Anchor’s “ALLROUND PROTECTION” not good enough to protect it from Colgate ! Division bench of the Hon’ble Delhi High Court on November 19, 2015 decided the appeal titled as ‘Colgate Palmolive Company & Anr. vs. Anchor Health and Beauty Care Pvt. Ltd.’ in favour of the Appellants/Defendants (herein after referred to as “Colgate”) and against the Respondent/Plaintiff (herein after referred to as “Anchor”).
The said appeal was filed against the order of the Single Judge allowing the application of the Plaintiff under Order VI Rule 17 of the Civil Procedure Code, 1908 (“CPC”), for amendment of the Suit Plaint.
Facts of the matter:
During the pendency of the suit filed by Anchor against Colgate for the use of “All-Around Decay Protection” on the carton launched in 2007, Anchor’s mark “Allround” (“impugned mark”) was registered on August 26, 2008. Thereafter, in December, 2011, Anchor filed the aforesaid application, to change the suit from a passing off matter to an infringement suit, which was allowed vide impugned order dated February 14, 2012.
Amendments sought by Plaintiff:
Suit heading – “Suit for declaration and permanent injunction restraining infringement of registered trade mark/passing off, tortious acts of unlawful interference in the Plaintiff’s business, acts of unfair competition, economic duress and causing loss…” whereas original suit could not have been for “permanent injunction restraining infringement of registered trade mark” as the Anchor’s trade mark was not registered in 2007.
Amendments would include averments that Anchor had sought registration of the impugned mark on September 2, 2005 and the same was granted during the pendency of the suit.
Order of the Single Judge:
The learned Single Judge was of the opinion that since the law of the amendment of pleadings is “rather liberal in nature” the amendments should ordinarily be allowed, “unless it is likely to prejudice the opposite party or is likely to take away a vested right which has accrued to the opposite party provided that opposite party can be compensated in terms of cost.”.
The learned Single Judge held that objection as to the suit being time-barred was without substance as suit was based on a continuing cause of action. The objection that the amendment permitted alteration of the suit from one kind to another was also overruled.
Contentions of the Appellants/Defendants:
- Original suit never disclosed that an application for registration of the impugned mark was pending in the name of Anchor. Further, the original suit claimed that the overall get up and description of the product by Colgate was similar to Anchor.
- Even if registration was granted in August, 2008, Anchor made no attempt to amend the suit at that point and only applied amendment of the suit in 2011, after the lapse of 3 year period.
- Relied on judgments of the Supreme Court, urging the general rule that parties are not allowed by amendment to set up a new case or cause of action which is barred.
Contentions of the Respondent/Plaintiff:
1. Basic facts relating to confusion based on passing off were not undermined by the amendment, there was no fundamental change in the nature of the suit or the cause of action and in any case a fresh suit based on infringement could have been filed, that would not be time barred.
2. The fundamental ground on which the suit is based continues to be the same if the amendment is allowed. It is not correct to say that anchor has added a new cause of action and what is introduced is only an additional ground, to challenge the use of the impugned mark by Colgate.
Observations and order of the Division bench:
In the original suit of Anchor, emphasis was on the use of the term “Allround Protection” which was used to describe its own toothpaste. The present suit is being filed to place on record the conduct of the defendants which are using all possible methods to curb healthy competition from the plaintiff.”
Anchor consciously did not seek to amend the suit, till December, 2011, for more than four years after filing of the suit and over 3 years and 2 months after securing registration of the impugned trade mark.
That Single Judge wrongly held that since the cause of action remained in respect of use of the term “Allround” which remained unchanged, no prejudice could be caused.
In view of the above, the present appeal of Colgate succeeded and the amendments allowed by the learned Single Judge were not to be made part of the record of the suit alongwith the subsequent amendments to the written statement. The impugned order was set-aside and application of Anchor dismissed.
It is once again clarified by the above judgement that Courts do not help protect the rights of those who have willingly/knowingly slept on their rights.
Anchor had no substantiated reason for not moving the court with an amendment application as soon as its trade mark was registered. In fact, the original plaint made no reference to its pending application in the impugned trade mark which in the eyes of the court goes to show that Anchor filed the suit in haste and waited too long to seek amendment thereof.
In general suits for injunction against passing off the Court may allow amendment plaint to make an infringement suits. However, in those cases the original plaint must contain the submission that an application for registration of trademarks is pending before the Trade Marks Registry.