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Sinhal Metal Industries Private Limited v/s Royal Enterprises

    Suit Appeal No. 738 of 1992

    Decided On, 02 December 1997

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE VIJENDER JAIN

    For the Appearing Parties: Ajay Sawhney, Parvin Anand, Advocates.



Judgment Text

VIJENDER JAIN, J.


(1) THIS is an application under Order 6 Rule 17 read with Section 151 of the Code of Civil Procedure filed by the plaintiff/applicant. During the pendency of the suit, the plaintiff obtained the registration of its mark 'classic' bearing No. 503609b for tooth brushes, hair brushes, nail brushes in Clause-21 under the Trade and Merchandise Mark Act, 1958. The plaintiff had filed the suit for passing off. After obtaining the registration of its mark, by this application plaintiff wants to amend plaint and in addition to the relief of passing off, wants to add relief for infringement. Plaintiff wants to amend the title of the suit and paragraphs 5,11,17 and 19 of the plaint.


(2) AMENDMENT application has been opposed by the learned counsel appearing for the defendants/non-applicants. Mr. Ajay Sahni has contended that by proposed amendment the plaintiff wants to change the very basis and nature of the suit. Mr. Sahni has contended that action of passing off and infringement are two distinct cause of actions and plaintiff cannot be permitted to now claim the cause of action on account of infringement of trade mark after having filed a suit for passing off. Mr. Sahni has contended that if plaintiff wants to claim any damages on account of infringement then the remedy is open for it to file a separate suit on this cause of action. In support of his contentions, Mr. Sahni has relied upon a judgement of this Court in IA No. 442/94 in suit No. 607/85, which was delivered on 19. 10. 1995.


(3) ON the other hand, Mr. Praveen Anand, learned counsel appearing for the plaintiff/applicant has contended that the cause of action for maintaining the suit on account of passing off or infringement is on account of the wrong of the defendants. In cases of infringement the defendants are committing statutory wrong. Therefore, by amending the plaint and incorporating the relief on account of infringement, it is enlargement of that wrong which is claimed by virtue of filing suit for passing off. Learned counsel for plaintiff/applicant has also contended that suit of passing off can be converted into suit for infringement. In support of his contentions, he has relied upon A Abdul Karim Sahib Vs. A Shanmugha Mudaliar 1967. (2) Madras Law Journal 468 and Anglo Dutch Colour and Varnishing Works Limited Vs. Indian Trading House 1984 PTC 54. Mr. Anand has contended that if amendment is not allowed, it will lead to multiplicity of proceedings as plaintiff has to file another suit.


(4) I have heard the learned counsel for the parties at length. In an application for amendment what the Court has to see is whether the amendment sought for is not mala fide and it does not extend the period of limitation. The application for amendment has been filed at the early stage. Issues in the suit have not yet been framed and it is not the case of the non-applicant/defendants that amendment sought for is mala fide. Dealing with the arguments advanced by the learned counsel for both the parties whether the application amounts to change the cause of action, to my mind the fundamental principle, which governs the law relating to infringement, are same as are governed the law of passing off. Action for passing off is brought by a user of trade mark when the trade mark is not registered. The fact remains that plaintiff alleges that it has suffered on account of similar goods being passed off by the defendant deceptively as that of plaintiff. Action for infringement on the same principle lies when the trade mark is registered. That being so then to say that is in a different cause of action to maintain a suit for infringement when suit for passing off is still pending, is not correct. Even otherwise, if the amendment application is rejected, this will lead to multiplicity of proceedings between the parties, which should be avoided. I am in agreement with the view taken by the Madras High Court in A Abdul Karim Sahib Vs. A. Shanmugha Mudaliar's case (supra), which was followed by this

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Court in Anglo Dutch Colour and Varnishing Works Limited Vs. Indian Trading House's case (supra). (5) I, therefore allow the application. S. 738/92 (6) MR. ANAND says that amended plaint has already been filed. Let the same be taken on record. Let amended written statement be filed within 6 weeks. Replication thereto before the date fixed. (7) LIST this matter before Joint Registrar on 27. 4. 1998.
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