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When a Trade Mark Fights Back: The Story of 'Duck Back' vs 'Dack Back'
A Detailed Analysis of M/s. Bengal Waterproof Limited v. M/s. Bombay Waterproof Manufacturing Company Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Introduction
Imagine you have built a product over decades, made it a household name, and then someone starts selling a near-identical product with a name so similar that ordinary customers cannot tell the difference. That, in essence, is the story behind the landmark Supreme Court judgment in M/s. Bengal Waterproof Limited v. M/s. Bombay Waterproof Manufacturing Company and Another (Civil Appeal No. 14610 of 1996, decided on 18th November 1996). This case is a vital milestone in Indian trade mark law, not only because it vindicated the rights of a genuine trade mark holder, but also because it clarified two important legal questions that had been causing confusion in courts across India.
The first question was whether a procedural rule under the Code of Civil Procedure, 1908 specifically Order 2 Rule 2 Sub-rule (3) could be used to shut out a trade mark infringement suit simply because an earlier suit on a similar dispute had failed. The second question was whether repeated and continuing acts of trade mark infringement give rise to a fresh cause of action each time they occur, or whether the entire matter becomes closed once a court decides the first case. The Supreme Court answered both questions decisively and in favour of the trade mark owner, restoring justice that had been denied at two earlier stages of litigation.
Factual and Procedural Background
M/s. Bengal Waterproof Limited, the appellant before the Supreme Court, was the registered owner of the trade mark 'DUCK BACK'. This mark had been registered under the Trade and Merchandise Marks Act, 1958, and the company also held copyright registration No. A-4548/69 dated 19th July 1969 in the artistic design of the word 'Duck Back'. The company had built a strong reputation over many years in the Indian market for waterproof goods, particularly rubberised waterproof raincoats, which were well-known to consumers as 'Duck Back' raincoats.
At some point, M/s. Bombay Waterproof Manufacturing Company and another entity began manufacturing and marketing waterproof goods particularly waterproof raincoats under the trade mark 'DACK BACK'. The plaintiff-company came to know that this mark was phonetically and visually so similar to their registered mark 'DUCK BACK' that ordinary consumers were being confused into thinking they were buying the plaintiff's product when they were actually purchasing the defendants' goods. This practice of selling one's goods under a name or mark so similar to another's that customers are misled is legally known as 'passing off'.
Faced with this situation, Bengal Waterproof Limited filed its first suit Original Suit No. 238 of 1980 before the Court of Chief Judge, City Civil Court, Hyderabad. The learned Trial Judge dismissed this first suit on 9th April 1982 on the ground that there was no infringement of the plaintiff's trade mark 'DUCK BACK' by the defendants' use of 'DACK BACK' and therefore the reliefs sought were not maintainable.
The plaintiff took the view that it had been misinformed and ill-advised when it instituted the first suit in the form that it did. Importantly, even after the dismissal of the first suit, the defendants continued selling goods under the name 'DACKBACK'. The plaintiff accordingly issued legal notices two letters dated 30th April 1982 calling upon the defendants to stop marketing or selling goods under that mark. The defendants, by two letters dated 25th May 1982, refused to comply and set up a defence of res judicata.
Undeterred, Bengal Waterproof Limited filed a second suit Original Suit No. 123 of 1982 before the Chief Judge, City Civil Court, Hyderabad, praying for permanent injunctions, delivery up of infringing material, inquiry into damages, and costs. The plaint specifically averred that the cause of action had arisen on or about 6th April 1982 and was a continuing cause of action arising every day within the jurisdiction of the Hyderabad Court.
The defendants raised the bar of Order 2 Rule 2 Sub-rule (3) CPC. The Trial Court dismissed the second suit on this ground. The Andhra Pradesh High Court in CCA No. 112 of 1987, while holding on merits that 'DACK BACK' was phonetically and visually similar to 'DUCK BACK' and amounted to passing off, nevertheless confirmed the dismissal on the procedural bar. Bengal Waterproof Limited then filed a Special Leave Petition under Article 136 of the Constitution of India. Leave was granted and the matter was heard as Civil Appeal No. 14610 of 1996.
The Dispute
The dispute before the Supreme Court was essentially a narrow but crucial one. Since the High Court had already decided the merits in the plaintiff's favour, and since there were no cross-objections or cross-petitions by the defendants, the only question that remained was whether the second suit was barred by Order 2 Rule 2 Sub-rule (3) CPC.
The defendants' counsel fairly conceded before the Supreme Court that if the Court were to hold that the suit was not so barred, the plaintiff's suit would have to be decreed. The entire weight of the litigation thus came down to this single procedural question.
Reasoning and Analysis of the Court
Understanding Order 2 Rule 2 Sub-rule (3) of CPC
The Supreme Court set out the text of Order 2 Rule 2 of the Code of Civil Procedure, 1908. In plain terms, this rule requires that when a person goes to court based on a particular cause of action, he must include all claims and seek all reliefs arising from that cause of action in that single suit. If he omits any relief without obtaining the court's leave, he cannot later file a fresh suit for that omitted relief. The critical foundation of this rule is that both suits must be based on the same cause of action.
The Procedural Bar: Failure to Produce Pleadings of the Earlier Suit
The Supreme Court first identified a fundamental procedural failure on the defendants' part. To invoke this bar successfully, a defendant must produce the plaint of the earlier suit before the trial court so that the court can compare the two plaints and verify that the cause of action is identical.
The Court referred to the authoritative ruling of a Constitution Bench in Gurbux Singh v. Bhooralal (1964) 7 SCR 831, where Justice Ayyangar, speaking for the Constitution Bench, held that for a plea under Order 2 Rule 2(3) CPC to succeed, the defendant must establish: (1) that the second suit is in respect of the same cause of action as the first; (2) that in respect of that cause of action the plaintiff was entitled to more than one relief; and (3) that the plaintiff had, without the court's leave, omitted to sue for the relief now being claimed. The Constitution Bench ruled emphatically that this plea is a technical bar, must be established satisfactorily, and can only be established by filing the earlier plaint as evidence before the trial court.
The defendants had entirely failed to produce the plaint of the first suit (Original Suit No. 238 of 1980) before the Trial Court. In the absence of those pleadings, the plea was simply not maintainable. The attempt to produce the earlier plaint for the first time with the counter-affidavit in the Special Leave Petition was firmly rejected. As the Court observed, the defendants had 'missed the bus' having failed to produce the pleadings before the Trial Court and having made no attempt to do so before the High Court either.
Merits: The Continuing Cause of Action
The Court further held, on merits, that even if the procedural bar were overlooked, the second suit was not based on the same cause of action as the first. The first suit of 1980 covered acts of infringement and passing off up to the date of that suit. The second suit of 1982 was based on fresh, continuing acts of infringement after the dismissal of the first suit acts that were ongoing right through the time of hearing before the Supreme Court, as the defendants' own counsel admitted.
The Court invoked the analogy of a landlord suing for rent: just as a landlord can sue for rent accruing after the first suit even if an earlier suit about earlier rent has been dismissed, a trade mark proprietor can sue for fresh infringement occurring after the first suit.
The Court also applied Section 22 of the Limitation Act, 1963, which provides that in the case of a continuing tort, a fresh period of limitation begins at every moment the tort continues. An act of passing off is a continuing tort an act of deceit in the law of torts. Every fresh sale under the infringing mark is a fresh act of deceit, generating a fresh cause of action. Similarly, infringement of a registered trade mark is a continuing wrong for as long as the infringement persists.
The Court pointedly rejected the argument that an infringer could gain a permanent licence to continue infringing simply because the trade mark owner had once, due to poor legal advice, failed to claim all appropriate reliefs in an earlier suit. Such a result would be manifestly unjust and would defeat the purpose of trade mark protection.
Final Decision of the Court
The Supreme Court allowed the appeal. It set aside the judgments of the Trial Court and the Andhra Pradesh High Court. Original Suit No. 123 of 1982 filed by Bengal Waterproof Limited was decreed as prayed for, with costs throughout all stages of the litigation.
Points of Law Settled in This Case
The judgment confirmed the Constitution Bench ruling in Gurbux Singh v. Bhooralal [(1964) 7 SCR 831] that a plea under Order 2 Rule 2(3) CPC must be established by producing the pleadings of the earlier suit before the trial court. It established that infringement of a registered trade mark is a continuing wrong, and that Section 22 of the Limitation Act, 1963 gives the aggrieved party a fresh cause of action at every moment the infringement continues. It confirmed that passing off is a continuing tort each fresh act of passing off is a fresh cause of action. It held that in cases of continuing or recurring causes of action, Order 2 Rule 2 Sub-rule (3) CPC cannot be invoked. It also affirmed that a phonetically and visually similar mark constitutes actionable trade mark infringement and passing off.
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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Headnote
The Supreme Court of India held that a suit for trade mark infringement and passing off is not barred under Order 2 Rule 2 Sub-rule (3) of the Code of Civil Procedure, 1908 where the second suit is based on a fresh, continuing, and recurring cause of action arising after the first suit. The Court affirmed the Constitution Bench ruling in Gurbux Singh v. Bhooralal [(1964) 7 SCR 831] that a plea under Order 2 Rule 2(3) CPC can only be established if the defendant produces before the trial court the pleadings of the earlier suit, and cannot be founded on inference. The Court further held that infringement of a registered trade mark and acts of passing off are continuing wrongs in the nature of continuing torts, and that Section 22 of the Limitation Act, 1963 operates so as to give the aggrieved party a fresh cause of action at every moment the wrong continues. A mark phonetically and visually similar to a registered trade mark , specifically 'DACKBACK' vis-à-vis the registered mark 'DUCK BACK' , was held to constitute an actionable infringement and an act of passing off entitling the plaintiff to a permanent injunction, delivery up of infringing material, and an inquiry into damages. Appeal allowed with costs.
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