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IN THE HIGH COURT OF DELHI AT NEW DELHI
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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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D-2.
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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
CS(OS) 2623/2014 Page 1 of 5
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 on supardari 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
CS(OS) 2623/2014 Page 2 of 5
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.
CS(OS) 2623/2014 Page 3 of 5
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.
CS(OS) 2623/2014 Page 4 of 5
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
CS(OS) 2623/2014 Page 5 of 5
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