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2013 (1) TMI 738 - HC - Companies LawInfringement of trade mark - Whether Section 134 of the Trade Marks Act 1999 oust Section 20 of the Code of Civil Procedure 1908? - Amendment of pleadings - Held that - Whether Section 134 of the Trade Marks Act 1999 oust Section 20 of the Code of Civil Procedure 1908 - The answer to the aforesaid question is no longer res integra. In the decision reported as (DB) Intas Pharmaceuticals Ltd. v Allergan Inc 2006 (7) TMI 651 - Delhi High Court it was held by a Division Bench of this Court that Section 134 of the Trade Marks Act does not whittle down the provisions of Section 20 of the Code of Civil Procedure but provides an additional forum and a place for filing a suit in case of an infringement of a trademark. Amendment of pleadings - It was felt that the provision for amendment of pleadings was one of the significant sources of delay in the judicial process. In the year 1999 as per the recommendations of Law Commission the provision for amendment of pleadings was altogether deleted by Amendment Act No.46 of 1999. The deletion of the provision led to widespread protests by lawyers and different legal bodies and as a result in the year 2002 the provision was once again introduced albeit with a rider by Amendment Act No.22 of 2002. By virtue of said amendment a proviso was appended to Rule 17 which reads as under - Provided that no application for amendment shall be allowed after the trial has commenced unless the Court comes to the conclusion that in spite of due diligence the party could not have raised the matter before the commencement of trial. As held by the Supreme Court in Vidyabai is deemed to commence when the issues are settled and the case is set down for recording of evidence. In the instant case the learned Single Judge settled issues in the present suit on March 04 2010 and set out the suit for final hearing for the parties had agreed between the parties that they would not lead any evidence in the suit and the learned Single Judge shall decide the suit on the basis of the pleadings of the parties and examine the original documents filed by the parties if necessary at the time of hearing. Thus the trial commenced in the present suit on March 04 2010. The respondents could have easily incorporated amendments (a) and (f) in the plaint filed by them but they failed to do so due to oversight and bona fide error. It is not the case of the respondents that in spite of exercise of due diligence they could not incorporate amendments (a) to (f) in the plaint filed by them. Such being the factual position the application for amendment of plaint filed by the respondents in respect of amendments (a) to (f) could not have been allowed. We note the dictum of law laid down by the Supreme Court in State of A.P. & Ors v Pioneer Builders & Ors 2006 (9) TMI 534 - SUPREME COURT OF INDIA that one distinct cause of action cannot be substituted for another nor the subject-matter of the suit can be changed by means of an amendment. Applying the same analogy it can safely be concluded that it is impermissible for a plaintiff to change the ground for invocation of jurisdiction of a Court by means of an amendment. We are also of opinion that the conduct of the respondents of deleting paragraph 14 of the (original) plaint which was demonstrative of paltry circulation of magazine VOGUE in India between the years 2000 to 2007 and thus militated against the case set up by the respondents that said magazine was widely circulated in India since last two decades is a very strong pointer to the fact that the respondents sought to remove the defects occurring in their plaint by means of amendment of the plaint. In view of above discussion the impugned order dated November 18 2011 passed by the learned Single Judge allowing the amendment of plaint and impleading Priority Marketing Pvt. Ltd. as defendant No.2 in the present suit is set aside. - Decided in favour of appellant.
Issues Involved:
1. Territorial jurisdiction of the Court. 2. Proper and necessary parties in the suit. 3. Bar under Section 53 of the Trade Marks Act, 1999. 4. Bar under Section 48(2) of the Trade Marks Act, 1999. 5. Proper institution and verification of the plaint. 6. Suppression of material facts and clean hands. 7. Acquiescence, delay, and laches. 8. Infringement of the trademark under Section 29(1) and Section 29(2) of the Trade Marks Act, 1999. 9. Monopoly over a dictionary word with descriptive meaning and common usage. 10. Reputation and goodwill of the Plaintiff No.1's trademark in India. 11. Unfair advantage or detriment to the distinctive character or repute of the Plaintiff No.1's trademark. 12. Passing off by the Defendant. 13. Honest adoption and prior use of the Defendant's trade name. 14. Entitlement to relief. Detailed Analysis: 1. Territorial Jurisdiction of the Court: The Court examined whether it had territorial jurisdiction to entertain the suit. The respondents argued that the Court had jurisdiction because the respondent No.2 carried on business within the territorial jurisdiction of the Court. The appellant contested this, stating that the mere presence of a branch office in Delhi was insufficient to confer jurisdiction. The Court found that the trial commenced on March 4, 2010, and the respondents could have incorporated relevant details before this date. The Court concluded that the application for amendment of the plaint to include new grounds for jurisdiction was not permissible after the trial had commenced. 2. Proper and Necessary Parties: The appellant filed an application seeking deletion of respondent No.2 from the array of parties, arguing that respondent No.2 was not a registered proprietor/user of the trademark and thus not a necessary or proper party. The Court examined the role of respondent No.2 and found that the respondents had not demonstrated the necessity of including respondent No.2 as a party. 3. Bar under Section 53 of the Trade Marks Act, 1999: The appellant argued that respondent No.2, being a non-registered user of the trademark, was barred from filing a suit for infringement under Section 53 of the Trade Marks Act, 1999. The Court considered this argument in light of the overall context of the case. 4. Bar under Section 48(2) of the Trade Marks Act, 1999: The appellant contended that respondent No.1 was barred from claiming benefits of the use of the trademark by respondent No.2 under Section 48(2) of the Trade Marks Act, 1999. The Court evaluated this contention alongside the other issues raised. 5. Proper Institution and Verification of the Plaint: The appellant questioned whether the plaint was properly instituted and verified by a competent and authorized person. The Court reviewed the documentation and procedures followed in the filing of the plaint. 6. Suppression of Material Facts and Clean Hands: The appellant accused the respondents of suppressing material facts and not approaching the Court with clean hands. The Court scrutinized the respondents' conduct and the completeness of their disclosures. 7. Acquiescence, Delay, and Laches: The appellant claimed that the suit was barred due to acquiescence, delay, and laches on the part of the respondents. The Court assessed the timeline of events and the respondents' actions to determine if these defenses were applicable. 8. Infringement of the Trademark: The Court examined whether the appellant had infringed the trademark of respondent No.1 under Section 29(1) and Section 29(2) of the Trade Marks Act, 1999. The analysis included a review of the similarities between the trademarks and the likelihood of confusion. 9. Monopoly over a Dictionary Word: The respondents claimed monopoly over the word "VOGUE," which the appellant argued was a common dictionary word with a descriptive meaning. The Court considered the distinctiveness and usage of the word in the context of trademark law. 10. Reputation and Goodwill: The respondents asserted that their trademark "VOGUE" had attained significant reputation and goodwill in India. The Court evaluated evidence of the trademark's recognition and market presence. 11. Unfair Advantage or Detriment: The Court analyzed whether the appellant's use of the trade name "JUST IN VOGUE" took unfair advantage of or was detrimental to the distinctive character or repute of the respondents' trademark. 12. Passing Off: The respondents claimed that the appellant was passing off its services as those of the respondents by using a similar trade name. The Court assessed the likelihood of deception and confusion among consumers. 13. Honest Adoption and Prior Use: The appellant argued that its trade name was an honest adoption and had been used prior to the respondents' use in India. The Court considered the evidence of prior use and the intent behind the adoption of the trade name. 14. Entitlement to Relief: The Court determined whether the respondents were entitled to the reliefs sought, including a permanent injunction, rendition of accounts, and delivery/destruction of infringing goods. Conclusion: The Court allowed the appeal, setting aside the order permitting the amendment of the plaint and the impleadment of Priority Marketing Pvt. Ltd. as a defendant. The Court emphasized that the respondents failed to demonstrate due diligence in raising the amendments before the commencement of the trial and that the amendments sought to introduce new grounds for jurisdiction, which was impermissible. The appeal was allowed with no costs.
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