Jharkhand High Court
Mongia Steel Limited vs Saluja Steel And Power Private Limited on 17 July, 2025
Bench: Sujit Narayan Prasad, Rajesh Kumar
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2024:JHHC:26916-DB
IN THE HIGH COURT OF JHARKHAND AT RANCHI
Commercial Appeal No.08 of 2023
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Mongia Steel Limited, a company within the meaning of the
Companies Act, 2013 having its registered office at Room
No.226, Kamalalaya Centre, 156A, Lenin Sarani, Kolkata-
700013, West Bengal through its Director Gunwant Singh
Mongia alias Gunwant Singh Saluja, Aged about 59 years,
son of Late Daljeet Singh Saluja, resident of Saluja House,
Netaji Chowk, Bhandaridih, P.O. + P.S. Giridih, District:
Giridih-815301. ... ... Appellant/Plaintiff
Versus
Saluja Steel and Power Private Limited, a company within the
meaning of the Companies Act, 2013 having its registered
office at Netaji Chowk, Bhandaridih, P.O. + P.S. Giridih,
District: Giridih-815301, Jharkhand.
... ... Respondent/Defendant
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CORAM: HON'BLE MR. JUSTICE SUJIT NARAYAN PRASAD
HON'BLE MR. JUSTICE RAJESH KUMAR
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For the Appellant : Mr. Debnath Ghosh, Sr. Advocate
: Mr. Arijit Bardhan, Advocate
: Mr. S. Dasgupta, Advocate
: Mr. Piyush Poddar, Advocate
: Mr. Manav Poddar, Advocate
For the Respondent : Mr. Prashant Pallav, Advocate
: Mr. Amit Sinha, Advocate
: Mr. Parth Jalan, Advocate
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C.A.V. on 02.07.2025 Pronounced on 17/07/2025
Per Sujit Narayan Prasad, J.
1. At the outset, it requires to refer herein that the suit was earlier heard by this Court.
2. This Court, vide order dated 19.07.2024, had dismissed the suit by refusing to condone the delay of 356 days.
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3. The appellant has preferred an appeal before the Hon'ble Apex Court being Civil Appeal No.5602 of 2025 and thereby the matter has again been listed before this Court.
4. This Court has gone through the order passed by the Hon'ble Apex Court wherein it has been observed that the issue requires consideration on merit.
5. Accordingly, we have heard learned counsel for the parties on merit.
Prayer
6. The instant appeal has been filed under Section 13 of the Commercial Courts Act, 2015 directed against the order dated 15.03.2022 passed in Commercial Case No.63 of 2020 by the learned Presiding officer, Commercial Court, Ranchi whereby and whereunder the plaint pertaining to Commercial Case No.63 of 2020 has been rejected in exercise of power conferred under Order VII Rule 11 of the Code of Civil Procedure, 1908.
Factual Matrix
7. The brief facts of the case as per the pleading made in the memo of appeal also having been incorporated in the impugned order needs to be referred herein :-
The Appellant is engaged in the business of manufacturing and/or marketing and/or selling of various metallic and/or non-metallic materials, including TMT Bars, CTD Bars, Joist, Channels, M.S. Rounds, M.S. Flats, M.S. 2 2024:JHHC:26916-DB 2024:JHHC:26916-DB Wires, Common Metals, Apparatus for Lighting, Heating, Steam Generating, Cooking, Refrigerating, Drying, Ventilating, Water Supply and Sanitary purpose, Pipes and tubes of Metal, etc. The Appellant was incorporated on March 10, 1995 under the name and style Mongia Hi-Tech Private Limited. At the time when the Appellant was incorporated, Mr. Gunwant Singh Mongia alias Gunwant Singh Saluja, Mr. Amarjeet Singh Saluja and Mrs. Manmeet Kaur were its first shareholders and Directors. Mr. Gunwant Singh Mongia and Mr. Amarjeet Singh Saluja are brothers.
Since the incorporation of the Appellant Mr. Gunwant Singh Mongia has been managing, running and looking after day to day affairs of the Appellant. The name of the Appellant subsequently sometime on or about September 7, 2010 was changed to Mongia Steel Private Limited and thereafter sometime on or about January 31, 2011 to Mongia Steel Limited, its present name.
The Respondent was incorporated sometime on or about July 26, 2004 with Amarjeet Singh Saluja, Taranjeet Singh Saluja, Satwinder Singh Saluja as its first shareholders and Directors. Though the Respondent was incorporated in July, 2004 but the Respondent was not into the business of manufacturing of TMT Bars prior to 2014. The Respondent was, however, marketing and/or trading 3 2024:JHHC:26916-DB 2024:JHHC:26916-DB TMT Bars using the Trade Mark "SALUJA" prior to 2014 without any device and/or photo of "Sardarji".
The Respondent with the intention of grabbing the readily available market created by the Appellant started projecting itself as sister concern of the Appellant to the members of trade and public. The Respondent applied for registration of the mark "SALUJA (Label)", with the Registrar of Trade Marks on or about March 14, 2013 vide Trade Mark Application No.2496055. Inasmuch as the mark "SALUJA (Label)" which was being used by the Respondent was different from the numerous marks and artistic works used and owned by the Appellant, the Appellant had absolutely no objection in the Respondent using the mark "SALUJA (Label)" while marketing its products.
The Appellant started its business of manufacturing and/or marketing of various TMT Bars, CTD Bars, Joist Channels, M.S. Rounds etc. in the year 1995. The Appellant immediately on its incorporation coined and adopted numerous marks. Prominent and essential feature of all the marks adopted by the Appellant in the year 1995 was device of photograph of its Director Mr. Gunwant Singh Mongia and the word "MONGIA". The Appellant at the same time coined, adopted and devised numerous marks, all comprising of device of prominent photo of its Director, Mr. Gunwant Singh Mongia, in different style and manner along with the word 4 2024:JHHC:26916-DB 2024:JHHC:26916-DB "MONGIA" written in numerous stylized forms and/or in different languages. The Appellant has from time to time applied for and obtained registration over its numerous marks and some of the marks of the Appellant are pending registration before the Trade Marks Registry. The Appellant ever since its incorporation has been continuously, uninterruptedly, extensively and exclusively been using its marks.
All the labels coined and adopted by the Appellant are original artistic work within the meaning of the Copyrights Act, 1957 and the Appellant is the owner of and has copyrights over all its artistic work. The Appellant being owner of its artistic works has applied for and obtained Copyright registration over its numerous artistic works.
The Appellant has spent huge amount of money for advertisement and/or publicity of its marks. The members of trade and public identify the trade mark/trade name "MONGIA" and/or Device of Sardarji (Label) with Appellant alone and none else. In fact the products of the Appellant is referred to as "Sardar Chhaap Chhar" and/or "Sardarji's Chhar" by the members of the trade and/or buying public.
The Appellant ever since having coined and adopted, Inter alia, its marks "MONGIA with Device of Sardarji (Label)"
have used the same continuously, extensively, openly, uninterruptedly and to the exclusion of others. The 5 2024:JHHC:26916-DB 2024:JHHC:26916-DB Respondent and its promoters especially Mr. Amarjeet Singh Saluja have all throughout being aware of such fact.
The getup and trade dress which the products of the Appellant bear constitute a mark within the meaning of the Trademarks Act, 1999.
The Appellant in the year 1995 also introduced tagline "Nirmaan ka Majjboot Aadhaar" along with the mark "MONGIA with (Device of Sardarji)" and has been using such tagline continuously and such tagline has also become very popular amongst the members of the trade and buying public and the same is identified with the Appellant alone.
Appellant has advertised the said marks in various leading newspapers in India like Dainik Jagran, Prabhat Khabar, Hindustan etc. By reason of the aforesaid, the Appellant's products sold, inter alia, under the said marks have captured the imagination of the trade and public at large. The products manufactured and/or marketed under the said marks are exclusively identified with the Appellant and none else. The Appellant has huge market share in the line of business in which the Appellant carries and conducts its business.
The Appellant has always been extremely vigilant and proactive in protecting its Intellectual Property rights and is always committed to maintain the high standard of quality of its products. Therefore, the said marks of the Appellant 6 2024:JHHC:26916-DB 2024:JHHC:26916-DB being extremely distinctive, invented, original and coined mark, is entitled to the highest degree of protection under the Intellectual Property law as also common law.
It is the case of the appellant that Mr. Amarjeet Singh Saluja and his sons Mr. Taranjeet Singh Saluja and Satvinder Singh Saluja, with the purpose of completely severing all ties with the Appellant and/or Mr.Gunwant Singh Mongia formed and incorporated the Respondent sometime on or about July 26, 2004. The main object of the Respondent was to manufacture Sponge Iron, however, no such business was started by the Respondent prior to the year 2014. In this connection it will not be out of place to mention here that at the time when the Respondent was formed and incorporated, Mr. Amarjeet Singh Saluja and his wife Smt. Manmeet Kaur continued to be the Directors and shareholders of the Appellant and resigned from the Appellant sometime in the year 2006. Mr. Amarjeet Singh Saluja and Smt. Manmeet Kaur also sold and transferred their entire shareholdings of and in the Appellant company in favour, inter alia, of Mr. Gunwant Singh Mongia.
The Appellant alone is entitled to use the mark "Device of Sardarji" in respect of TMT Bars and Iron and Steel Products and use of any mark which is similar and/or identical and/or deceptively similar to the mark "Device of Sardarji" belonging to the Appellant tantamount to 7 2024:JHHC:26916-DB 2024:JHHC:26916-DB infringement of Trade Mark, Copyright and also passing off by the anyone using such mark and/or deceptively similar mark and the same would also amount to violation of the common law right of the Appellant.
The Respondent in the meantime sometime on or about June 27, 2014 filed numerous applications for registration of marks "SALUJA GOLD with Device of Sardarji"
along with a tag line "Majboot Nirmaan Ki Guarantee" with the Registrar of Trade Marks alleging user of such marks since July 26, 2004. All such marks applied for registration by the Respondent carried device of photographs of Sardarji as its essential and prominent feature and in identical and/or similar get up as that of the Appellant's mark.
The overall getup of the alleged marks applied for registration by the Respondent gave an immediate impression that the Respondent has imitated and adopted the style of the device of Sardarji (label) in the same manner and/or style as being used by the Appellant, which the Appellant had coined and adopted sometime in the year 1995 and has been using ever since.
Such slavish imitation by the Respondent made it abundantly clear that the Respondent had no other intention, except to wrongfully and illegally ride on the long- standing hard-earned goodwill and reputation of the marks of the Appellant in every possible manner. Further the 8 2024:JHHC:26916-DB 2024:JHHC:26916-DB Respondent had fraudulently, wrongfully and illegally claimed user of the alleged mark "SALUJA GOLD along with Device of Sardarji" from July 26, 2004.
The Appellant then sometime on or about November, 2014 came to learn that the Respondent had started advertising and marketing its products in an identical and/or similar getup and manner as that of the Appellant by using its mark "SALUJA GOLD" along with the bust photograph of Mr. Amarjeet Singh Saluja, where the most prominent and essential feature of the mark of the Respondent was the photograph of Sardarji.
The Respondent is effectively practising fraud on the consumers by its use of the alleged mark "SALUJA GOLD with Device of Sardarji" on the products manufactured and/or marketed by the Respondent. The particulars of such fraud are as follows:-
(a) The Respondent is giving an impression to the members of the public and trade that it has trade connections with the Appellant.
(b) The consumers are purchasing the products of the Respondent believing that the Respondent is licensed or authorized by the Appellant or have some connection or association with the Appellant.
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(c) The Respondent has led the consumers of the Appellant and members of trade into believing that the products of the Respondent are that of the Appellant.
(d) The alleged claim of the Respondent of using the offending marks from July 27, 2004 is false and false to the knowledge of the Respondent.
(e) By Respondent's own admission it launched its alleged mark "SALUJA GOLD" in the year 2014 which evidently proved the claim of alleged user from the year 2004 by the Respondent to be false and untrue.
(f) The Respondent is giving an impression to the public that it is in the business since 40 years, which is not the case and is false representation to the public.
(g) The Respondent has been destroying and/or damaging the properties, i.e. hoardings, banners, billboards, advertisements etc., belonging to the Appellant.
(h) The Respondent has committed various acts intended to deceive the customers of the Appellant and/or consumers at large.
The aforesaid wrongful and illegal actions of the Respondent have caused serious loss and damage to the Appellant and will continue to cause huge loss and damage to the Appellant unless restrained. The Appellant had reasonably assessed such loss and damage at Rs.5,00,00,000/- (Rupees Five Crores), which sum the 10 2024:JHHC:26916-DB 2024:JHHC:26916-DB Respondent is liable to pay to the Appellant as compensation and/or damages. In the alternative, the Appellant prays for an enquiry to ascertain the loss and damage suffered by the Appellant and a decree for such sum as may be found due upon enquiry.
In the facts and circumstance aforesaid the Appellant on having come to know of the illegal, wrongful and fraudulent acts and activities of the Respondent immediately took steps to stop the Respondent from its wrongful and illegal acts by filing a Civil Suit sometime on or about April 22, 2015 before the Learned Judicial Commissioner, Ranchi, which suit was initially numbered as Title Suit No.6 of 2015 and subsequently came to be numbered as Commercial Case No.6 of 2015 and stood transferred to the Court of the Learned Commercial Court, Ranchi.
During the course of hearing of the aforesaid suit, the Appellant realised that there were some defects in the suit and case of Appellant was not properly pleaded and as such the Appellant filed an application under Order XXIII Rule 1 (3) read with Section 151 of the Code of Civil Procedure seeking leave of the Learned Court to withdraw the Commercial Case No. 6 of 2015 with a liberty to file a fresh suit on the self same cause of action.
The Respondent filed its Written Objection to the said Application. The said Application was taken up for hearing 11 2024:JHHC:26916-DB 2024:JHHC:26916-DB and the Learned Court by an Order dated September 29, 2020 was pleased to allow such application, subject to payment of cost of Rs. 10,000/- to the Respondent.
The Appellant thereafter tendered the cost of Rs. 10,000/- to the Respondent, which was duly received by the Respondent.
The Appellant thereafter sometime on or about 23.12.2020 in compliance with the Order dated September 29, 2020 passed by the Learned Commercial Court at Ranchi in Commercial Case No.6 of 2015 filed Commercial Case No.63 of 2020 (Mongia Steel Limited Vs Saluja Steel and Power Private Limited) by filing Plaint with annexures before the Learned Commercial Court at Ranchi.
The respondent thereafter sometime on or about August, 2021 filed an application purportedly under Order VII Rule 11 read with Section 151 of the Code of Civil Procedure, 1908 seeking rejection of the plaint filed by the Appellant.
The Appellant filed its Written Objection to the purported application under Order VII Rule 11 of the Code of Civil Procedure filed by the Respondent.
Thereafter the aforesaid suit was taken up for hearing on the point of admission and the purported application under Order VII Rule 11 of the Code of Civil Procedure, 1908 filed by the respondent from time to time. 12
2024:JHHC:26916-DB 2024:JHHC:26916-DB The Learned Commercial Court by the impugned judgment and order dated March 15, 2022 was pleased to allow the Application under Order VII Rule 11 of the Code of Civil Procedure, 1908 filed by the Respondent consequently rejecting the plaint filed by the Appellant, inter alia, holding that the plaint filed in the suit travelled beyond the conditions imposed by the Learned Court vide order dated September 29, 2020 in Commercial Suit No.06 of 2015, against which the present appeal has been filed.
8. It is evident from the factual aspect as referred hereinabove that the Appellant is engaged in the business of manufacturing and/or marketing and/or selling of various metallic and/or non-metallic materials, including TMT Bars, CTD Bars, Joist, Channels, M.S. Rounds, M.S. Flats, M.S. Wires, Common Metals, Apparatus for Lighting, Heating, Steam Generating, Cooking, Refrigerating, Drying, Ventilating, Water Supply and Sanitary purpose, Pipes and tubes of Metal, etc. The Appellant was incorporated on March 10, 1995 under the name and style Mongia Hi-Tech Private Limited. At the time when the Appellant was incorporated, Mr. Gunwant Singh Mongia alias Gunwant Singh Saluja, Mr. Amarjeet Singh Saluja and Mrs. Manmeet Kaur were its first shareholders and Directors.
The Respondent was incorporated sometime on or about July 26, 2004 with Amarjeet Singh Saluja, Taranjeet 13 2024:JHHC:26916-DB 2024:JHHC:26916-DB Singh Saluja, Satwinder Singh Saluja as its first shareholders and Directors.
The Respondent applied for registration of the mark "SALUJA (Label)", with the Registrar of Trade Marks on or about March 14, 2013 vide Trade Mark Application No.2496055. Inasmuch as the mark "SALUJA (Label)" which was being used by the Respondent was different from the numerous marks and artistic works used and owned by the Appellant, the Appellant had absolutely no objection in the Respondent using the mark "SALUJA (Label)" while marketing its products.
The Appellant immediately on its incorporation coined and adopted numerous marks. Prominent and essential feature of all the marks adopted by the Appellant in the year 1995 was device of photograph of its Director Mr. Gunwant Singh Mongia and the word "MONGIA". The Appellant has from time to time applied for and obtained registration over its numerous marks and some of the marks of the Appellant are pending registration before the Trade Marks Registry. The Appellant ever since its incorporation has been continuously, uninterruptedly, extensively and exclusively been using its marks.
The Appellant in the year 1995 also introduced tagline "Nirmaan ka Majjboot Aadhaar" along with the mark 14 2024:JHHC:26916-DB 2024:JHHC:26916-DB "MONGIA with (Device of Sardarji)" and has been using such tagline continuously.
By reason of the aforesaid, the Appellant's products sold, inter alia, under the said marks have captured the imagination of the trade and public at large.
It is the case of the appellant that the Respondent on or about June 27, 2014 filed numerous applications for registration of marks "SALUJA GOLD with Device of Sardarji"
along with a tag line "Majboot Nirmaan Ki Guarantee" with the Registrar of Trade Marks alleging user of such marks since July 26, 2004. All such marks applied for registration by the Respondent carried device of photographs of Sardarji as its essential and prominent feature and in identical and/or similar get up as that of the Appellant's mark.
In the aforesaid facts and circumstance, to stop the Respondent from its wrongful and illegal acts, the appellant filed a Civil Suit before the Learned Judicial Commissioner, Ranchi, which suit was numbered as Commercial Case No.6 of 2015 and stood transferred to the Court of the Learned Commercial Court, Ranchi.
During the course of hearing of the aforesaid suit, the Appellant realised that there were some defects in the suit and case of Appellant was not properly pleaded and as such the Appellant filed an application under Order XXIII Rule 1 (3) read with Section 151 of the Code of Civil Procedure 15 2024:JHHC:26916-DB 2024:JHHC:26916-DB seeking leave of the learned court to withdraw the Commercial Case No. 6 of 2015 with a liberty to file a fresh suit on the self same cause of action.
The Respondent filed its Written Objection to the said Application. The said Application was taken up for hearing and the Learned Court by an Order dated September 29, 2020 was pleased to allow such application.
The Appellant thereafter in compliance with the Order dated September 29, 2020 passed by the Learned Commercial Court at Ranchi in Commercial Case No.6 of 2015 filed Commercial Case No.63 of 2020.
The respondent thereafter sometime on or about August, 2021 filed an application purportedly under Order VII Rule 11 read with Section 151 of the Code of Civil Procedure, 1908 seeking rejection of the plaint filed by the Appellant.
The Appellant filed its Written Objection to the application under Order VII Rule 11 of the Code of Civil Procedure filed by the Respondent.
Thereafter the aforesaid suit was taken up for hearing and the Learned Commercial Court by the impugned judgment and order dated March 15, 2022 was pleased to allow the Application under Order VII Rule 11 of the Code of Civil Procedure, 1908 filed by the Respondent consequently rejecting the plaint filed by the Appellant, inter alia, holding 16 2024:JHHC:26916-DB 2024:JHHC:26916-DB that the plaint filed in the suit travelled beyond the conditions imposed by the Learned Court vide order dated September 29, 2020 in Commercial Suit No.06 of 2015, against which the present appeal has been filed.
9. The crux of the issue involved in the present case is that while granting leave to withdraw the suit vide order dated 29.09.2020 passed in Miscellaneous Application No.105 of 2020 arising out of Commercial Case No.06 of 2015, the petition filed for withdrawal has been allowed with a liberty to file a fresh suit subject to the following conditions :-
(1) The plaintiff shall not introduce any new/fresh cause of action, (2) The plaintiff shall not be permitted to bring on record any document which has been issued in his favour after the institution of the present suit and (3) The plaintiff shall be only permitted to seek all the relief as sought by him in para 5 of Misc Case.
10. The learned Presiding Officer has also clarified that if any defiance to the observation made above is found in the newly instituted suit, then the fresh suit shall be liable to be dismissed at the stage of admission itself.
11. The plaintiff has further been directed to serve a copy of the fresh plaint upon the defendant or his counsel prior to filing of the suit.
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12. The present Misc Case stands disposed of accordingly. Main case record bearing Commercial Case No.06/2015 has been dismissed as withdrawn.
13. The appellant, thereafter, has filed fresh suit praying therein the following reliefs :-
a) Permanent injunction restraining the defendant its men, assigns, servants, agents, officers, distributors, representatives or anyone claiming through or under them from in any way or manner infringing Plaintiff's Registered Trade Marks, inter alia, "MONGIA along with Device of Sardarji" by using marks "SALUJA GOLD with Device of Sardarji" and / or any other deceptively similar and / or identical and / or visually similar mark as that of Plaintiff's registered Trade Marks "MONGIA with Device of Sardarji" in any way or manner whatsoever.
b) Permanent injunction restraining the defendant its men, assigns, servants, agents, officers, distributors, representatives or anyone claiming through or under them from in any way or manner passing off and enabling others to pass off their products by using marks "SALUJA GOLD with Device of Sardarji" and / or any other mark having similar get up and / or which is deceptively similar and / or identical and / or visually similar mark as that of Plaintiff's Trade Marks "MONGIA with Device of Sardarji" in any way or manner whatsoever;
c) Permanent injunction restraining the defendant its men, assigns, servants, agents, officers, distributors, representatives or anyone claiming through or under them from in any way or manner infringing Plaintiff's Copyright over and in respect of its artistic work "MONGIA with device of Sardarji" by using SALUJA GOLD along with Device of Sardarji" and / or any other artistic work, which is identical and / or deceptively and / or visually similar to the artistic works of the Plaintiff;
d) Perpetual injunction restraining the defendant its men, assigns, servants, agents, officers, distributors, representatives or anyone claiming through or under them from in any way or manner using device and / or photograph of "Sardarji" in a way or manner where the photograph of Sardarji is displayed in a prominent and / or 18 2024:JHHC:26916-DB 2024:JHHC:26916-DB essential way and / or manner and enabling others to use the same in any way or manner whatsoever;
e) Delivery up on oath any article and / or all labels, dyes, blocks, plates, moulds, screen prints, cylinders, advertising materials, products, name boards, letter heads, stationeries, pamphlets, brouchures and any other materials of the defendant bearing the mark "SALUJA GOLD with Device of Sardarji" or any other mark that is identical and / or deceptively and / or visually similar to the plaintiff's mark "MONGIA with Device of Sardarji" and the same be cancelled and / or destroyed;
f) Decree for a sum of Rs. 5,00,00,000/- (Rupees Five Crores) only against the defendant for damages suffered by the plaintiff;
g) In the alternative an enquiry be made to ascertain the loss and damage suffered by the plaintiff and a decree be passed for such sum as may be found due upon enquiry against the defendant;
h) Preliminary decree be passed in favour of Plaintiff directing the defendant to render true and faithful accounts of profits earned by the defendant by use of Trade Mark "SALUJA GOLD along with Device of Sardarji" and /or any other mark that is deceptively and /or visually similar to the mark "MONGIA with Device of Sardarji"
belonging to the Plaintiff, and a final decree be passed in favour of the Plaintiff for the amount of profits thus found to have been made by the Defendant after the Defendant has rendered accounts;
i) Attachment;
j) Accounts;
k) Receiver;
l) Injunction;
m) Costs;
n) Further and or other reliefs;
14. The respondent has filed an application under Order VII Rule 11 of the C.P.C. for rejection of the plaint on the ground that the conditional liberty which has been given by the learned court while granting leave to file fresh suit vide order dated 29.09.2020, has been violated and, as such, there is deviation from the liberty so granted by the court. 19
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15. The ground has been taken by filing the petition under Order VII Rule 11 of the C.P.C. that the original suit being Commercial Case No.06 of 2015 was permitted to be withdrawn subject to certain conditions. The condition has been violated by filing suit by inserting the new cause of action pertaining to the Copyright Act, 1957.
16. The learned court has considered the said application and after going through the condition stipulated in the order dated 29.09.2020 while granting leave to file fresh suit, the conclusive finding has been arrived at that insertion of the prayer pertaining to the Copyright Act is a new cause of action and, as such, the Condition No.2 of the order dated 29.09.2020 has been violated and on the aforesaid ground the plaint has been rejected vide order impugned dated 15.03.2022, which is the subject matter of the present appeal.
Argument advanced on behalf of the appellant
17. Mr. Debnath Ghosh, learned senior counsel appearing for the appellant, has taken the following grounds in assailing the order impugned :-
(i) The learned court has committed gross error in rejecting the plaint on the ground that there is deviation in the prayer made in the subsequent suit filed in pursuance to order dated 29.09.2020, since, the fresh suit was filed in pursuance to the averment made at 20 2024:JHHC:26916-DB 2024:JHHC:26916-DB paragraph-5 of the miscellaneous application based upon that the permission was granted to withdraw the suit with a liberty to file fresh, which is the subject matter of the suit. The learned court has not considered the specific averment made at paragraph 5 of the miscellaneous application and even though there is no deviation to the condition stipulated in the order dated 29.09.2020 while granting leave to file fresh suit, the plaint was rejected in exercise of power conferred under Order VII Rule 11 of the C.P.C.
(ii) The rejection of plaint also suffers from error on the ground that the issue of Trademark and the Copyright are interlinked cause of action and since both cannot be segregated, hence, in order to avoid the multiplicity of proceedings if the issue of royalty has also been inserted in the fresh suit filed in pursuance to the leave granted by the learned court, the same cannot be said to suffer from an error.
(iii) The learned court has not appreciated the fact that the order of withdrawal with conditions has not been assailed by the respondent and once the leave has been granted, there cannot be any opposition in filing of the fresh suit.
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18. Learned senior counsel, based upon the aforesaid ground, has submitted that the impugned order suffers from an error, hence, not sustainable in the eyes of law. Argument advanced on behalf of the Respondent
19. Per contra, Mr. Prashant Pallav, learned counsel appearing for the respondent, defending the impugned order, has taken the following grounds :-
(i) There is no error in the order passed by the learned court in exercise of power conferred under Order VII Rule 11 of the C.P.C. since, it is the admitted case herein that the fresh suit was filed by inserting the new cause of action which pertains to the issue of Copyright Act.
(ii) The contention has been raised that while allowing the application filed under Order XXIII Rule 1(3) of the C.P.C., leave has been granted to file fresh suit subject to compliance of certain conditions and also clarifying in the order passed by the learned court while granting such leave, as would be evident from the order dated 29.09.2020, that there should not be any deviation from the condition stipulated in the order dated 29.09.2020 while filing the fresh suit.
(iii) It has been submitted that the original suit being Commercial Case No.06 of 2015 was confined only to the Trademark Act since, after filing of the suit, also the 22 2024:JHHC:26916-DB 2024:JHHC:26916-DB prayer was made therein raising the cause of action pertaining to the Copyright Act which was sought to be deleted by the appellant herein for which an application was filed under Order VI Rule 17 seeking leave of the court to allow the deletion of the prayer pertaining to Section 51 and 62 of the Copyright Act, 1957 from the cause title page of the plaint which was passed on 03.09.2015.
(iv) It has been contended by referring to the said order that the appellant had also prayed to reserve its right to file another suit under Section 51 and 62 of the Copyright Act, 1957, if and when so desired, meaning thereby, the right was reserved to file another suit under Section 51 and 62 of the Copyright Act if and when so desired and the court has passed order to consider the said issue at the time of final hearing of the case. But, while reserving the right, it has been taken note by the learned court on the basis of the prayer made on behalf of the appellant, also suggests that the prayer pertaining to Section 51 and 62 of the Copyright Act has been deleted by the order passed by the court dated 03.09.2015.
(v) The argument has been advanced that the aforesaid prayer pertaining to Section 51 and 62 of the Copyright Act, 1957, since has been deleted, hence, the earlier 23 2024:JHHC:26916-DB 2024:JHHC:26916-DB suit being Commercial Case No.06 of 2015 will only confine to the issue of Trademark Act.
(vi) The ground has also been taken that since the fresh cause of action has been agitated in the fresh suit, hence, the same having been found by the learned court to be deviation in pursuance to the direction passed in the order dated 29.09.2020 hence, the rejection of the plaint based upon the specific observation made in the said order that in case of any deviation made from the condition while granting liberty to file suit will be there, the suit will be dismissed and acting in pursuance to the said observation, if the plaint has been dismissed, it cannot be said to suffer from an error.
(vii) The argument has been advanced that the cause of action pertaining to the Copyright Act has been raised by the appellant by filing a separate suit being Commercial Case No.06 of 2015 for the cause of action of sometime of the year 2014 in a composite suit seeking relief for infringement of Copyright as well as Trademark but the appellant has deleted the pleading on the issue of Copyright. If the prayer pertaining to the Copyright Act, after withdrawal of the said issue from the Commercial Case No.06 of 2015 if allowed to be sustained by addition of the prayer pertaining to the 24 2024:JHHC:26916-DB 2024:JHHC:26916-DB Copyright Act along with the issue of Trademark Act, then the issue pertaining to the Copyright Act by which the appellant has sought to get an adjudication of an issue which had crept up sometime in the year 2014 and, as of now, is barred by limitation. Hence, allowing the prayer by insertion of the issue of Copyright Act will be contrary to the Limitation Act and, therefore, the plaint is to be rejected in view of the condition stipulated under Order VI Rule 11(d) of the C.P.C.
(viii) The issue has also been raised that the withdrawal of the suit being Commercial Case No.06 of 2015 in view of the provision of Order XXIII Rule 1(3) of the C.P.C. and as per the statutory mandate the defect is required to constitute to be a formal defect within the meaning of Order XXIII Rule 1(3)(a) of the C.P.C. But, in the withdrawal application, no formal defect has been pointed out and, as such, on this ground also, the order passed by the learned court cannot be said to suffer from any error.
20. Mr. Debnath Ghosh, learned senior counsel appearing for the appellant, in response, has submitted that so far as the issue of formal defect for the purpose of withdrawal as per requirement stipulated under Order XXIII rule 1(3)(a) of the C.P.C. is concerned, the order of withdrawal since has not been challenged by the respondent 25 2024:JHHC:26916-DB 2024:JHHC:26916-DB and, as such, it is not available for him to now take the ground pointing out error in the order dated 29.09.2020 passed by giving liberty to file a fresh suit subject to certain conditions.
21. We have heard the learned counsel for the parties and gone through the pleading made in the memo of appeal as also the finding recorded by the learned court in the impugned judgment.
22. The issue which requires consideration herein are as under :-
(i) Whether the order passed by the learned court dated 15.03.2022 rejecting the plaint is sustainable in the eye of law, if filed in deviation to the condition stipulated by the learned court in its order dated 29.09.2020 passed in Commercial Case No.06 of 2015.
(ii) Whether seeking relief with respect to the Copyright Act, which was not the subject matter of the suit pertaining to the Commercial Case No.06 of 2015, will be construed to be a fresh cause of action or not?
(iii) Whether the reference of subject matter of suit as referred in paragraph-5 of the Miscellaneous application can be construed to be the suit pertaining to Trademark Act after deletion of the issue of Copyright and, as such, the issue pertaining to Copyright Act will be construed to be fresh cause of action or not? 26
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23. All the issues are interlinked and are being considered together hereinbelow but before consideration of the aforesaid issues, certain admitted facts needs to be referred herein:-
The appellant herein filed a Civil Suit being Commercial Case No.6 of 2015 against the respondent before the Commercial Court, Ranchi. The allegation therein is that the respondent company is intentionally camouflaging the established registered trademark of the appellant in their trade of steel products.
The appellant had initially filed a composite suit seeking relief for infringement of copyright as well as trademark. However, the appellant filed an application under Order VI Rule 17 for seeking amendment in the plaint to the effect that the prayer pertaining to Section 51 and 62 of the Copyright Act may be deleted from the plaint of Commercial Case No.06 of 2015. The said application was allowed whereby and whereunder the amendment sought for has been considered to be formal in nature and hence, the same has been allowed by granting leave to delete the cause of action pertaining to the Copyright Act.
Since as per the appellant, there were some defects in the suit and case of appellant was not properly pleaded, the appellant filed an application under Order XXIII Rule 1 (3) read with Section 151 of the Code of Civil Procedure 27 2024:JHHC:26916-DB 2024:JHHC:26916-DB seeking leave of the learned court to withdraw the Commercial Case No. 6 of 2015 with a liberty to file a fresh suit on the self-same cause of action.
The Respondent filed its Written Objection to the said application.
The learned Court by an order dated 29.09.2020 has allowed the application filed under Order XXIII Rule 1 (3) of the Code of Civil Procedure with liberty to the appellant to file a fresh suit.
The appellant, thereafter, filed Commercial Case No.63 of 2020 in terms of the aforesaid order.
The respondent filed an application under Order VII Rule 11 of the Code of Civil Procedure, 1908 seeking rejection of the plaint filed by the appellant.
The Learned Commercial Court by the impugned judgment 15.03.2022 allowed the application filed by the respondent under Order VII Rule 11 of the Code of Civil Procedure, 1908 consequently rejecting the plaint filed by the appellant, inter alia, holding that the plaint filed in the suit travelled beyond the conditions imposed by the learned Court vide order dated 29.09.2020 in Commercial Suit No.06 of 2015, against which the present appeal has been filed.
24. The provision of Order VII Rule 11 of the C.P.C. is also required to be referred herein which reads hereunder as :-
28
2024:JHHC:26916-DB 2024:JHHC:26916-DB Order VII
11. Rejection of plaint.-- The plaint shall be rejected in the following cases:--
(a) where it does not disclose a cause of action;
(b) where the relief claimed is undervalued, and the plaintiff, on being required by the Court to correct the valuation within a time to be fixed by the Court, fails to do so;
(c) where the relief claimed is properly valued, but the plaint is returned upon paper insufficiently stamped, and the plaintiff, on being required by the Court to supply the requisite stamp-paper within a time to be fixed by the Court, fails to do so;
(d) where the suit appears from the statement in the plaint to be barred by any law;
(e) where it is not filed in duplicate;
(f) where the plaintiff fails to comply with the provisions of rule 9;
Provided that the time fixed by the Court for the correction of the valuation or supplying of the requisite stamp-paper shall not be extended unless the Court, for reasons to be recorded, is satisfied that the plaintiff was prevented by any cause of an exceptional nature from correcting the valuation or supplying the requisite stamp-paper, as the case may be, within the time fixed by the Court and that refusal to extend such time would cause grave injustice to the plaintiff.
25. It is evident from the provision of Order VII Rule 11 that the plaint can be rejected or returned back in favour of the plaintiff subject to availability of either of the conditions as referred in (a) or (b) or (c) or (d).
26. The reference of Order XXIII Rule 1(3) of the C.P.C. is also required to be made which reads hereunder as :- 29
2024:JHHC:26916-DB 2024:JHHC:26916-DB Order XXIII
1. Withdrawal of suit or abandonment of part of claim
-
(1) ... ... ...
(2) ... ... ...
(3) Where the Court is satisfied,--
(a) that a suit must fail by reason of some formal defect, or
(b) that there are sufficient grounds for allowing the plaintiff to institute a fresh suit for the subject matter of suit or part of a claim, It may, on such terms as it thinks fit grant the plaintiff permission to withdraw from such suit or such part of the claim with liberty to institute a fresh suit in respect of the subject-matter of such suit or such part of the claim.
27. It is evident from the aforesaid provision that the plaintiff has been given a liberty to withdraw the suit by filing appropriate application under the aforesaid provision and the concerned court can grant such indulgence with a liberty to file fresh suit subject to availability of the two conditions :-
(i) formal defect, or
(ii) that there are sufficient grounds for allowing the plaintiff to institute a fresh suit for the subject matter of suit or part of a claim.
28. As per Order XXIII Rule 1(3) of the C.P.C., the suit may only be withdrawn with permission to bring a fresh suit when the court is satisfied that the suit must fail for reason of some formal defect or that there are other sufficient 30 2024:JHHC:26916-DB 2024:JHHC:26916-DB grounds for allowing the plaintiff a fresh suit. The power to allow withdrawal of a suit although is discretionary. The plaintiff has to make out a case in terms of Order XXIII Rule 1(3) (a) or (b) of the C.P.C. by asking for leave. The court can allow the application filed under Order XXIII Rule 1(3) of the C.P.C. for withdrawal of the suit with a liberty to bring a fresh suit only if the condition in either of the Clauses (a) or (b), i.e., existence or formal defects or sufficient grounds.
29. It has been laid down by Hon'ble Apex Court that the principle under Order XXIII Rule 1(3) of the C.P.C. is founded on public policy to prevent institution of suit again and again on the same cause of action, for ready reference, Para-9 of the judgment rendered by Hon'ble Apex Court in the case of V. Rajendran and Another v. Annasamy Pandian (Dead) through legal representatives Karthyayani Natchiar [(2017) 5 SCC 63] is being referred herein which reads hereunder as :-
"9. Order 23 Rule 1(3) CPC lays down the following grounds on which a Court may allow withdrawal of suit. It reads as under:
"1. Withdrawal of suit or abandonment of part of claim.--(1)-(2) * * * (3) Where the Court is satisfied--
(a) that a suit must fail by reason of some formal defect, or
(b) that there are sufficient grounds for allowing the plaintiff to institute a fresh suit for the subject-matter of a suit or part of a claim, 31 2024:JHHC:26916-DB 2024:JHHC:26916-DB it may, on such terms as it thinks fit, grant the plaintiff permission to withdraw from such suit or such part of the claim with liberty to institute a fresh suit in respect of the subject-matter of such suit or such part of the claim."
(emphasis supplied) As per Order 23 Rule 1(3) CPC, suit may only be withdrawn with permission to bring a fresh suit when the Court is satisfied that the suit must fail for reason of some formal defect or that there are other sufficient grounds for allowing the plaintiff to institute a fresh suit. The power to allow withdrawal of a suit is discretionary. In the application, the plaintiff must make out a case in terms of Order 23 Rules 1(3)(a) or (b) CPC and must ask for leave. The Court can allow the application filed under Order 23 Rule 1(3) CPC for withdrawal of the suit with liberty to bring a fresh suit only if the condition in either of the clauses (a) or (b), that is, existence of a "formal defect" or "sufficient grounds". The principle under Order 23 Rule 1(3) CPC is founded on public policy to prevent institution of suit again and again on the same cause of action."
30. Adverting to the factual aspect of the case herein, it is evident from the plaint of Commercial Case No.06 of 2015 that originally the relief was sought for pertaining to two prayers, first prayer pertains to the Trademark Act and second pertains to the Copyright Act.
31. The appellant has filed an application under Order VI Rule 17 CPC for seeking amendment in the plaint to the effect that the prayer pertaining to Section 51 and 62 of the Copyright Act may be deleted from the plaint of Commercial Case No.06 of 2015. The said application had been allowed 32 2024:JHHC:26916-DB 2024:JHHC:26916-DB vide order dated 03.09.2015 whereby and whereunder the amendment sought for has been considered to be formal in nature and hence, the same has been allowed by granting leave to delete the cause of action pertaining to the Copyright Act, for ready reference, the said order is being referred herein which reads hereunder as :-
3.9.15 "Pursuant to order dated 12.8.15 this petition has been filed today whereby it is prayed that now petition dated 12.8.15 may be considered as has been filed under Order VI Rule 17 r/w section 151 CPC.
It has been submitted in the petition dated. 12.8.15 that Title Suit has been filed under sections 29 and 134 of the Trade Marks Act 1999 and appellant may be allowed to delete the words "and section 51 and 62 of the Copyright Act 1957" from the cause title page of the plaint.
Since the amendment is formal in nature, prayer is allowed. Learned counsel is directed to make amendment in this regard in the manner as prayed for.
Further learned counsel prays to reserves its right to file another suit under section 51 and 62 of the Copyright Act 1957 if and when so desired. This issue will be considered at the time of final hearing of the suit.
Put up on 17.9.15 after fresh stamp report obtained from Sharistedar."
32. It is evident from the order as referred hereinabove that while allowing the amendment for deletion of the issue pertaining to Copyright Act, the appellant has reserved its right to approach the court of law pertaining to Copyright Act by filing fresh suit. The court has made observation that the appropriate order shall be passed at the time of final hearing of the case. Therefore, the fact about deletion of issue of 33 2024:JHHC:26916-DB 2024:JHHC:26916-DB Copyright Act is admitted one and that is by virtue of the order passed by the learned court on an application filed under Order VI Rule 17 of the C.P.C. on behalf of the appellant.
33. The suit being Commercial Case No.06 of 2015, therefore, will be said to be filed only for the purpose of adjudication of the issue pertaining to the Trademark Act. The suit proceeded. The written statement was filed. Issues framed and even the respondent has led the evidence and at that juncture, a miscellaneous application was filed being Miscellaneous Civil Application No.105 of 2020 seeking therein prayer for withdrawal of the Commercial Case No.06 of 2015. The said petition contains a statement at paragraph 5 wherein it has been stated that the plaintiff has since come to know that there are formal defects in the plaint and/or no proper and separate prayers inter alia for passing off, infringement of Trade Mark and infringement of Copyright has been prayed for against the defendant, which has all throughout been the desire of the plaintiff. The plaintiff as such intends to withdraw the instant suit with liberty/permission from the Hon'ble court to institute a fresh suit against the defendant in respect to the subject matter of the suit, for ready reference the statement made at paragraph-5 of the application is being referred hereunder as :-
34
2024:JHHC:26916-DB 2024:JHHC:26916-DB "5. The plaintiff has since come to know that there are formal defects in the plaint and/or no proper and separate prayers inter alia for passing off, infringement of Trade Mark and infringement of Copyright has been prayed for against the defendant, which has all throughout been the desire of the plaintiff. The plaintiff as such intends to withdraw the instant suit with liberty/permission from the Hon'ble court to institute a fresh suit against the defendant in respect to the subject matter of the suit."
34. The said miscellaneous application was allowed vide order dated 29.09.2020 which is at page 243 of the paper book. The said order starts with the word by making reference of the averment at paragraph 5 of the said application. The reference of the statement made at paragraph-6 of the miscellaneous application has also been made to the effect that due to numerous defects in the plaint filed in the instant suit, the plaintiff intends to withdraw the instant suit with liberty/permission to file a fresh suit.
35. It further appears that the said application had vehemently been opposed by filing rejoinder thereto which is also available on record. The objection has also been taken note, particularly, by making reference of paragraph-6 of the miscellaneous application wherein it has been stated that the plaintiff has not specifically pointed out as to what are the numerous defects on account of which the suit is liable to fail and therefore the prayer of the plaintiff cannot be allowed on such vague averment made in the petition. 35
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36. The learned court has passed the order by making reference of the original prayer made in the plaint, i.e., "Decree of perpetual injunction restraining the defendant, its directors, servants, agents, distributors, franchisees, dealers, representatives and assigns from using the trade marks as mentioned in Annexure-2 and 2/A and/or any other trade mark deceptively or confusingly similar to the plaintiff's registered well known artistic work of the Trademark having photograph of Sardar (Annexure 1) or in any other manner infringing the same and passing off their goods".
37. Besides this, the plaintiff has prayed for damages of the suit.
38. The learned court has allowed the miscellaneous application by coming to the conclusion that the formal defect is there. No reference having been made by the appellant with respect to the suit describing the suit property as Survey No.192/9 but the respondents are said to have transferred the patta for the suit property settling as Survey No. 192/14. The court has considered that the defect in the survey number of the suit property goes to the very core of the subject matter of the suit and the entire proceedings would be fruitless if the decree holder is not able to get the decree executed successfully and thus, the said defect will constitute to be a "formal defect" within the meaning of Order 23 Rule 1(3)(a) CPC. The court has also considered that the 36 2024:JHHC:26916-DB 2024:JHHC:26916-DB respondents are said to have executed an Inam settlement deed on 21.09.2012, in favour of their son Aranmanai Pandian, mentioning the suit property as Survey No. 192/14. The court, in view of the aforesaid has found the nature of defect to be formal and hence, the prayer for withdrawal of the suit has been allowed with a liberty to file a fresh suit subject to the condition that (1) the plaintiff shall not introduce any new/fresh cause of action, (2) the plaintiff shall not be permitted to bring on record any document which has been issued in his favour after the institution of the present suit and (3) the plaintiff shall be only permitted to seek all the relief as sought by him in para 5 of Misc Case which has been noted above separately in the prayer portion of the plaint. The further direction has been passed clarifying that if any deviance to the observation made above is found in the newly instituted suit then the fresh suit shall be liable to be dismissed at the stage of admission itself.
39. The plaintiff (appellant herein) has further been directed to serve a copy of the fresh plaint upon the Defendant or his Counsel prior to filing of the suit.
40. It is, thus, evident that the permission to withdraw the suit was granted subject to the leave to file fresh suit depending upon three conditions. The condition No.(3) is with the permission to seek all the relief as sought by the appellant in paragraph 5 of the miscellaneous case. 37
2024:JHHC:26916-DB 2024:JHHC:26916-DB Although the statement made at paragraph-5 of the miscellaneous case has already been referred hereinabove, but again at the risk of repetition, the same is being referred hereunder as :-
"5. The plaintiff has since come to know that there are formal defects in the plaint and/or no proper and separate prayers inter alia for passing off, infringement of Trade Mark and infringement of Copyright has been prayed for against the defendant, which has all throughout been the desire of the plaintiff. The plaintiff as such intends to withdraw the instant suit with liberty/permission from the Hon'ble court to institute a fresh suit against the defendant in respect to the subject matter of the suit."
41. It is evident from the statement made at paragraph- 5 as quoted and referred hereinabove that the prayer has been made by way of specific pleading made therein that the liberty may be granted to file fresh suit in respect to the subject matter of the suit.
42. The appellant has filed fresh suit praying therein by insertion of the relief pertaining to Section 51 and 62 of the Copyright Act also.
43. The respondent has filed an application under Order VII Rule 11 of the C.P.C. for rejection of the plaint on the ground that the condition based upon that the leave was granted by the learned court vide order dated 29.09.2020, has been violated by insertion of a new cause of action pertaining to the Copyright Act.
38
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44. The ground has also been taken that the issue of Copyright Act cannot be allowed to be inserted in the present suit in the garb of leave having been granted by the court vide order dated 29.09.2020, since, the cause of action pertaining to the Copyright Act was of the year 2014 and hence, the said suit will be barred by limitation after expiry of the period of three years as provided under Section 57 of the Limitation Act.
45. Although the issue of limitation has been raised and even though there is no consideration to that effect in the order of the learned court but since the same involves the legal issues, as such, the same has been taken into consideration on the basis of settled position of law that a suit cannot be allowed to be filed after lapse of a period of three years as provided under Article 57 of the Limitation Act and admittedly herein, the suit for Copyright was filed in the year 2015 for the cause of action of the year 2014 and subsequently withdrawn and after getting leave to file fresh suit, the prayer with respect to Copyright has also been inserted after lapse of the period of limitation in the garb of the leave granted by the learned court.
46. Even in the case of amendment, the amendment cannot be allowed if the cause of action which is sought to be inserted by way of amendment is barred by limitation, since, the moment the amendment will be allowed, it will 39 2024:JHHC:26916-DB 2024:JHHC:26916-DB date back to the cause of action and, as such, the principle of limitation is having applicability in such circumstances.
47. It needs to refer herein that the courts would, as a rule, decline to allow amendments, if a fresh suit on the amended claim would be barred by limitation on the date of the application, reference in this regard may be made to the Judgment rendered by the Hon'ble Apex Court in L.J. Leach & Co. Ltd. v. Jardine Skinner & Co., 1957 SCC OnLine SC 68.
48. Further, the Hon'ble Apex Court in the case of Pirgonda Hongonda Patil v. Kalgonda Shidgonda Patil and Ors., AIR 1957 SC 363, has observed which reads as under:
"All amendments ought to be allowed which satisfy the two conditions (a) of not working injustice to the other side, and (b) of being necessary for the purpose of determining the real questions in controversy between the parties... but I refrain from citing further authorities, as, in my opinion, they all lay down precisely the same doctrine. That doctrine, as I understand it, is that amendment should be refused only where the other party cannot be placed in the same position as if the pleading had been originally correct, but the amendment would cause him an injury which could not be compensated in costs. It is merely a particular case of this general rule that where a plaintiff seeks to amend by setting up a fresh claim in respect of a cause of action which since the institution of the suit had become barred by limitation, the amendment must be refused; to allow it would be to cause the defendant an injury which could not be compensated in costs by depriving him of a good defence to the claim. The ultimate 40 2024:JHHC:26916-DB 2024:JHHC:26916-DB test therefore still remains the same: Can the amendment be allowed without injustice to the other side, or can it not ?"
49. It is settled connotation of law that an amendment once incorporated relates back to the date of the suit. However, the doctrine of relation back in the context of amendment of pleadings is not one of universal application and in appropriate cases the Court is competent while permitting an amendment to direct that the amendment permitted by it shall not relate back to the date of the suit and to the extent permitted by it shall be deemed to have been brought before the Court on the date on which the application seeking the amendment was filed, reference in this regard be made to the Judgment rendered by the Hon'ble Apex Court in the case of Siddalingamma and Anr. v. Mamtha Shenoy, [2001] 8 SCC 561.
50. The argument has also been advanced in this context that it is the sole purpose of the withdrawal of the original suit, being Commercial Case No.06 of 2015, in the garb of formal defect, is insertion of a fresh cause of action pertaining to Section 51 and 62 of the Copyright Act, which cannot be permitted to be inserted by virtue of expiry of the period of limitation.
51. It is the admitted position herein that the permission of withdrawal of the suit being Commercial Case No.06 of 2015 was granted vide order dated 29.09.2020. Thus, order 41 2024:JHHC:26916-DB 2024:JHHC:26916-DB dated 29.09.2020 has not been challenged by the respondent. Further, the conditions stipulated in the order dated 29.09.2020 has also not been assailed by the appellant.
52. Although this point has been raised that permission was granted to withdraw the suit with a leave but since that order was not challenged by the respondent and, as such, it is not available for him to take that ground. But, the question which is now being considered by this Court that even accepting the fact that the order granting permission to withdraw and leave to file fresh suit is admitted one, then can the fresh suit will be allowed to be filed inserting the new/fresh cause of action.
53. The appellant, in pursuance to the order dated 29.09.2020 has filed a fresh suit also adding the new prayer of Copyright Act:-
(i) Whether insertion of the issue of Copyright Act is construed to be fresh cause of action or not?
(ii) Whether the same is considered to be defiance to the condition stipulated in the order dated 29.09.2020?
(iii) Whether the condition No.(3) basis upon which permission was granted to file fresh suit which refers about the subject matter of suit "will the issue of Copyright be said to be subject matter of the suit after withdrawal of the prayer pertaining to the Copyright Act?"
42
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54. We have already referred hereinabove that the suit being Commercial Case No.06 of 2015 was filed both for Trademark Act and Copyright Act, but the prayer pertaining to the Copyright Act was already amended on the basis of an order passed on an application filed on behalf of the appellant under Order VI Rule 17 of the C.P.C. vide order dated 03.09.2015, as quoted and referred hereinabove. Therefore, the suit which was filed, by virtue of the effect of the order dated 29.09.2020 will be said only to the issue of Trademark Act.
55. Since the withdrawal of the suit and leave to file fresh suit was subjective one with specific condition that plaintiff shall not introduce any new/fresh cause of action and the plaintiff shall be only permitted to seek all the relief as sought for by him in paragraph 5 of the miscellaneous case.
56. The introduction of new/fresh cause of action has been taken as a ground for rejection of the plaint.
57. This Court is of the view that when the appellant himself has confined the first suit being Commercial Case No.06 of 2015 only with respect to the issue of Trademark Act by deleting the issue of Copyright Act by virtue of order passed by the learned court dated 03.09.2015, then the suit being Commercial Case No.06 of 2015 will only be the subject matter of Trademark Act. The issue of Copyright Act will admittedly be new/fresh cause of action. 43
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58. This Court is further of the view that if the issue of Copyright Act will not be considered to be a new/fresh cause of action then such consideration will be contrary to the judicial order passed by the concerned court dated 03.09.2015 whereby and whereunder leave was granted to delete the prayer pertaining to Copyright Act.
59. Further, this Court has gone through the statement made at paragraph-5 of the miscellaneous application wherein also it has been stated about grant of leave to file fresh suit on the subject matter of the suit then what would be the subject matter of the suit of Commercial Case No.06 of 2015. Admittedly, after effect of the amendment and deletion of the prayer pertaining to the Copyright Act, as would be evident from the first page of the miscellaneous application as available on page No.93 of the paper book, the prayer pertaining to the Copyright Act will be treated to be new/fresh cause of action otherwise if the contention of the appellant will be accepted, then the same will be contrary to the judicial order passed by the learned court dated 03.09.2015.
60. It also needs to refer herein that the application filed under Order XXIII Rule 1(3) of the C.P.C. as available in Annexure-3, wherein statement has been made at paragraph-4 that the appellant since has not satisfied with the services of its conducting Advocate who has drafted the 44 2024:JHHC:26916-DB 2024:JHHC:26916-DB plaint in the instant suit and has been conducting the instant suit and as such, approached another counsel where the appellant was advised to seek relief against the defendant for infringement of Trademark and Copyright, passing of damages and other consequential reliefs.
61. It has also been stated that instead of seeking amendment of the plaint it should withdraw the instant suit with the leave of the Hon'ble Court to institute a fresh suit on the self same cause of action and by properly incorporating reliefs therein, for ready reference, paragraph- 4 of the application filed under Order XXIII Rule 1(3) of the C.P.C. is being quoted hereunder as :-
"4. The Plaintiff, in the meantime, not satisfied with the services of its conducting advocate, who had drafted the plaint in the instant suit and has been conducting the instant suit, sometime in or about August, 2020 approached another Advocate and placed the cause papers of the instant suit before him and Informed him that the plaintiff Intended to seek relief against the defendant for infringement of Trade Marks and Copyrights, Passing Off, Damages and other consequential reliefs. The Learned Advocate after perusing the cause papers of the instant suit informed the plaintiff that reliefs as desired by the plaintiff has not been properly prayed for in the instant suit and that the plaint filed in the instant suit had formal defects. The plaintiff was further advised that inasmuch as trial had commenced in the instant suit, in the interest of justice, instead of seeking amendment of the plaint it should withdraw the instant suit with the leave of the Hon'ble Court to institute a fresh suit on the self-same cause of action and by properly incorporating reliefs therein, 45 2024:JHHC:26916-DB 2024:JHHC:26916-DB which have not been properly prayed for in the instant suit."
62. Thus, it is evident that for the purpose of making prayer with respect to the issue of Copyright, the application under Order XXIII Rule 1(3) of the C.P.C. has been filed for withdrawal of the suit with a leave to file a fresh one and so as to include also the prayer pertaining to Copyrights.
63. This Court, therefore, is of the view that the appellant has tried to misuse the judicial proceeding which would be evident from the statement as has been made at paragraph- 4 itself. If that be so, then why an application was filed under Order VI Rule 17 of the C.P.C. for withdrawal of the issue of Copyright Act which has been allowed vide order dated 03.09.2015 and thereafter when the suit has proceeded, then the application was filed under Order XXIII Rule 1(3) of the C.P.C. on 10.09.2020.
64. Therefore, withdrawal application is only for the purpose of again filing a fresh suit along with the cumulative prayer of Trademark and Copyright issues.
65. As has been submitted by the learned counsel for the respondent, the suit has proceeded and at the stage of evidence of the defendant, application for withdrawal was filed and thereby the learned court has granted such liberty to file fresh suit but without addition of any new/fresh cause of action.
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66. Admittedly, the insertion of Copyright Act in the fresh suit is in defiance to the condition stipulated by the learned court, i.e., Condition No.(1) as available in the order dated 29.09.2020 and the Condition No.(3) together.
67. This Court, having discussed the legal as well as the factual aspect and after having gone through the impugned order wherefrom it is evident that the learned court has considered the insertion of the issue of Copyright to be deviation from the Condition No.(1) and (3) of the order dated 29.09.2020 and since the leave was granted to file fresh suit depending upon the conditions and there is violation of said conditions, hence, the plaint if has been rejected in exercise of power conferred under Order VII Rule 11 of the C.P.C., the same cannot be said to suffer from an error.
68. Accordingly, the instant appeal fails and the same is hereby dismissed.
69. Pending interlocutory application(s), if any, also stand(s) disposed of.
I agree (Sujit Narayan Prasad, J.)
(Rajesh Kumar, J.) (Rajesh Kumar, J.)
Birendra/A.F.R.
47