9911796707
TMI Blog2020 (3) TMI 1458X X X X Extracts X X X X X X X X Extracts X X X X ..... as part of a group, which included M/s. Stanvac Chemicals India Ltd. (hereinafter referred to as "Stanvac"), who were pioneers in the import and distribution of high-quality maintenance consumables since 1994. While admitting that the respondent itself was incorporated only in 2004, the plaint averred that the respondent was only supporting the import and maintenance activities of Stanvac and that, by the time the plaintiff came to be filed, the respondent was engaged in manufacture of conventional welding electrodes, under license from M/s. Oerlikon Schweisstechnik AG, Switzerland. With effect from 2004, averred the plaint, the trademark 'SUPERON' came to be adopted by the respondent, with respect to the trade and business of manufacturing, marketing and exporting of welding electrodes, being undertaken by it. It was pointed out that the word 'Superon' has no dictionary meaning, and formed an integral part of the tradename of the respondent. It was further averred, in the plaint, that, at the time of its adoption, no trademark, or label, 'SUPERON', was registered with the Registrar of Trade Marks. It was further contended, in the plaint, that the respondent ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lbeit of inferior quality, the plaint averred that the respondent was entitled to an injunction, against the appellant, from using its 'SUPERCROME' trademark. 4. Following on the above averments, CS (COMM.) 665/2017, filed by the respondent against the appellant, contained the following prayers: "36. The plaintiff, under the above stated facts and circumstances, prays:- (a). For a decree of permanent injunction restraining the defendant by themselves as also through; their directors, proprietors, individual proprietor, partners (if any), agents, servants, assigns, representatives, successors, distributors and all others acting for and on their behalf from using, selling, offering, for sale, advertising or displaying directly or indirectly or dealing in any other manner or mode in welding electrodes and all allied and cognate goods/products under the impugned trademark/label SUPERCROME or any other trademark/label dress identical with or deceptively similar to the plaintiff's trade mark/name/label amounting to or resulting in:- (i) Infringement of the plaintiff's said trade mark/name/label SUPERON; (ii) Passing off and violation of the plaintiff's said t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... intiff company in the year 2004, the trademark/name/label SUPERON came to be adopted. However, the trademark SUPERON has been originally adopted by the plaintiff group through Stanvac Chemicals India Limited, a sister concern of plaintiff in 1994 and has been used since then up to 2004 when the plaintiff company came to have been incorporated and started using the said trademark along with all the artistic features including colour combination of mustard yellow (in the background) and black with the swirl device engulfing the trademark SUPERON. The plaintiff coined, conceived and adopted the trademark/label and distinctive trademark without having any connection or connotation with regard to the trade and business of manufacturing, marketing, exporting of stainless steel welding electrodes, series of welding electrodes, stainless steel wires, stainless steel pickling products, maintenance and repair welding electrodes (hereinafter referred to as said goods). The trademark SUPERON of the plaintiff is having no dictionary meaning at all and the trademark/label formed integral part of the trade name of the plaintiff. At the time of adoption there was no such trademark or label existin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... by the plaintiff that they have came to know from the website of Trademark Registry that the defendant had applied for registration of the impugned trademark SUPERCROME. 3. It is prayed in the present matter that the defendant be permanently restrained from infringing the SUPERON mark and to pass off its goods under a similar trade name (SUPERCROME) as that of plaintiff SUPERON. Other ancillary reliefs were also sought by plaintiff 4. The defendant had filed the written statement stating that the plaintiff company came into existence in 2004 only but the defendant is using the name SUPERCROME or other similar names with suffix 'SUPER' (as mentioned in para-A-1 of preliminary objections) since 2001. It is further stated that the registration of plaintiff's device is under Classes 9 and 35 but not under class 7 and the defendants goods pertains to the class 7 and thus there cannot be any passing off. It is further stated that even the goods of the plaintiff have no registered trademark in classes 9 and 35. It is further stated that since the word 'SUPER' is a dictionary word, there cannot be any exclusive claim on this word. It is further stated that the defen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he defendant has also relied on the judgments titled Revajeetu Builders and Developers v. Narayanaswamy & Sons & Ors. passed in Civil Appeal No. 691/2009 dated 09.10.2009 of the Hon'ble Supreme Court, Jai Jai Ram Manohar Lal v. National Building Material Supply, Gurgaon, AIR 1267, 1970 SCR (i) 22 and Mohinder Kumar Mehra v. Roop Rani Mehra & Ors. passed in Civil Appeal No. 19977/2017 dated 11.12.2017 of Hon'ble Supreme Court. 12. As far as the judgment relied by the defendant i.e. Revajeetu (supra), the same is not applicable in the present matter because by way of this amendment, the plaintiff is not setting up a new case as it had already discussed this fact on Stanvac Chemicals India Limited in para-2 of its original plaint. The second judgment i.e. Jai Jai Ram Manohar Lal (supra) also does not apply in the present matter since by way of this amendment no prejudice is caused to the defendant as the trial has not begun. Moreover, this amendment is only sought by the plaintiff to put forward the case regarding duration period of trademark SUPERON. Similarly the third judgment i.e. Mohinder Kumar Mehra (supra) does not aid the plaintiff, but on the contrary lays down the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... legal proceedings also against the defendants subsequent to the present suit where again there is no reference to the user of the trademark SUPERON by Stanvac Chemicals India Limited. 5. In my view there is no error or infirmity in the impugned order. The suit is at the initial stage. Appellant/defendant merely seeks to place on record the fact that a company by the name of Stanvac Chemicals India Ltd. which is said to be the parent company has been using the trademark SUPERCROME since 1994 prior to the incorporation of the appellant/respondent company. As to whether this alleged user by a company Stanvac Chemicals India Ltd. in any manner enhance the merits of the case of the plaintiff are issues which will be gone into at the time of adjudication of the case. At this stage, while considering application for settlement the merits of the elements which are sought to be incorporated have not to be gone into by the court. Reference in this context may be hard to the judgment of the Supreme Court in Rajesh Kumar Agarwal and others vs. K.K. Modi and others, (2006) 4 SCC 385 where the Supreme Court held as follows:- "19. While considering whether an application for amendment should ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , advanced by learned Counsel, we may note, at this stage, that, for the first time, the appellant has sought to contend, in the rejoinder filed before us, that the learned Joint Registrar was not competent to adjudicate on the amendment application of the respondent, as the amendment sought was not 'formal' in nature. Having noted this, we proceed to allude, in greater detail, to the rival submissions of learned Counsel, before us. 12. We have heard, at length, Ms. Girija Krishna Varma, learned Counsel for the appellant and Mr. Sanjeev Sindhwani, learned Senior Counsel for the respondent. 13. Ms. Varma submits that, by the amendment proposed in para 8 of the plaint, the respondent was altering the very character of the suit. To drive home this point, she submitted thus: (i) In the plaint, the respondent's contention was that the date of incorporation of the respondent-Company was the date, from which the respondent was using the 'SUPERON' trademark. Stanvac figured only by way of a passing reference, in para 2 of the plaint. With the plaint, no invoices, or other material evidencing use, by the respondent, of the 'SUPERON' trademark, from 2004, were ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , of the 'SUPERON' trade mark, to a date prior to that declared in the suit, the respondent was substantially changing the nature of the suit. This was a clear attempt to circumvent the defence of the appellant, which already stood disclosed in the written statement filed by it in response to the respondent's plaint. (ix) Advancement, of the date of use, by the respondent, of the 'SUPERON' trademark to 1994, in place of 2004 (as declared in the plaint as originally filed) not only changed the nature of the suit, but nullified, in its entirety, the appellant's defence. (x) The introduction of Stanvac, at this stage of the proceedings, was unjustified. Stanvac was in the business of chemicals, whereas the respondent was manufacturing and trading in electrodes and welding wires. The only commonality, between Stanvac and the respondent, was that they had the same Directors. Ms. Varma also sought to contend that the learned Joint Registrar was not competent to adjudicate IA 10990/2018, as the amendment sought, by the respondent, in the said application, could not be regarded as 'formal' in nature. The learned Joint Registrar having acted in excess of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... amsung Leasing Ltd. MANU/DE/2107/2017 and Rahul Gupta 206 (2014) DLT 188, deserves serious consideration. 18. Premised, as this submission is, on Section 13 of the Commercial Courts Act, it would be appropriate to reproduce the said provision, thus: "13. Appeals from decrease of Commercial Courts and Commercial Divisions.- (1) Any person aggrieved by the judgment or order of a Commercial Court below the level of a District Judge may appeal to the Commercial Appellate Court within a period of 60 days from the date of judgment or order. (1A) Any person aggrieved by the judgment or order of a Commercial Court at the level of District Judge exercising original civil jurisdiction or, as the case may be, Commercial Division of a High Court may appeal to the Commercial Appellate Division of that High Court within a period 60 days from the date of the judgment or order: Provided that an appeal shall lie from such orders passed by a Commercial Division or Commercial Court that are specifically enumerated under Order XLIII of the Code of Civil Procedure, 1980 (5 of 1908) as amended by this Act and section 37 of the Arbitration and Conciliation Act, 1996 (26 of 1996). (2) Notwithst ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Division of the High Court, to the Commercial Appellate Division thereof, and the proviso, to the said sub-section merely clarifies that, in the case of orders specifically enumerated in Order XLIII of the CPC, such appeals shall lie. 22. Though he has not articulated the proposition in so many words, the submissions of Mr. Sindhwani would seem to indicate that the decisions of this Court in HPL (India) Ltd. MANU/DE/0347/2017, Samsung Leasing Ltd. MANU/DE/2107/2017 and Rahul Gupta 206 (2014) DLT 188 rule otherwise. 23. We do not think so. 24. In our view, these decisions, whether seen in isolation or in conjunction, would not militate against the maintainability of the present appeal, before us. 25. HPL (India) Ltd. MANU/DE/0347/2017 addressed the issue of maintainability of an appeal, passed by the learned Single Judge as a Commercial Court, on an application, by the plaintiffs, for taking, on record, new documents, filed along with affidavits by way of examination-in-chief of new witnesses, whom the plaintiffs desired to co-opt in evidence. The learned Single Judge, of this Court, permitted the documents to be taken on record and, consequently, allowed the Interlocutory Appli ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... learned Single Judge exercising commercial jurisdiction, under Order VI Rule 17 of the CPC, we are concerned with the challenge to an order, not passed under Order VI Rule 17 of the CPC, but, rather, under Rule 5 in Chapter II of the 2018 Original Side Rules. For ready reference, Rule 5, in Chapter II of the 2018 Original Side Rules may be reproduced, thus: "5. Appeal against the Registrars orders.-Any person aggrieved by any order made by the Registrar, under Rule 3 of this Chapter, may, within 15 days of such order, appeal against the same to the Judge in Chambers. The appeal shall be in the form of a petitioner bearing court fees of Rs. 2.65." Clause (2) in Rule 3 in Chapter II of the 2018 Original Side Rules empowers the Registrar to decide any "application to amend the plaint, petition, written statement, the application or subsequent proceedings where the amendment sought is formal". It was ostensibly in exercise of the powers conferred by this clause that the learned Joint Registrar passed the order, dated 25th April, 2019, disposing of IA 10990/2018, against which OA 58/2019 came to be filed by the appellant. That being so, OA 58/2019 was relatable to Rule 5 in Chapter I ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... The respondent before the Division Bench, i.e. the original defendant, advanced a preliminary objection to the maintainability of the appeal of the plaintiff, contending that, as the order, dated 5th February, 2013, of the learned Single Judge, had not been passed in exercise of ordinary original civil jurisdiction, the appeal, before the Division Bench, was barred by Section 100A of the CPC. For ready reference, Section 100A of the CPC may be reproduced, thus: "100A. No further appeal in certain cases.-Notwithstanding anything contained in any Letters Patent for any High Court or in any instrument having the force of law or any other law for the time being in force, where any appeal from an original or appellate decree or order is heard and decided by a single Judge of the High Court, no further appeal shall lie from the judgment and decree of such single Judge." The contention of the defendant-respondent, before the Division Bench in Rahul Gupta 206 (2014) DLT 188 was, therefore, that, as the jurisdiction exercised by the learned Single Judge, while adjudicating OA 19/2011, was appellate in nature, no second appeal lay thereagainst, in view of the proscription contained in Se ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ngle Judge, under Rule 4 in Chapter II of the 1967 Original Side Rules, was not, in fact, appellate, but original, and that the use of the word "appeal", in Rule 4, was actually a misnomer, viz. that (i) the Original Side Rules of this Court, having been framed in exercise of the powers conferred by Section 122 and 129 of the CPC, had to be read in conjunction with Sections 122, 128 and 129 of the CPC, (ii) Rule 1 of Chapter II of the 1967 Original Side Rules required every suit, coming before this Court in its ordinary original civil jurisdiction, to be tried and heard by a Single Judge, (iii) Rule 3 of Chapter II of the Original Side Rules provided that the powers of the Court, in relation to certain matters specified therein, would be exercised by the Registrar, (iv) the Registrar, while exercising such powers, under Rule 3 of Chapter II of the Original Side Rules was, therefore, acting as a delegate of the Court, i.e. of the learned Single Judge, (v) the order of the Registrar, under Rule 3 of the 1967 Original Side Rules was, therefore, an order passed by the Registrar in his capacity as delegate, which, in effect, was an order of the Court exercising original jurisd ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Registrar under Rule 3 on an application/matter against which no appeal is provided under the Code of Civil Procedure, Delhi High Court Act, 1966 or the Letters Patent of this Court', and 2. If the answer to above question is in negative, whether Rule 4 needs to be retained in the Rules or needs to be suitably amended so as to bring the said rule in conformity with the Code and Act" 38. Paras 11 to 15 of the report decided these issues, thus: "11. Rule 3 as quoted above gives certain powers to a Registrar to pass orders on specified applications/questions. A Registrar is competent to pass orders in respect of the matters specified in Rule 3 and not others. Rule 4 provides for appeal by a person aggrieved by the order made by the Registrar under Rule 3. If both the Rules are read harmoniously it will be incorrect to state that Rule 4 merely provides for a forum of appeal and does not provide for a right to appeal. Right to appeal is also specifically provided for and mentioned in Rule 4. All orders made under Rule 3 by a Registrar can be made subject matter of appeal under Rule 4. We, Therefore, need not refer to Order XLIII Rule 1 of the Code for deciding whether an appe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d that appeal would lie under Rule 4 of the Rules against any order made by the Registrar under Rule 3, irrespective of fact whether any appeal has been provided under Code or the Act. Accordingly, we hold that the appeal is maintainable against all orders passed by the Registrar under Section 3 of the Delhi High Court (Original Side) Rules, 1967 under Rule 4 to a Judge in Chamber. In view of the above conclusion and answer to question No. 1, we need not answer question No. 2. The above reference is disposed of." (Italics and underscoring supplied) 39. The Division Bench, in Rahul Gupta 206 (2014) DLT 188, however, distinguished the decision in Akash Gupta4 thus: "24. In the case of Akash Gupta v. Frankfinn Institute of Air Hostess Training & Anr. AIR 2006 Delhi 325 (DB), the question that arose for consideration was whether an appeal would lie under Rule 4 of Chapter II of the O.S. Rules against any order made by the Registrar under Rule 3 of Chapter II of the said Rules, even if no appeal was provided under the Code, the Act or the Letters Patent. The Court held that Rule 4 of Chapter II of the O.S. Rules provided not only a forum but also the right of appeal and all is made ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and 4 in Chapter II of the 1967 Original Side Rules. 42. We are, however, spared the necessity of referring this issue to a Larger Bench, for two reasons. 43. Firstly, as already noticed by us hereinabove, Rule 5 in Chapter II of the 2018 Original Side Rules, with which we are concerned in the present case, provides, once again, for an "appeal" against the order of the Registrar, passed under Rule 3. With the enactment of Rule 5 in Chapter II of the 2018 Original Side Rules, in our considered opinion, the view expressed in Rahul Gupta 206 (2014) DLT 188 can no longer be followed, for the simple reason that, if it were to be followed, it would imply that the legislators of the 2018 Original Side Rules once again employed, in Rule 5 of Chapter II therein, the "misnomer" of appeal. If it is difficult to presume that the legislature erred once, it is impossible to presume that the legislature erred twice over. The framers of the 2018 Original Side Rules must be deemed to have been cognizant of the view expressed in Rahul Gupta 206 (2014) DLT 188 (See Sakal Deep Sahai Srivastava v. U.O.I. (1974) 1 SCC 338 at 343). Were, as the Division Bench in Rahul Gupta 206 (2014) DLT 188 held, th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ommercial jurisdiction, which have not been passed under any of the provisions of the CPC, from the expansive sweep of Section 13(1A) of the Commercial Courts Act, within which such orders would undoubtedly stand covered. 45. We are, therefore, not persuaded to accept the preliminary objection, of Mr. Sindhwani, regarding the maintainability of the present appeal before us. For the sake of clarity, we reiterate our reasons, thus: (i) OA 58/2019 was filed in CS (COMM.) 665/2017. The learned Single Judge was, therefore, exercising jurisdiction under the Commercial Division of this Court. Section 13 of the Commercial Courts Act would, therefore, apply. On this aspect, we may note, Mr. Sindhwani, too, is ad idem. (ii) Sub-section (1A) of Section 13 of the Commercial Courts Act allows any person, aggrieved by the judgment or order of the Commercial Division of the High Court, to appeal to the Commercial Appellate Division of that High Court. Inasmuch as the learned Single Judge was sitting in the Commercial Division of this Court, while passing the impugned order dated 3rd July, 2019, the said order would be appealable to the Division Bench of this Court, on a plain reading of Sect ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dinary original civil jurisdiction". The Original Side Rules of this Court have, therefore, their own individual identity, distinct and different from the CPC, and we do not see any justification for applying, to an order passed under Rule 5 in Chapter II of the 2018 Original Side Rules, the restraints contained in Section 104, or Order XLIII, of the CPC, insofar as the availability of a remedy of appeal, against such order, under Section 13(1A) of the Commercial Courts Act, is concerned. We may note, in this regard, that, over four decades ago a Full Bench of this Court had held, in Print Pak Machinery Ltd. v. Jay Kay Papers Converters AIR 1979 Delhi 217, that in the event of any conflict, the Original Side Rules prevailed over the Civil Procedure Code, 1908. (vi) Nor are we persuaded to non-suit the appellant, by applying Rahul Gupta 206 (2014) DLT 188, which proceeds on the premise that the use of the word "appeal", in Rule 4 in Chapter II of the 1967 Original Side Rules-whereunder the order of the learned Single Judge had been passed in that case-was a "misnomer". The appeal before the Division Bench had, in that case, been filed under Section 10 of the Delhi High Courts Act. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ications for amendment are, at times, strategised attempts to infuse life blood into a cause which, otherwise, may be insupportable in law. The question of whether an amendment ought, or ought not, to be allowed, is a complex question, which requires the adjudicator, adjudicating the application for amendment, to acquaint himself with the entire scope, and ambit of the litigation, and the peripheries of the claim constituting the basis thereof. A reading of the impugned order, dated 3rd July, 2019, of the learned Single Judge, is itself an indicator of the number of factors, which have to be borne in mind while deciding whether an application, for amendment, ought, or ought not, to be allowed. Order VI Rule 17 of the CPC specifically empowers the Court to adjudicate on applications for amendment, which are, as a matter of course, hotly contested-the present case being a textbook example. Whether this jurisdiction ought, at all, to be delegated to the Registrar, may also be a live issue for consideration. Allowing for an appeal, against the decision of the Registrar, to the learned Single Judge may not, in every case, be a solution. 50. Be that as it may. We are required to decide ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... UPERON' trademark had been adopted by the respondent, and also claimed, for the first time, that the original adoption of the said trademark was by the plaintiff through Stanvac, introduced changes of substance, and not merely of form, in the original plaint. The amendment, sought by the respondent could not, therefore, be characterised as 'formal', within the meaning of clause (2) of Rule 3 in Chapter II of the 2018 Original Side Rules. 54. Per sequitur, the learned Joint Registrar could not have adjudicated on the merit of the said application for amendment and, in doing so, exceeded the jurisdiction vested in him by clause (2) of Rule 3 in Chapter II of the 2018 Original Side Rules. Mr. Sindhwani, we may note, did not, fairly, contest this issue beyond a point. The impugned order/judgment 55. Mr. Sindhwani has, however, sought to contend that, even if the order, dated 25th April, 2019, of the learned Joint Registrar in IA 10990/2018, were to be regarded as having been issued in excess of jurisdiction, that, by itself, would not entitle the appellant to relief, in view of the fact that the exercise of jurisdiction, by the learned Single Judge, while adjudicating OA ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... made as may be necessary for the purpose of determining the real questions in controversy between the parties". The provision, therefore, casts a mandate, on the court, to compulsorily allow all such amendments, as may be necessary for the purpose of determining the real questions in controversy between the parties. The proviso, to the Rule, dilutes the rigour of the Rule only in cases where the trial has already commenced, in which case the application for amendment could be allowed only if 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. In the present case, the proviso does not call for application, as the trial, in the suit, had not commenced, when the respondent applied for permission to amend its plaint. 59. All that was required to be seen, therefore, was whether the amendment, sought by the plaintiff-respondent, was necessary for the purpose of determining the real questions in controversy between the parties. The controversy, between the appellant and the respondent, in the present case, was relating to alleged infringement, and passing off, by the appellant, of the registered ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... king determination of the real questions in controversy between the parties shall be permitted to be made. The question of delay in moving an application for amendment should be decided not by calculating the period from the date of institution of the suit alone but by reference to the stage to which the hearing in the suit has proceeded. Pre-trial amendments are allowed more liberally than those which are sought to be made after the commencement of the trial or after conclusion thereof. In the former case generally it can be assumed that the defendant is not prejudiced because he will have full opportunity of meeting the case of the plaintiff as amended. In the latter cases the question of prejudice to the opposite party may arise and that shall have to be answered by reference to the facts and circumstances of each individual case. No straitjacket formula can be laid down. The fact remains that a mere delay cannot be a ground for refusing a prayer for amendment." (Emphasis supplied) 63. In Rajesh Kumar Aggarwal v. K.K. Modi (2006) 4 SCC 385, the Supreme Court held, without any equivocation, thus: "The real controversy test is the basic or cardinal test and it is the primary d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... prior user since 1994, too, was foreign to the question of its entitlement to amend its plaint. The contentions of Ms. Varma, which revolved essentially around the justification, of the respondent, to claim prior user since 1994, when Stanvac had adopted the "SUPERON" trademark, and of the sufficiency of the material, relied upon by the respondent for that purpose, cannot impact, in any manner, the merits of the application, under Order VI Rule 17, preferred by the respondent. We find ourselves in complete agreement with the learned Single Judge, in his observation that, as the appellant had, during the trial, every opportunity to contest the correctness of the claim, of the respondent, of prior user of the 'SUPERON' trademark from 1994, no prejudice would be said to have resulted, to the appellant, by allowing the respondents to so urge. At the end of the day, the court, adjudicating on an application for permission to amend the plaint, at the pre-trial stage, is to ensure that, by adopting an unduly narrow approach, the right of the party, seeking amendment, to bring relevant facts, to the notice of the court, is not prejudiced. Were the prayer for amendment, as made by ..... X X X X Extracts X X X X X X X X Extracts X X X X
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