The Defendant's contention that the amendment lacks bona fides also deserves to be rejected. The mere fact that the suit was filed five years after
the cease and desist notice does not in any manner make the suit lack bona
fides. There is nothing to indicate that the Plaintiff was aware of the Defendant's mark being registered and therefore the question of suppression of the same does
not arise. In any case, it is not as though the Plaintiff secured any order from this Court on the basis that the Defendant's mark was unregistered. As regards the
grant of leave under Clause 14, the Defendant has filed an application for
revocation of the same which shall be considered by this Court on its own merit. If the Defendant disputes the contents of the amendment, it shall be open for it
to do so after the amendment is allowed. As correctly submitted on behalf of the Plaintiff, the Defendant cannot seek an adjudication on the merits of the proposed amendment at this stage.
BOMBAY HIGH COURT
S. Narendra Kumar & Co vs Apricot Foods Pvt. Ltd. on 29 May, 2013
Bench: S. J. Kathawalla
Citation; 2013 (4) ALL M R 561
1. The above Suit is filed by the Plaintiff to restrain the Defendant from infringing the Plaintiff's registered mark "EVEREST" and the registered marks set B
out at Exhibits C-1 to C-40 of the Plaint. The Plaintiff has also sought to restrain the Defendant from using the mark "EVEREST" or any other identical or deceptively similar mark so as to pass off the Defendant's products as that of the Plaintiff's.
::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -2- CHS 1319 of 2012
2. According to the Plaintiff, when the Suit was filed on 28th January rt
2010, the goods of the Defendant were being sold outside Mumbai. However, ou
after the filing of the Suit in or around August 2012, the Plaintiff came to know that the Defendant's goods were also being sold/marketed in Mumbai. The Plaintiff's employee went to various stores in Mumbai and found the Defendant's C
products in these stores. It is to bring on record this subsequent fact that an amendment is being sought to the Plaint. h
3.
ig
The Learned Advocate appearing for the Defendant has opposed the Chamber Summons on the following grounds: H
i) that the proposed amendment amounts to taking away admissions, and/or accrued and/or vested rights in favour of the Defendant. y
ii) that in the plaint, the Plaintiff has admitted that the Defendant's ba
goods are not available in Mumbai and/or within the territorial jurisdiction of this Court. The Defendant is situated outside Mumbai and the cause of action of om
passing off is outside the territorial jurisdiction of this Court. The Plaintiff has instituted the Suit on the basis of the alleged infringement and has sought to join the cause of action of passing off as being ancillary to that of infringement. B
iii) that the trademark "EVEREST" used by the Defendant is registered. In view thereof, a registered trademark cannot be infringed by virtue of the Plaintiff's use of another registered trademark. Therefore, the Suit for infringement cannot lie against the Defendant and is barred by law in view of ::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -3- CHS 1319 of 2012 Sections 28 (3), 29 (2) and 32 (e) of the Trademark Act, 1999 ("the Act"). rt
iv) that the Plaintiff's reliance upon Section 124 of the Act does not ou
confer any jurisdiction upon and/or enable this Court to entertain a Suit for infringement against the registered Proprietor of the allegedly offending mark. In any view of the matter and in the instant case, the Plaintiff cannot and should C
not have filed the present Suit as an infringement action because the Defendant had, on 16th May, 2005, notified the Plaintiff that its registration application was h
pending before the Trademark Registry. Considering that the Plaintiff did not ig
oppose registration and chose to wait for five years before filing the present Suit, it was incumbent upon the Plaintiff to check and identify whether the H
Defendant's registration application had attained fruition. Thus, the Plaintiff had noticed and/or should have noticed the Defendant's registration of the y
trademark "EVEREST" in Classes 29 and 30 for and in respect of savouries ba
and/or potato chips. With this knowledge, the Plaintiff would have desisted from instituting the present Suit for an infringement action. om
v) that the proposed amendment, if granted, would legitimise a Suit which, as originally instituted, was incompetent and defective. The natural B
consequence of this is that the Defendant would be deprived of vested rights accrued in its favour and/or the admissions made in the Plaint. vi) that it is a settled position in law that an amendment, the effect of ::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -4- CHS 1319 of 2012 which destroys the accrued rights and takes away the benefit of admission, ought rt
not to be granted. In support of this contention, the Defendant has relied on the ou
decisions in (i) M/s. Modi Spinning & Weaving Co. Ltd. and another vs. Ladha Ram & Co1., (ii) Herdal vs. Kalyanmal & Ors.2 and (iii) Rasiklal Manikchand C
Dhariwal and others vs. Kishore Washwani & Nitesh Ashok Wadhwani3. vii) that since April 2005, the Plaintiff has been aware of the h
Defendant's use of the trademark "EVEREST" and its registration application ig
pending in respect of the said trademark. Despite knowledge of this fact, the Plaintiff has taken no steps for nearly five years on the ground that the H
Defendant's goods were not easily available and were being sold locally at Rajkot.
y
ba
viii) that thereafter, the Plaintiff instituted the present Suit in the year 2010, suppressing the Defendant's registration of the trademark which it was om
and/or ought to have been aware of.
ix) that after filing the present Suit and failing to secure any interim B
relief in the matter, the Plaintiff went ahead and secured Leave under Clause 14 of the Letters Patent ex parte and/or without notice to the Defendant. It is therefore submitted that the Plaintiff's conduct in the present proceedings is 1 (1976) 4 SCC 320
2 (1998) 1 SCC paragraph 9
3 2005 (31) PTC 401
::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -5- CHS 1319 of 2012 consistently lacking bona fides and/or candour. It is therefore submitted that the rt
Chamber Summons be dismissed with costs. ou
4. The Learned Senior Advocate appearing for the Plaintiff, relying on the decisions of the Hon'ble Supreme Court in the case of Rajesh Kumar C
Aggarwal vs. K.K. Modi4 and Baldev Singh and others vs. Manohar Singh and another5, submitted that the amendment to bring subsequent events on record h
ought to be allowed liberally. If the Defendant has any dispute with the ig
statements/contentions sought to be introduced by way of the amendment, it would be a dispute on the merit of the proposed amendment which cannot be H
gone into at the stage of making an application for amendment. y
4.1 It is submitted by the Plaintiff that the contention of the Defendant, ba
that the proposed amendment amounts to withdrawing of admissions and/or taking away accrued and/or vested rights in favour of the Defendant, is om
completely baseless. The Plaintiff has not sought to withdraw any statement originally made in the plaint. The only amendment sought is to add to the plaint that after the filing of the Suit, the Plaintiff has come to know that the goods of B
the Defendant are available in Mumbai. This cannot be termed as withdrawal of any admission or statement made in the Plaint. 4 (2006) 4 SCC 385
5 (2006) 6 SCC 498
::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -6- CHS 1319 of 2012 4.2 It is submitted that for reasons alleged or otherwise, the submission rt
that the Suit, as originally filed, was defective and not maintainable and that the ou
alleged vested right was sought to be taken away by the proposed amendment, is false and incorrect and is based on a complete misreading of the Act and that the submission of the Defendant is belied by Section 124 of the Act. C
4.3 The Learned Senior Advocate appearing for the Plaintiff has further h
submitted that the contention of the Defendant that the amendment lacks bona ig
fides, is equally lacking in merits. The mere fact that the Suit was filed five years after the cease and desist notice does not indicate in any manner that it lacked H
bona fides. There is nothing to indicate that the Plaintiff was aware that the Defendant's mark was registered and therefore, the question of suppression of y
any fact by the Plaintiff, as alleged, does not arise. As regards leave under ba
Clause 14 of the Letters Patent obtained by the Plaintiff, it is submitted that the Defendant has filed an application for revocation of the same and the said om
application will be decided on its own merits. It is submitted that if the Defendant disputes the contents of the amendment, it shall be open for it to do so after the amendment is allowed. The Defendant cannot seek an adjudication B
on the merits of the proposed amendment at this stage. 4.4 It is submitted that the judgments cited on behalf of the Defendant are not at all applicable to the facts of the present case. It is therefore submitted ::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -7- CHS 1319 of 2012 that the submissions advanced on behalf of the Defendant be rejected and the rt
Chamber Summons be allowed.
ou
5. I have considered the submissions advanced on behalf of the Plaintiff as well as the Defendant. As set out herein above, when the Suit was filed on 28th C
January 2010, according to the Plaintiff, the goods of the Defendant were being sold outside Mumbai. However, after the filing of the Suit, in or around August h
2012, the Plaintiff came to know that the Defendant's goods were also being ig
sold/marketed in Mumbai. It is to bring on record this fact that an amendment is sought to the Plaint.
H
6. The contention of the Defendant that the proposed amendment y
amounts to withdrawing of admissions and/or taking away accrued and/or ba
vested rights in favour of the Defendant is completely untenable and baseless. The Defendant contends that by the proposed amendment, the Plaintiff is om
resiling from an alleged admission that the goods of the Defendant are not available in Mumbai and/or within the territorial jurisdiction of this Court and that the cause of action of passing off is outside the territorial jurisdiction of this B
Court. In fact, the Plaintiff has in no manner sought to withdraw any statement originally made in the Plaint. This is apparent from the fact that the Plaintiff has, in the proposed amendment, made no deletion whatsoever to the original plaint. There is no substitution either. The plaint, as originally filed, remains intact. By ::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -8- CHS 1319 of 2012 the proposed amendment, the only addition sought to be made is that in August rt
2012 i.e. much after the filing of the Suit, the Plaintiff has come to know that the ou
goods of the Defendant are available in Mumbai. This is an event subsequent to the filing of the Suit. Narration of an event that has transpired in August 2012 cannot tantamount to withdrawal of any statement made in 2010 or take away C
the alleged vested rights of the Defendant. h
7. The Defendant has further contended that the Suit, as originally ig
filed, did not lie and was barred by law in view of the fact that the Defendant had registered the mark "EVEREST". It is also the Defendant's contention that H
since the passing off, as originally pleaded, was outside Mumbai, the entire Suit, as originally filed, was defective and not maintainable and this alleged vested y
right was sought to be taken away by the amendment. In this connection, the ba
Defendant has relied upon Sections 28 (3), 29 (2) and 30 (2) (e) of the Act to contend that the Suit for infringement cannot lie and is barred by law. The om
Plaintiff, in response to the submission, has correctly submitted that this contention of the Defendant is based on a complete misreading of the Act. None of the aforesaid provisions incorporate any bar on filing of a suit for infringement B
in a case where the Defendant's mark is also registered. In fact, the Defendant's submission cannot be accepted in view of Section 124 of the Act which clearly states that in a suit for infringement of a trademark, where the Defendant raises a defence under Section 30 (2) (e) of the Act to the effect that the Defendant's ::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -9- CHS 1319 of 2012 mark is also registered and the Plaintiff pleads the invalidity of the Defendant's rt
mark, the Court trying the suit shall, if any proceedings for rectification of the ou
Register in relation to the Plaintiff or Defendant's trademark be pending before the Registrar or before the Appellate Board, stay the suit pending the final disposal of such proceedings. In Section 124 (5) of the Act, it is clarified that the C
stay of the suit for infringement of a trademark under Section 124 of the Act shall not preclude the Court from making any interlocutory order during the h
period of the stay. In the present case, the Plaintiff's application for rectification ig
of the register in relation to the Defendant's mark is pending. Section 124 of the Act thus clearly shows that a suit for infringement is not barred by the mere fact H
that the Defendant's mark is also registered. In fact, the said provision clearly contemplates that a suit can be filed and would lie. The course of action to be y
adopted in such a suit is also provided for. ba
8. The response of the Defendant to Section 124 of the Act, viz. that it om
does not confer any jurisdiction upon and/or enable the Court to entertain a suit for infringement against the registered Proprietor of the allegedly offending mark, runs contrary to the fundamental principle that the jurisdiction of a Court B
is not excluded unless barred. As correctly submitted on behalf of the Plaintiff, the Defendant has not disclosed any bar to the filing of a suit for infringement in circumstances where the Defendant's mark is also a registered mark. ::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -10- CHS 1319 of 2012 rt
9. Consequently, the contention of the Defendant that the Suit for infringement was barred and therefore the cause of action for passing off, which ou
at the time of the filing of the Suit was outside Mumbai, cannot be clubbed with the suit for infringement, cannot be accepted. C
10. The Defendant's contention that the amendment lacks bona fides also deserves to be rejected. The mere fact that the suit was filed five years after h
the cease and desist notice does not in any manner make the suit lack bona ig
fides. There is nothing to indicate that the Plaintiff was aware of the Defendant's mark being registered and therefore the question of suppression of the same does H
not arise. In any case, it is not as though the Plaintiff secured any order from this Court on the basis that the Defendant's mark was unregistered. As regards the y
grant of leave under Clause 14, the Defendant has filed an application for ba
revocation of the same which shall be considered by this Court on its own merit. If the Defendant disputes the contents of the amendment, it shall be open for it om
to do so after the amendment is allowed. As correctly submitted on behalf of the Plaintiff, the Defendant cannot seek an adjudication on the merits of the proposed amendment at this stage.
B
11. The judgments cited on the point that amendments which attempt to withdraw admissions made earlier ought not to be allowed, are in no manner applicable to the facts of the present case. As stated herein above, there is no admission or case inconsistent with the original case which is sought to be ::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -11- CHS 1319 of 2012 incorporated by the Plaintiff by way of the proposed amendment. rt
12. As regards the case of Rasiklal Maniklal Dhariwal (supra) strongly ou
relied upon by the Defendant, the facts of the said case were completely different. In the said case, the Plaintiff had originally pleaded that it had C
conceived the mark for the first time in 1961. After the Defendant took a stand that it was using the mark prior to 1961, the Plaintiff sought to amend its plaint h
to plead that the Plaintiff was in fact using the mark not from 1961 but from ig
1958. Paragraphs in the original plaint were sought to be substituted. This was held to be an attempt to resile from an admission already made, that the Plaintiff H
had conceived the mark in 1961. There is no such resiling from any admission in the present case. It is pertinent that in the very same judgment, on the basis of a y
subsequent event, the Plaintiff contended that after the filing of the suit, the ba
Plaintiff had come to know that the Defendant had, even prior to the filing of the suit, assigned its right in favour of another party. The plaint was sought to be amended to implead the assignee as a Defendant. This amendment was in fact om
allowed by the Court.
B
13. In the circumstances the Chamber Summons is allowed. Amendment to be carried out on or before 10th June 2013 and a copy of the amended plaint to be forthwith served on the Advocate for the Defendant. However, it is clarified that all the contentions of the Defendant qua the contents of the amendment introduced to the Plaint are kept open. The Chamber Summons is accordingly ::: Downloaded on - 03/06/2013 19:00:32 ::: KPP -12- CHS 1319 of 2012 disposed of. There shall be no order as to costs. rt
(S.J. KATHAWALLA, J.)
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