AI Drafter 
TaxTMI 
TaxTMI 
TaxTMI 
2020 (3) TMI 1458
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....e respondent contended, in the suit, that it was 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....
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....pondent under its 'SUPERON' trademark, albeit 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 ....
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....pecifically para 8 thereof, which the respondent desired to amend to read thus: "8. That with the advent of the plaintiff 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 f....
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....oses of its trade. It is alleged that the defendant has imitated identical/deceptively similar trademark/label SUPERCROME. It is further stated 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 ....
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....ar Patel, passed in CS (OS) No. 267/2008 dated 03.09.2009, Rajesh Kumar Aggarwal & Ors. v. K.K. Modi & Ors, AIR 2006 SC 1647 and Ramesh Kumar Agarwal v. Rajmala Exports Pvt. Ltd. & Ors., MANU/SC/0252/2012. The 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 ....
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....ates that the defendants/parent company has been using the trademark SUPERCROME and experience since 1985. She also states the invoices since 1990 to have been placed on record. She also states that the plaintiff has initiated other 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 contex....
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....ation." 8. There is accordingly no merit in the appeal. Same is dismissed." 10. The present appeal impugns the aforesaid order/judgment, dated 3rd July, 2019, of the learned Single Judge in OA 58/2019. Rival submissions-as pleaded and argued 11. While we would be referring, in greater detail, to the rival submissions, 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....
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.... in Class 7 for welding electrodes, showing its date of user as 1st June, 2004. No application, for change of user date had been preferred, before the Registrar of Trademarks, by the respondent, till date. Other similar applications, for registration of trademark in respect of welding electrodes, had also been filed by the respondent. (viii) By trying to change the date of user, by it, 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 elect....
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....r allowing the respondent's prayer for amendment of its plaint, were unexceptionable, and could not be said to merit interference by this Court. Analysis Re. Maintainability of the present appeal 17. The submission, of Mr. Sindhwani, that the present appeal is not maintainable, which is based on the decisions of this Court (rendered, in each case, by a Division Bench) in HPL (India) Ltd. MANU/DE/0347/2017, Samsung 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 ma....
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....re specifically enumerated under Order XLIII of the Code of Civil Procedure, 1908 (5 of 1908) as amended by this Act and section 37 of the Arbitration and Conciliation Act, 1996 (26 of 1996)." We are not convinced that the province of our jurisdiction, in the present case, allows us to so legislate. To our mind, therefore, sub-section (1A) of Section 13 of the Commercial Courts Act allows appeals to be preferred against all judgments and orders of the Commercial 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) ....
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...., dealt with the maintainability of appeal against an order allowing amendment of the plaint, the law laid down, therein, applies, to the present case, on all fours. 28. We regret our inability to agree. The distinction, sure, though subtle, between Samsung Leasing Ltd. MANU/DE/2107/2017 and the present case, lies in the fact that while, in Samsung Leasing Ltd. MANU/DE/2107/2017, this Court was concerned with the maintainability of an appeal against an order, passed by the 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 Orig....
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....suit, came to be rejected by the learned Joint Registrar by an order dated 14th December, 2010, against which an appeal (OA 19/2011) was preferred to the learned Single Judge under Rule 4 of Chapter II of the 1967 Original Side Rules, which was in pari materia and in haec verba with Rule 5 of Chapter II of the 2018 Original Side Rules. The appeal was allowed by the learned Single Judge vide order dated 5th February, 2013, against which the original plaintiff appealed to the Division Bench. 33. 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 app....
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....een passed by the learned Single Judge in exercise of appellate jurisdiction, it was contended, by the defendant-respondent, that no appeal, against the said order, would lie before the Division Bench under Section 10 of the Delhi High Court Act. This submission, too, was, undoubtedly, attractive. 36. The Division Bench, however, proceeded to reject the objection, to maintainability of the appeal before it, by holding, following a somewhat involved reasoning, that the jurisdiction exercised by the learned Single 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 provide....
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.... by the delegator-Single Judge, of the order passed by the delegate-Registrar. 37. The attention of the Division Bench, hearing Rahul Gupta 206 (2014) DLT 188, was also invited to an earlier decision, again rendered by a Division Bench of this Court, in Akash Gupta v. Frankfinn Institute of Air Hostess Training AIR 2006 Delhi 325 : 127 (2006) DLT 188. In the said case, the Division Bench of this Court was adjudicating a reference, made by a learned Single Judge, of the following two questions, for determination: "1. Whether an appeal would lie under Rule 4 of the Rules against any order made by the 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/quest....
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....ing for an appeal against an order passed by a Registrar under Rule 3 as provided in Rule 4. In any case, virus of Rule 4 has not been questioned and challenged. 14. It may also be mentioned here that in case it is held that an order passed by the Registrar under Rule 3 is not appealable under Rule 4 to a Judge in Chamber, an aggrieved person may be required to file a Special Leave Petition, if it is not a 'judgment'. Such interpretation in our opinion should be avoided. 15. In view of the above findings, we are of the view that question No. 1 as framed and extracted above has to be answered in affirmative and it has to be held 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....
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....andan Aggarwal, AIR 1992 SC 96. The 1967 Original Side Rules were drafted in exercise of the powers vested by Section 122 of the CPC and were entitled, therefore, to be accorded due sanctity. If, therefore, Rule 4 in Chapter II of the 1967 Original Side Rules referred to an appeal, against the order of the Registrar, to the learned Single Judge, in our view, the jurisdiction, exercised by the learned Single Judge, could not but be regarded as appellate. Treating the said jurisdiction as original in nature, and as a mere exercise of "review", or "re-examination", by the learned Single Judge, of the decision of his delegate, in our view, does violence to the scheme of Rules 3 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 ....
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.... High Court. Though, in the case of an order passed by a Single Judge on the commercial side of the High Court, under one or the other provision of the CPC, the judgments in HPL (India) Ltd. MANU/DE/0347/2017 and Samsung Leasing Ltd. MANU/DE/2107/2017 would seem to suggest that an appeal, to the Division Bench, would lie only where the order was relatable to Order XLIII of the CPC, we do not feel ourselves constrained by these decisions, as, in the present case, the order under challenge, before us, has been passed, not under the CPC, but under Rule 5 in Chapter II of the 2018 Original Side Rules. We see no reason to exclude orders passed by the learned Single Judge, exercising commercial 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 Singl....
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....only by Section 129 of the CPC, but by Section 7 of the Delhi High Court Act. Section 129 of the CPC permits every High Court to make such rules, not inconsistent with the Letters Patent, or order or other law establishing it, to regulate its own procedure in the exercise of its original civil jurisdiction, as it thinks fit. Section 7 of the Delhi High Court Act stipulates that, subject to the provisions thereof, "the High Court shall have all such powers to make rules and others with respect to practice and procedure as are immediately before the appointed day exercisable by the High Court of Punjab and shall also have powers to make rules and orders with respect to practice and procedure for the exercise of its ordinary 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 ....
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.... what is not? In law, as in life, the expression 'formal' is capable of myriad interpretations, being an expression which itself is imprecise and uncertain. It would be advisable, therefore, that Clause (2), in Rule 3 in Chapter II of the 2018 Original Side Rules be either more precisely worded, specifically delineating the categories of amendment applications, which the Registrar would decide, or that the expression 'formal' is specifically defined in the Original Side Rules. Needless to say, the former alternative is, on the face of it, preferable. 49. In this context, it is also be necessary to bear, in mind, the fact that, oftentimes, the very complexion of the litigation may change by an amendment, and applications 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 o....
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....ss of what was due on the judgment, even though the excess was only 15 s. 6 d., arising from a miscalculation of interest, was held not to constitute a "formal defect or irregularity". Similarly, an omission, in a bankruptcy petition, to state the intent of the debtors departure out of England, was held to be an omission of substance, and not merely 'formal', in Ex. p. Coates, Re. Skelton 5 Ch. D. 979. In Sill v. The Queen 22 L.J.M.C. 41, it was held that an allegation in an indictment, which must be proved as alleged, cannot be called formal'. 53. Viewed thus, it is clear that the amendments, to para 8 of the plaint, as sought to be effected by way of IA 10880/2018, which alter the period, with effect from which the 'SUPERON' 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....
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....exercise, and would result in unnecessary duplication of the proceedings, especially as the learned Single Judge has already expressed his opinion, on merits, regarding the prayer, of the respondent, for amendment of its plaint. 57. On merits, we find the impugned order/judgment, dated 3rd July, 2019, of the learned Single Judge, to be unexceptionable. 58. 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. The proviso, to the Rule, dilutes the rigour of the Rule only in cases where the trial has already commenced, in which ca....
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.... side which cannot be compensated adequately in terms of money; (4) Refusing amendment would infact lead to injustice or lead to multiple litigation; (5) Whether the proposed amendment Constitution and the order fundamentally changes the nature and character of the case? And (6) As a general rule, the court should decline amendments if a fresh suit or the appended claims would be barred by limitation on the date of application." 62. Para 9 of the report in Sampath Kumar v. Ayyakannu (2002) 7 SCC 559, is also instructive in this regard: "Order 6 Rule 17 CPC confers jurisdiction on the court to allow either party to alter or amend his pleadings at any stage of the proceedings and on such terms as may be just. Such amendments as are directed towards putting forth and seeking 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 libe....
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....to adjudication of such a lis, would be the dates from which the appellant, and respondent, operated their respective trademarks. The averments that the respondent sought to incorporate in para 8 of the plaint, by way of amendment thereof, sought to contend that the respondent was entitled to claim user of the "SUPERON" trademark from 1994. As to whether this claim was justified, or not, was outside the province of examination, by the court adjudicating the application for amendment. Equally, whether the respondent had, or had not, succeeded in adducing sufficient evidence to support its claim of user since 1994, and of the plaintiff to claim user from the time Stanvac had adopted the trademark "SUPERCROME", were issues which could be adjudicated only in trial. The truth, or otherwise, of the claim, of the respondent, to 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,....