IN THE HIGH COURT OF DELHI AT NEW DELHI
+CS(OS) 2623/2014
COLUMBIA SPORTSWEAR COMPANY
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..... Plaintiff
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Through:
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Mr. Neeraj Grover, Adv. with
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Mr. Himanshu Deora, Adv.
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versus
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HARISH FOOTWEAR & ANR
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..... Defendants
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Through:
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Mr. Ajay Amitabh Suman, Adv. for
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CORAM:
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HON'BLE MR. JUSTICE R.K.GAUBA
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O R D E R
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%
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22.09.2016
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IA No.19291/2015 (Order 6 Rule 17 CPC)
1.The original suit was filed in September, 2014 seeking, inter alia,
permanent injunction against the defendants from using trade mark
“COLUMBIA” or any other trademark or trademarks which are deceptively or confusingly similar to the plaintiff’s registered trademark “COLUMBIA”, alleging cause of action to have arisen to seek such relief against the defendants as it had been discovered that they have been dealing in sale of certain goods, passing them off, using or incorporating the plaintiff’s registered trademark or other trademarks deceptively or confusingly similar thereby illegally taking the benefit of its reputation and goodwill.
2. While issuing summons on the suit and notice of the applications filed therewith, by order dated 1st September, 2014, this court granted ad-interim ex-parte injunction restraining the defendants from using, selling, exporting, displaying, advertising or using the trademark “COLUMBIA” till the next
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date of hearing. By the same order, on another application (IA No.16584/2014) a local commissioner was appointed to visit the premises of the second defendant to seize infringing goods, advertising material, etc. if found in the said premises and to arrange for the same to be held onsupardari and take certain other steps connected therewith. The local commissioner executed the task assigned and submitted the report in due course. An application, in the meanwhile, has been filed by the defendant, it being IA No.22361/2014 under Order 39 Rule 4 CPC seeking the interim injunction to be vacated. The said application and the application under Order 39 Rules 1 & 2 CPC (IA No.16583/2014) are awaiting final decision.
3. The application at hand has been moved by the plaintiff under Order 6 Rule 17 CPC, meanwhile, to bring about certain amendments in the pleadings, mainly to modify existing paras 6, 16 and 47 of the plaint to bring on record certain additional facts essentially concerning issuance of registration No.1585010 of the trademark “Columbia Sportswear Company” on 13.03.2015, on the basis of application that had been moved on 27.07.2007, setting out in detail in the pleadings the particulars of the said additional registration with specification of goods and classes thereof. The plaintiff also states that during the inspection of the premises of the second defendant by the local commissioner it had come to light, through his report, that the second defendant had moved to a packaging in a box which is blue and brown it being identical to the packaging colours/trade dress of the plaintiff’s product. The additional pleadings seek to set out the details of the said similarity in the impugned goods statedly passed off by the defendant in breach of the rights of the plaintiff under the registered trademarks.
4. The consideration of the application for amendment at this stage is opposed by the defendants mainly on the submission that the move to amend
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the pleadings even while the application under Order 39 Rule 4 CPC of the defendants who have been suffering the ad-interim injunction is abuse of the process of court. Reliance is placed on Rajveer Food Marketing (I) Pvt. Ltd. vs. Amrit Banaspati Company Limited, 2010 (42) PTC 147 (Del.) (DB)to contend that the consideration of this application must await the determination of the applications, one of the plaintiff under Order 39 Rules 1 & 2 CPC and the other of the defendant under Order 39 Rule 4 CPC.
5.Having heard the learned counsel on both sides, this court finds no substance in the objection thus taken. In Rajveer Food Marketing (I) Pvt. Ltd. (supra), the amendment of the pleadings was mainly to bring on record certain material facts which had been earlier withheld, seemingly with no explanation offered for such omission. In the case at hand the issuance of the registration of the trademark on 13.03.2015 is a subsequent development. It may be that the application towards that end had been moved earlier on 27.07.2007, but that by itself is no reason why the applicant/plaintiff should not be allowed to plead the additional facts of yet another registration of his trademark. Similarity in the packaging, also constituting breach and giving rise to the cause of action has apparently come to light only upon the report of the local commissioner being submitted in this court. There is nothing on record to indicate that these facts were within the knowledge of the plaintiff and/or could have been pleaded earlier.
6.The objection to the consideration of the application for amendment even before the other applications under Order 39 Rules 1 & 2 CPC and under Order 39 Rule 4 CPC are pending is thus meritless and, therefore, repelled.
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7.The defendant referred to Godrej Sara Lee Ltd. vs. Karamchand Appliances (P) Ltd. & Ors., 2007 (35) PTC 341 (Del.) arguing that the similarity in the packaging as is stated to have been brought to light by the local commissioner would, at best, give rise to a separate and new cause of action and the plaintiff cannot be allowed to complicate the case by additional pleadings to that effect.
8.The case at hand is distinguishable from that of Godrej Sara Lee Ltd.(supra). The cause of action remains the same. It is essentially the passing off the goods by the defendant using a trademark of which the plaintiff claims to be the owner. The principle that multiplicity of suits must be avoided has to be remembered. At this stage, the court cannot sit in judgment over the falsity or correctness of the facts sought to be additionally pleaded. The amendments are not likely to change the nature of the case. The supervening event of new registration of the trademark and another facet of the passing off with reference to the packaging deserves to be allowed to be additionally pleaded. [Usha International & Anr. vs. Usha Television Limited, 2002 (25) PTC 184 (Del.) (DB) and Vatika Resorts Pvt. Ltd. vs. Vatika Grand, 2009 (40) PTC 111 (Del.)].
9.The amendments proposed by the application are for complete and effectual determination of the controversy between the parties and, therefore, the application is allowed.
10.The amended plaint shall be filed and copy thereof served on the defendant within two weeks, unless such steps have already been taken in anticipation. The defendants are called upon to file the written statement in answer to the amended plaint within four weeks thereof.
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CS(OS) 2623/2014
The cause list published for today indicates certain applications, namely, IA No.16584/2014 (O.26 Rule 9 CPC and O.39 Rule 7 CPC) and IA No.22778/2014 (O.23 Rule 3 CPC) to be pending. The previous proceedings indicate these applications have already been disposed of.
The registry must keep its record up-dated and not show any application as has been decided in the cause list since it creates confusion.
Be listed before the Joint Registrar for completion of pleadings on 7th
December, 2016.
R.K.GAUBA, J.
SEPTEMBER 22, 2016 vk
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