By Priyanka Sukhija and Pallavi Paul
Introduction
Recently, the Delhi High Court allowed Bajaj Resources to amend their plaint by adding new trademark registrations, business data, and related legal proceedings without changing the fundamental nature of the suit. The Court emphasized that amendments should be freely allowed if they help resolve the real issues in the case and do not unfairly harm the other party.
Brief Background
The case was originally filed by Bajaj Resources Limited (hereinafter referred to as the ‘plaintiffs’) in 2016, seeking a permanent injunction against Goyal Herbals (hereinafter referred to as the ‘defendants’) for trademark and trade dress infringement, passing off, and copyright infringement regarding the ‘Almond Drops’ mark for hair oil. During the course of the litigation, the plaintiffs, acquired three new trademark registrations, prompting an application to amend the original plaint under Order VI Rule 17 of the Civil Procedure Code (CPC).
The plaintiffs sought to amend the plaint to include:
- Details regarding three trademark registrations and one pending application for the mark ‘ALMOND DROPS’, obtained after the institution of the suit;
- Reference to interim injunction orders passed in their favor and against the defendants’ bottle manufacturer;
- Updated sales turnover and advertising expenses, for ‘Bajaj Almond Drops Hair Oil’;
- Notification regarding internal company developments such as conversion to private limited company and change in authorized signatories;
Arguments by both the parties
Plaintiffs
The plaintiffs argued that all new facts arose after the commencement of trial and could not have been included earlier by due diligence. They further added that the amendments were fundamental in determining the real controversy, asserting the statutory rights arising from the new registrations were directly relevant in the case. They contended that the amendments were necessary for preventing multiplicity of suits, and did not alter the nature of the original case.
Defendants
The defendants opposed most amendments, and raised concerns that the amendments would change the nature of the suit from passing off to statutory infringement, and would cause unjust delay. They further alleged a lack of due diligence on the part of the plaintiffs and also pointed out the plaintiffs’ failure to seek trademark registration earlier and accused them of mala fide attempts to strengthen their case belatedly.
Legal Analysis of the Court
Hon’ble Justice Amit Bansal emphasized that the primary consideration in amendment applications is whether the amendment is necessary for adjudicating the ‘real controversy’ between the parties. Reliance was placed on the Supreme Court’s ruling in Life Insurance Corporation of India v. Sanjeev Builders Private Limited[1], where it was held that amendments essential for determining real controversies must be allowed unless they cause injustice or prejudice to the other side or result in an entirely new cause of action.
The Court also drew guidance from Pravesh Narula Trading as M/s. Capital Enterprises v. Raj Kumar Jain,[2] where amendments were permitted even after the closure of evidence.
The Court held that new trademark rights obtained by the plaintiff after the institution of the suit and non-inclusion of the same would necessitate fresh litigation, thereby lead to multiplicity of litigation between the parties. Further, the amendments did not fundamentally alter the character of the suit, which already involved claims of trademark and trade dress infringement as well as passing off.
The Court allowed the plaintiff’s amendment application and permitted them to file the amended plaint within two weeks. In addition, the defendants were permitted to file applications regarding their rectification petition against plaintiff’s trademark registrations.
Conclusion
This order offers clarity on when and how courts may permit substantial amendments to pleadings, reinforcing the principle that substantive justice should not be sacrificed at the altar of procedural rigidity. The decision particularly benefits trademark holders who strengthen their legal positions during ongoing disputes, ensuring that evolving rights receive appropriate judicial protection without necessitating multiple lawsuits.
Author’s Comments
Indian courts have repeatedly recognized that when a suit is originally instituted for passing off, but during its pendency the plaintiff’s trademark gets registered, the court may permit an amendment to the pleadings so the suit can proceed as both passing off and infringement. Courts have specifically accepted that subsequent registration of a trademark is a subsequent event that has a fundamental impact on the nature of relief available and is considered necessary for substantial justice between the parties.
Few case laws allowing conversion:
- Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills [3]
The plaintiff, Sony Kabushiki Kaisha, initially filed a passing off suit against Mahaluxmi Textile Mills alleging unauthorized use of a mark deceptively similar to ‘SONY’. During suit pendency, Sony registered its trademark, and the court allowed amendment to include infringement relief along with passing off, emphasizing substantive justice and preventing multiplicity of suits.The Hon’ble Calcutta High Court, held that amendment to include infringement is permissible even if the original suit was only for passing off and the plaintiff’s trademark was registered during the pendency of the suit. The Court reasoned that since the registration fundamentally alters the relief to which the plaintiff is entitled, such amendment is allowed to avoid multiplicity of proceedings. The nature and character of the suit do not change, as the core facts remain unaltered except for registration status.
- Vatika Resorts Pvt. Ltd v. Vatika Grand[4]
Vatika Resorts filed a passing off suit against Vatika Grand alleging deceptive similarity in marks used for real estate services.The Hon’ble Delhi High Court permitted amendment of the plaint to include an infringement claim after the ‘VATIKA’ mark was registered during the pendency of the passing off suit. The Court held it is a settled law that a plaintiff may incorporate claims of infringement when a registration is secured post-suit, as valuable statutory rights are thereby vested which did not exist as of the suit’s institution.
- Milaap Social Ventures Foundation v. Impact Guru Technology Ventures Pvt. Ltd. & Ors.[5]
Milaap Social Ventures filed suit for passing off against Impact Guru and Google for using the word ‘Milaap’ in its keywords and metatags and divert traffic to its own website crafted and designed by Google.The Hon’ble Karnataka High Court permitted amended plaint where the plaintiff’s trademark ‘MILAAP’ was registered during the pendency of the passing off action. The Court relied on the principle of avoiding multiplicity of litigation and that reliefs for infringement and passing off are fundamentally based on the same facts.
[1] (2022) 16 SCC 1
[2] 024 SCC OnLine Del 7537
[3] 2009 (41) PTC 184 (Cal) (FB)
[4] (2009) 40 PTC 111 (Del)
[5] WRT No. 6220 of 2022