringement of trade mark in a suit for passing off should be allowed. Mr. Ghosh also relied upon the judgements of the Delhi High Court in the case of Usha International and another versus Usha Television Ltd. reported at (2002) 25 PTC 184 4 and Paramveer Singh Sachdeva versus Kohinoor Paints reported at 1997 (40) DRJ in support of his submission that in an action for passing off, the prayer for amendment for incorporating the facts relating to infringement of trade mark in the pleadings should be allowed.
Mr. Haradhan Banerjee, learned advocate for the opposite party submitted that the issues involved in a passing off action and an infringement action are quite different as held by the Hon'ble Supreme Court of India in the case of Ruston and Hornby Ltd. versus Zamindara Engineering Co. reported at AIR 1970 SC 1649 and as such an action for passing off cannot be converted to an infringement action by way of amendment. He further submitted that the petitioner wanted to incorporate a new cause of action by way of amendment which is also not permissible. By relying on the judgments of the Hon'ble Supreme Court of India in the case of Rajkumar Gurawara versus S.K. Sarwagi and Company Private Limited and another reported at (2008) 14 SCC 364 and Bharat Karsondas Thakkar versus Kiran Construction Company and others reported at (2008) 13 SCC 658 Mr. Banerjee submitted that the nature and character of a suit cannot be changed by way of amendment of plaint. Mr. Banerjee further referred to a decision of the Hon'ble Supreme Court of India in the case of Ramdev Food Products (P) Ltd. versus Arvindbhai Rambhai Patel and others reported at (2006) 8 SCC 726 and submitted that the use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off but is the sine qua non in the case of an action for infringement. He, thus, submitted that the nature and character of a passing off action is 5 different from that of an infringement action. He also submitted that the proposed amendments being contradictory and mutually destructive with the original pleadings cannot be allowed to be incorporated by way of amendment. Mr. Banerjee concluded by submitting that even if the prayer for amendment of plaint is allowed by this Court, the same should not be permitted to relate back to the date of the suit and shall be deemed to take effect from the date of filing of amendment application. In support of such submission Mr. Banerjee relied on the judgment of the Hon'ble Supreme Court in the case of Sampath Kumar versus Ayyakannu and another reported at AIR 2002 SC 3369.
I have heard the Learned Advocate for the respective parties and considered the materials on record.
The suit was originally filed as if it was a passing off action. Upon registration of the trade mark under the Trade & Merchandise Marks Act, 1958 a statutory right accrued in favour of the petitioner herein which entitled him to obtain relief in respect of infringement of the registered trade mark. The same transaction of sale of goods by the opposite party using the trade mark "SONY" results in passing off action and an action for infringement of trade mark. The basic facts necessary for an infringement action is already present in the original plaint excepting the fact of registration of the trade mark of the petitioner. The petitioner wanted to avail of such statutory right by applying for amendment of the plaint. Thus the nature and character of the suit will not change after amendment as the basic fact remains unaltered.
6The real dispute between the parties to the suit is what are the rights of the respective parties vis-à-vis the trade mark "SONY". The registration of the trade mark entitled the petitioner to avail of the relief for infringement of trade mark in respect of the same transaction of sale by the opposite party. Thus the proposed amendment is necessary for the purpose of deciding the real controversy between the parties.
It is well settled that the rights of the parties are normally decided on the date of suit. However, if a fact arising after the institution of the suit has a fundamental impact on the relief which the suitor is entitled to, such events must be taken into consideration to render substantial justice to the parties. Registration of the petitioner's trade mark is a subsequent event having a fundamental impact on the relief which the petitioner is entitled to and such event is to be taken into consideration to render substantial justice to the parties.
The registration of the trade mark of the petitioner entitles the petitioner to bring an action for infringement of the same. If the prayer for amendment is refused, the plaintiff may have to bring another suit. The dominant purpose of Order 6 Rule 17 of the Code is to minimise litigation. Thus, the instant amendment application is to be allowed to avoid multiplicity of suits.
It has been held in Usha International (supra) that the law relating to infringement and passing off are fundamentally similar. The supervening event of registration of trade mark under the Trade & Merchandise Marks Act, 1958 is a fact which 7 can be taken note of and on that basis the application for amendment deserves to be allowed.
Even in the case of Ramdev Food Products (supra) it was held that when the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark.
The dispute in the instant suit is whether the mark used by the opposite party in its goods is deceptively similar to the petitioner's mark. The Hon'ble Supreme Court in Ruston (supra) held that the test as to likelihood of confusion or deception arising from similarity of marks are the same both in infringement and passing off actions. Thus, the proposed amendment and the original pleading cannot be said to be contradictory to and mutually destructive of each other. The aforesaid judgment relied upon by Mr. Banerjee does not support the contention of the opposite party.
In Bharat Karsondas Thakkar (supra) the issue before the Hon'ble Supreme Court was whether a consent decree can be challenged in a suit for specific performance of contract. On such facts the Hon'ble Supreme Court held that the proper course of action would have been to challenge the consent decree in a separate suit and the same cannot be done by way of amendment of plaint as it would substantially change the nature and character of the suit for specific performance of contract.
8In the instant case I have already held that the proposed amendment will not change the nature and character of the suit and as such the said decision has no manner of application to the facts of the instant case.
In Rajkumar Gurawara (supra) the plaintiff filed a suit for declaration of title and permanent injunction. Inspite of being aware that a third party is in possession of the suit property, the plaintiff allowed the suit to go on and applied for amendment of plaint for incorporating the prayer for recovery of possession at the stage of argument. On such facts the Hon'ble Supreme Court held that the plaintiff has failed to satisfy the conditions prescribed in the proviso to Order 6 Rule 17 of the Code and as such the prayer for amendment was rejected.
The instant suit was filed in the year 1997. As such the proviso to Order 6 Rule 17 of the Code is not applicable in the instant case. Thus the said judgement has no manner of application to the facts of the instant case.
In Sampath Kumar (supra) the plaintiff instituted a suit for permanent injunction claiming to be in possession of the suit property. An application for amendment of plaint for incorporating the prayer for declaration of title and recovery of possession on the ground of alleged dispossession during the pendency of the suit was filed. Such application was filed ten years after the date of alleged dispossession. The defendant raised an objection against the prayer for amendment on the ground that he has already perfected his title by way of adverse possession. On such facts the Hon'ble Supreme Court held that 9 the prayer for amendment shall be deemed to have been made on the date on which the application for amendment has been filed as the rights accrued in favour of the defendants due to lapse of time should not be allowed to be defeated by allowing such amendment to relate back to the date of filing of the suit.
In the instant case the trade mark of the petitioner was registered during the pendency of the suit. The petitioner applied for amendment immediately after registration of the trade mark without any delay. By legal fiction such registration would relate back to the date of filing of the application for registration of the trade mark. As such the petitioner is entitled to avail of such statutory right with effect from the date of filing of the suit. An exception to the normal rule that once an amendment is allowed it relates back to the date of the filing of the original suit should not be made in the instant case. Thus, the submission of Mr. Banerjee that the proposed amendment should not be allowed to relate back to the date of the suit, cannot be accepted.
However, there is some substance in the submission of Mr. Banerjeee that the tests for deciding the question of maintainability of a composite suit joining two causes of action - one for infringement of a registered trade mark and the other for passing off the plaintiff's goods is different from that of an application for amendment of plaint. Thus, merely because such a composite suit is maintainable as held in Carlsberg (supra) do not necessarily follow that the application for amendment should be allowed automatically.
10The judgment in the case of Paramveer Singh (supra) relied upon by Mr. Ghosh do not have any manner of application to the facts of the instant case as the said judgment laid down a proposition that facts already stated in the original plaint can be elaborated by way of amendment.
In view of the observations made hereinabove I hold that the amendment application deserves to be allowed. The Learned Trial Judge failed to exercise the jurisdiction vested in him by law by rejecting the amendment application.
The impugned order suffers from infirmity and the same is accordingly set aside. Consequently the application for amendment of plaint is allowed. The petitioner shall file the amended plaint within such time as may be fixed by the Learned Trial Judge. The opposite party will be at liberty to file an additional written statement within such time as may be fixed by the learned court below. The Learned Trial Judge is directed to fix the time limit for filing of amended plaint and the additional written statement upon communication of this order.
CO No. 3008 of 2011 is allowed without however any order as to costs.
Urgent photostat certified copy of this judgment, if applied for, be supplied to the parties on priority basis.
(Hiranmay Bhattacharyya, J.)