2020 (3) TMI 1458 - HC - Indian Laws

Court affirms maintainability under Commercial Courts Act, allows trademark claim date amendment.

D & H India Ltd. Versus Superon Schweisstechnik India Ltd.

The court dismissed the appeal, affirming the maintainability under Section 13 of the Commercial Courts Act, 2015. It held that the appeal fell within the ... Maintainability of appeal - Challenge to permission to amend the plaint. The plaint contended that the appellant could not claim to be the proprietor of the trademark/label 'SUPERCROME', and could not, legally, use the said trademark without the leave and licence of the respondent, as, in the respondent's submission, the trademark 'SUPERCROME' was deceptively similar to the respondents trademark 'SUPERON' phonetically, visually and structurally. HELD THAT:- The right to amend, as confirmed by Order VI Rule 17 of the CPC, has advisedly been made expansive, save and except in cases where the trial has already commenced. Order VI Rule 17 permits the Court to, at any stage of the proceedings, allow either party to alter or amend his pleadings in such manner and on such terms as may be just, and specifically ordains that 'all such amendments shall be 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 - 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. 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 trademark of the respondent-as the respondent would aver. Prior user is one of the essential indicia, to be examined while adjudicating such a claim of infringement and passing off. The date from which the plaintiff-respondent was using the 'SUPERON' trademark was, therefore, fundamental to adjudication of the controversy. The amendment, sought by the respondent, in para 8 of its plaint, was with respect to the date from which the respondent could claim user of the said trademark. That, by itself, would be sufficient to justify allowing of the amendment sought by the respondent. The learned Single Judge cannot be faulted, in any manner, in allowing the prayer of the respondent, for permission to amend its plaint. The issue in controversy between the parties, related to infringement, or otherwise, by the appellant, of the registered trademark of the respondent, under the Trademarks Act, by usage of the trademark 'SUPERCROME'. The contention of the respondent, as the plaintiff in the suit, was that the trademark/name/label 'SUPERCROME' was deceptively similar to the respondent's trademark 'SUPERON'. Fundamental, to adjudication of such a lis, would be the dates from which the appellant, and respondent, operated their respective trademarks. 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 the respondent, to be disallowed, the respondent would be deprived of an opportunity to establish, before the court adjudicating the suit, its right to claim user, of the 'SUPERON' trademark since 1994. The prejudice that could result, to the respondent, as a consequence thereof, would be irreversible. Per contra, allowing the prayer for amendment, would result in no prejudice to the appellant, which had every opportunity to contest the claim of the respondent, to user, of the 'SUPERON' trademark since 1994. Application of the 'prejudice' test, too, would, therefore, justify allowing, rather than disallowing, of the amendment sought, by the respondent. The objections to the prayer of the respondent, for permission to amend the plaint are completely devoid of substance - there are no reason to interfere with the impugned order - appeal dismissed. Issues Involved:1. Maintainability of the appeal under Section 13 of the Commercial Courts Act, 2015.2. Jurisdiction of the learned Joint Registrar to adjudicate the amendment application.3. Merits of the amendment application under Order VI Rule 17 of the CPC.Issue-wise Detailed Analysis:1. Maintainability of the Appeal:The court examined whether the appeal was maintainable under Section 13 of the Commercial Courts Act, 2015. The appeal was contested on grounds that it did not fall within the orders enumerated under Order XLIII of the CPC. However, the court concluded that Section 13(1A) of the Commercial Courts Act allows appeals from any judgment or order of the Commercial Division of the High Court to the Commercial Appellate Division. The proviso to Section 13(1A) does not limit the right to appeal but clarifies that appeals shall lie from orders enumerated under Order XLIII of the CPC. Since the order under challenge was passed under Rule 5 in Chapter II of the 2018 Original Side Rules, the appeal was held to be maintainable.2. Jurisdiction of the Learned Joint Registrar:The court examined whether the learned Joint Registrar acted within his jurisdiction while adjudicating IA 10990/2018. Rule 3(2) in Chapter II of the 2018 Original Side Rules empowers the Registrar to adjudicate applications to amend the plaint where the amendment sought is 'formal.' The court found that the amendments sought by the respondent were substantive and not merely formal, thus exceeding the jurisdiction of the learned Joint Registrar. Despite this, the court noted that the learned Single Judge had independently examined the merits of the amendment application, rendering the jurisdictional issue moot.3. Merits of the Amendment Application:The court assessed whether the amendment sought by the respondent was necessary for determining the real questions in controversy between the parties. The amendment aimed to alter the date from which the respondent claimed user of the 'SUPERON' trademark, which was fundamental to the infringement and passing off claims. The court emphasized that Order VI Rule 17 of the CPC mandates allowing amendments necessary for determining the real controversy. The court found that the amendment was bona fide and did not cause irreparable prejudice to the appellant. The learned Single Judge's reliance on precedents like Rajesh Kumar Aggarwal v. K.K. Modi and Lakha Ram Sharma v. Balar Marketing (P) Ltd. was upheld, affirming that the court should not delve into the truth of the averments at the amendment stage.Conclusion:The court dismissed the appeal, upholding the learned Single Judge's decision to allow the amendment application. The court found no reason to interfere with the impugned order, emphasizing that the amendment was necessary for determining the real controversy and did not prejudice the appellant's defense. The pending applications related to the appeal were also disposed of.