While holding that converting a passing off action into an infringement claim post-registration does not change the basic structure of the suit, the Delhi High Court has allowed KRBL Limited to amend its 2016 suit against J.R. Rice India Pvt Ltd., allowing it to add a claim of trademark infringement over the use of “ROYAL GATE” with a device of “INDIA GATE”. However, the Court imposed a cost of Rs. 50,000 on KRBL payable to the Delhi High Court Advocates Welfare Trust within two weeks, on account of the unexplained five-year delay in moving the amendment application.
The Court explained that where a Plaintiff files a suit for passing off and the trademark which is the subject matter of the suit gets registered in the Plaintiff’s favour during the pendency of the proceedings, the Plaintiff is entitled to seek amendment of the plaint under Order VI Rule 17 CPC to incorporate a claim of infringement, since the cause of action for both passing off and infringement is founded on the same set of facts and the basic structure of the suit remains unchanged. While mere delay is not by itself sufficient to refuse a bona fide and necessary amendment, the same can be a relevant factor while imposing terms and costs on the party seeking the amendment.
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A Single Judge Bench of Justice Jyoti Singh observed that the power to allow amendment of pleadings is wide and discretionary, and Courts have consistently allowed amendments to bring on record subsequent facts and grounds, as also to amend reliefs, for the just decision of a case, provided the basic complexion and nature of the original suit does not drastically change. The Court reiterated that the object of Order 6 Rule 17 CPC is to try the merits of the case and that the rule consists of two parts, a discretionary part and an imperative part which enjoins the Court to allow all amendments necessary for determining the real question in controversy.
The Court further observed that the “real controversy test” is the cardinal test, and Courts must take notice of subsequent events in order to shorten litigation and subserve the ends of justice. Following the Coordinate Bench decision in Pravesh Narula v. Raj Kumar Jain [2024 SCC OnLine Del 7537], the Court held that a Plaintiff cannot be denied the opportunity to amend the plaint to incorporate an additional relief of infringement post-registration of the trademark, since the cause of action for both passing off and infringement is based on the same set of facts.
Briefly, KRBL Limited, the well-known Plaintiff in the basmati rice industry, filed a commercial suit against M/s J.R. Rice India Pvt Ltd. and another, seeking a permanent injunction to restrain the Defendants from using the trademark/label “ROYAL GATE” along with the device of “INDIA GATE,” or any identical or deceptively similar mark, on the ground of passing off. At the time of filing the suit, the trademark “INDIA GATE” was not registered in the Plaintiff’s name, and therefore the suit was predicated entirely on the common law remedy of passing off.
During the pendency of the suit, the Plaintiff acquired the registered trademark “INDIA GATE” (Registration No. 599833 in Class 30) from Mr. Ram Pratap under an Assignment Deed dated Aug 06, 2019. Subsequently, the mark was also declared a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999, with publication made in the Trade Marks Journal No. 1915 dated Aug 19, 2019. The Plaintiff thereafter filed an application under Order VI Rule 17 of the CPC seeking amendment of the plaint to incorporate the factum of registration and well-known status, along with grounds of infringement and consequential amendment in the reliefs.
The Defendants opposed the amendment, contending that it would change the entire complexion of the suit from a passing off action to an infringement action, that the Assignment Deed itself dates back to 1999, and that the application was belatedly filed after five years when the suit had already proceeded to trial.
