TMI Blog1996 (11) TMI 446X X X X Extracts X X X X X X X X Extracts X X X X ..... the defendants is actionable and amounts to acts of passing off as the waterproof raincoats manufactured by the first defendant bearing the trade mark `BACK BACK' are phonetically and visually similar to those of the plaintiff hearing the trade mark `DUCK BACK', it must be held that the plaintiff had made put a case for actionable breach of infringement of plaintiff's trade mark as well as actionable act of passing off by the defendants of their goods as if they were plaintiff's goods and, therefore, the plaintiff's suit would be required to be decreed. In the result the appeal succeeds and is allowed. The judgment and order of dismissal of the plaintiff's suit as passed by the Trial Court and as confirmed by the High Court are set aside. Plaintiff's Original Suit No.123 of 1982 in the Court of Chief Judge, City Civil Court, Hyderabad is ordered to be decreed as prayed for. Appeal is accordingly allowed . - C.A. 14610 OF 1996 - - - Dated:- 18-11-1996 - A.S. ANAND, S.B. MAJMUDAR, JJ. JUDGMENT Leave granted. By consent of learned advocates of parties the appeal arising from the Special Leave Petition was finally heard and is being disposed of by this judgment. A short ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . The learned Trial Judge in that suit being Original Suit No.238 of 1980 which will be styled as the first suit, passed the judgment and degree dated 6th April 1982 and dismissed the same on the ground that there was no infringement of plaintiff's trade mark goods named and styled as `DUCK BACK' and, therefore, the reliefs as prayed for in the plaint were not maintainable and could not be granted. It is the case of the plaintiff that it was misinformed and ill-advised when it instituted the first suit for injunction restraining the defendants from manufacturing, selling, distributing and sealing in any manner with the waterproof `DUCK BACK' raincoats. The plaintiff further alleged that even thereafter in 1982 it came to its notice that defendants were carrying on the infringement of plaintiff's registered trade mark and were passing off their goods as goods of the plaintiff and, therefore, they were liable to be restrained by way of permanent injunction from infringing the trade mark and copyright of the plaintiff as well as from passing off their goods is the second suit and from which the present appeal arises was registered as Original Suit No.123 of 1982 before the Chief Jud ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for the printing or uttering the mark DACKBACK with all papers containing the said mark such as letter beads. bills or advertisements material ; (e) an enquiry into damages and such sum as may he found due thereon ; (f) to grant such other relief or reliefs as this Hon'ble Court may deem fit and proper in the circumstances of the case ; (g) award costs of the suit." The defence. amongst others, was that they had nor infringed the plaintiff's trade mark and in any case the suit was barred by res judicata and by Order 2 Rule 2 sub- rule (3), CPC in view of the fact that the earlier suit based on the same cause of action was already dismissed by the same cause of action was already dismissed by the Trial Court on 6th April 1982. As noted earlier. the learned Trial Judge dismissed the suit on the ground that it was barred by Order 2 Rule 2 sub-rule (3) of CPC. So far as the learned Single Judge of the High Court was concerned, he agreed with the plaintiff on merits and cook the view that the waterproof raincoats manufactured by the first defendant bearing trade mark `DACK BACK' phonetically and visually resembled the waterproof raincoats manufactured by the plaintiff bearing ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ue and unpaid, A sues B in 1908 only for the rent due for 1906. A shall not afterwards sue B for the rent due for 1905 or 1907." A mere look at the said provisions shows that once the plaintiff comes to a court of law for getting any redress basing his case on case on an existing cause of action he must include in his suit the whole claim pertaining to that cause of action. But if he gives up a part of the claim based on the said cause of action or omits to sue in connection with the same then he cannot subsequently resurrect the said claim based on the same cause of action. So far as sub-rule (3) Rule 2 of Order 2, CPC is concerned, bar of which appealed to both the courts below, before the second suit of the plaintiff can be held to be barred by the same it must be shown that the second suit is based on the same cause of action on which the same in both the suits and if in the earlier suit plaintiff had not sued for any of the reliefs available to it on the basis of that cause of action, the reliefs which it had failed to press in service in that suit cannot be subsequently prayed for except with the leave of the Court. It must, therefore, be shown by the defendants for support ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of his plea under 0.2.r.2, Civil Procedure Code. The learned trial Judge, however, without these pleadings being on the record inferred what the casue of action should have been from the reference to the previous of deduction. At the stage of the appeal the learned District Judge noticed this lacuna in the appellant, cage and pointed out, in out opinion rightly, that without the plaint in the previous suit being on the record, a plea of a bar under 0.2 r.2, Civil Procedure Code was not maintainable In view of the aforesaid authoritative pronouncement of the Constitution Bench of this Court the learned Trial Judge as well as learned Single Judge of the High Court ought to have held that the plea raised by the defendants in the present case is barred at the threshold as the defendants had not produced on the record of the Trial Court the pleadings in the firs suit. Thus there is a complete bar against the defendants from raising the bar of Order 2 Rule 2 sub-rule (3) against the plaintiff in the present case. In this connection, we may refer to one submission made by the learned counsel for the defendants which appealed to the learned Dingle Judge of the High Court. He submitted t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ration shows that if a landlord sues the tenant in 1008 for the rent due till that year and omits to sue for rent for any of the previous years which had then accrued due he cannot subsequently sue the tenant for the previous rent due, claim for which was given up in the suit, It is obvious that a subsequent suit would not be barred in case of rent falling due after the first suit, say, for the year 1909 or 1910 etc. as that default would give him a fresh cause of action. In the facts of the present case it becomes obvious that when earlier suit was filed in 1980 the plaintiff had a cause of action regarding the alleged illegal use of his trade mark `DACK BACK' by the defendants and had also a grievance regarding the then existing deceitful action of the defendants in trying to pass of its goods `DUCK BACK'. Therefore, the cause of action foe the first suit of 1980 was based on the infringement of plaintiff's trade mark `DUCK BACK' by the defendants till the date of the suit filed in 1980. The grievance regarding passing off of the defendants' goods as if they were plaintiff's goods was also confined to the situation prevailing on the date of the earlier suit No.238 of 1980. That s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hich is confusing similar to or deceptively resembling the plaintiff's said mark or design DUCKBACK, but also have invaded the common law tight of the plaintiff by passing off goods in class 25, not being those of the plaintiff's manufacture or sold by the plaintiff. 16. By the two letters dated 20.4.1982 addressed to the defendants separately, the plaintiff called upon the defendants to desist from marketing, selling or offering for sale the said goods in Class 25 with the mark DACKBACK. Xerox copy of the said two letters dated 30.4.1982 are filed herewith and marked `D' and `E'. 17. By two letters both dated 25.5.1982 from Mohammed Raftullah, acting as Advocate for both the defendants, baldly refuted the factual statements in the plaintiff's said letters dated 30.4.1982 and set up the defence of RES JUDICATA and also purported to challenge and deny the very validity of the registration of the plaintiff's trade mark DUCK BACK. The plaintiff reserves its comments on the said letters both dated 25.5.1982 are filed herewith and marked `F' and `G' respectively. 18. The Plaintiff has suffered loss which cannot be easily assessed and would suffer further loss and damage unless the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach of infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper reliers, for all times to come in future defendant of such a suit should be armed with a licence to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts. We posed a question to the learned counsel for the defendants as to whether after the disposal of the earlier suit if the defendants had suspended their business activities and after a few years had resumed the same and had started selling their goods under the trade mark `DACK ..... X X X X Extracts X X X X X X X X Extracts X X X X
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