Interim Order 20

Order Details: COPY OF ORDER
Pdf Text: CS (COMM.)286/23B. L. AGRO INDUSTRIES LIMITED Vs.
NUTRIVATIVE FOODSPRIVATE LIMITED
05.12.2023
Present: None.
1. Arguments have already been heard to the applications filed by
defendant as follows:-
i) Application under Order VI Rule 17 of the Code of Civil Procedure,
1908 (in short 'CPC') r/w Section 151 CPC on behalf of defendant
seeking amendment in written statement.
ii) Application under Order XI Rule 1 (4) (amended by Commercial
Courts Act, 2015) r/w Section 151 CPC seeking permission to place
on record additional documents.
2. The plaintiff has filed the instant suit for permanent injunction
restraining the defendant from selling, manufacturing, offering for
sale, directly or indirectly dealing in Millet milk, dairy products, dairy
substitutes, seed, meusli, floors etc and other food products and allied
goods under the trademark 'NOURISH YOU' or from doing any other
thing as is likely to pass of the defendant's goods and business as that
of goods and business of the plaintiff.
3. Consequent to the issuance of summons in the suit, the
defendant filed the written statement by way of response thereto.
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4. On 28.08.2023, the defendant filed application under Order VI
Rule 17 CPC seeking to amend its written statement to the fact that it
could not incorporate some facts regarding the usage of medium of
internet to advertise and promote products marketed and sold under
reputed brand NOURISH YOU; that the suit for infringement does
not lie against the registered mark; that there is no case of actual
confusion between the plaintiff's trademark and defendant's mark; that
there are suppression/concealment/ misrepresentation of plaintiff's
trademark and also with respect to trademark applications opposed by
third party before the Trademark Registry; that use of word
'NOURISH' with suffixes and prefixes and that the plaintiff cannot
claim exclusive right of the word 'NOURISH'. It is stated that
defendant wants to incorporate the above facts by incorporating the
additional paragraph nos. H1, 11, R1, T1, Y1, Y2, EE1, OO1 in the
written statement as stated in para(s) 7, 8, 10, 11, 12, 13 and 14 of the
application and the defendant wants to delete the table in para N and
replace the same to incorporate the facts. (in terms of the paras 7 to
14 of the application).
5. The plaintiff in its reply and arguments to this application, has
stated that defendant by its application, intends to bring
improvements in the written statement and further, wants to
incorporate arguments in written statement by way of explanation. It
is stated that proceedings pending before Trademark Registry are
initiated by third parties and any outcome of the same has its
independent remedy available under that Act and defendant cannot
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take advantage of same as none of the proceedings have been initiated
by the defendant. The defendant, nowhere states that defendant is
prior to the plaintiff and that the defendant has filed any application or
rectification of plaintiff's trademark. It is contended that present
application is nothing but only to delay the court proceedings and to
avoid the adjudication of application under Order XXXIX Rules 1
and 2, CPC. It is stressed that proposed amendment would change
nature of defence taken by defendant as they are nothing but an
explanation, improvements or arguments in the proposed written
statement which defendant had already taken in written statement
filed on 15.07.2023. It is also contended that defendant does not hold
any registration of mark NOURISH YOU in Classes 29, 30 and 31.
With regard to the deletion of table in para 'N' and incorporation of
fresh table as proposed in para 9 of the application, it is stated that
defendant is now seeking deletion of sale figures pertaining to the
year 2014-15 which cannot be permitted as earlier written statement
was supported with Statement of Truth. It is submitted that this court
earlier allowed the application filed by defendant to bring additional
documents, thus, defendant cannot be permitted to bring additional
documents on record. It is next submitted that plaintiff has not
concealed any material facts or documents from this court. It is stated
that defendant copied mark 'NOURISH YOU' is identical with mark
of the plaintiff 'NOURISH' and even the Registrar of Trademark cited
plaintiff's mark in the matter of defendant's trademark application in
Class 30. Even if the plaintiffs some applications have been
objected/refused/abandoned, the fact remains the same that the mark
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'NOURISH' stands registered in plaintiff's name in Classes 29, 30 and
31. It is again stressed that prejudice would be caused to the plaintiff
if the application is allowed as the proposed amendments are nothing
but improvements/explanation/arguments on part of defendant already
taken in earlier written statement.
6. I have considered rival submissions made by parties and gone
through the record.
7. At the outset, it is relevant to mention here that upon
appearance of the defendant, considering the facts of the case and to
protect the interest of the plaintiff, the defendant was directed to
maintain day to day account of sale of their products covered by Class
29 and 30 which are being sold under the mark 'NOURISH YOU'.
8. It is fairly settled that amendment of pleadings under Order VI
Rule 17 CPC is to be allowed if such an amendment is required for
proper and effective adjudication of controversy between the parties
and to avoid multiplicity of proceedings, subject to certain conditions
such as allowing the amendment should not result in injustice to the
other side. The Hon'ble Apex Court in the landmark case of Salem
Advocate Bar Association T.N v/s Union of India has noted the
history and object of Order VI Rule 17 as follows:
“ Order VI Rule 17 of the Code deals amendment of pleadings. By
amendment, Act 46 of 1999, this provision was deleted. It has been again
restored by Amendment Act 22 of 2002 but with an added proviso to
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prevent application for amendment being allowed after the trial has
commenced, unless the court comes to conclusion that despite of due
diligence, the party could not have raised the matter before the
commencement of trial. The proviso, to some extent curtails absolute
discretion to allow amendment at any stage. Now, if an application is filed
after commencement of trial, it has to be shown that inspite of due
diligence, such amendment could not have been sought earlier. The object
is to prevent frivolous application which are filed to delay the trial.”
9. The Hon'ble Apex Court in catena of judgments has also held
that amendment of the plaint and amendment of the written statement
are not governed by the same principle while allowing amendment of
written statement, the general principle is that amendment should be
allowed even if it amounts to addition to new grounds of defence,
substituting or altering a defence or taking inconsistent pleas in the
written statement.
10. Hon'ble Apex Court in the case of Usha Balasahed Swamy v/s
Kiran Appaso Swami (2007) 5 SCC 602 clarified that amendment of
plaint and written statement stand on different footing. The general
rule is that no amendment shall be allowed if it substitutes a cause of
action or alters the nature of the claim. It has no counter part in the
principles relating to amendment of written statement.
11. In case of B.K Narayana Pillai v/s P. Pillai (2000) 1 SCC 712,
the Hon'ble Court stated that it is well settled principle of law that a
more liberal approach needs to be taken while allowing amendments
to written statement rather than a plaint as chances of prejudice may
be more in the later case. The court reiterated various judgments and
observed that defendant was at liberty to take contrary stands or even
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contradictory stands and either of these will not have any impact on
his cause of action nor will they cause any prejudice.
12. Reverting to the facts of the case in hand, till date, issues have
not been framed in the present case and the suit is at initial stage and
now, it is to be seen, as to whether the amendment sought by
defendant is necessary for purpose of determining the real question in
controversy between the parties.
13. Here in the present case, the controversy between the parties is
related to infringement and passing off by the defendant, of the
registered mark of the plaintiff and the defendant by way of proposed
amendment wants to incorporate additional paragraphs to show that
suit for infringement does not lie against the registered trademark and
further that there is no actual case of confusion between plaintiff's
mark and defendant's marks along with other proposed amendments
to the fact that plaintiff has not approached this court with clean hands
and is prima facie guilty of concealment of true facts and that there
are multiple trade trademark applications applied by plaintiff which
have been either opposed by third parties, objected, refused or
abandoned by Trademarks Registry under Class 29, 30 and 31. Prior
user is one of the essential indica, to be for the adjudication of the
dispute in controversy along with other factual facts for the claim of
infringement and passing off. Perusal of the proposed amendment
shows that these amendment are nothing but are explanation with
regard to user of trademark by the defendant as well as similarities
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and dissimilarities with the packaging as well as the get up and it can
be said from the proposed amendment that no prejudice would be
said to have resulted to the plaintiff by allowing the defendant, so
urge.
14. So far as the other pleas of the plaintiff with regard to the
merits of proposed amendment, as discussed above, it is well settled
that as to whether the proposed amendment taken by the defendant
have merits are the issues which will be gone into adjudication at the
time of adjudication of the case. In case of Rajesh Kumar Aggarwal
and Ors v/s K K Modi & Ors, (2006) 4 SCC 385, the Hon'ble Apex
Court held as follows:
19. While considering whether an application for amendment should or
should not be allowed, the Court should not go into the correctness or
falsity of the case in the amendment. Likewise, it should not record a
finding on the merits of the amendment and the merits of the amendment
sought to be incorporated by way of amendment are not to be adjudged at
the stage of allowing the prayer for amendment. This cardinal principle
has not been followed by the High Court in the instant case.
15. Similarly in Lakha Ram Sharma v/s Balar Marketing Private
Limited (2008) 17 SCC 671, the Hon'ble Apex Court has held as
follows:-
“4. It is settled law that while considering whether the amendment is to be
granted or not, the Court does not go into the merits of the matter and
decide whether or not the claim made therein is bonafide or not. That is a
question which can only be decided at the trial of the Suit.................”
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16. In the instant case, looking into the facts of the case and
controversy in question, this court is of opinion that the proposed
amendments are necessary for the purpose of determining the real
question in controversy between the parties and in the interest of
justice, this application is allowed. However, since, the facts could
have been known to the defendant from the very beginning i.e. at the
stage of filing of original written statement, these are not arising out
of subsequent events, the delay caused by defendant is compensated
by the cost of Rs. 50,000/- which shall be paid to plaintiff through
counsel. Amended written statement is already on record.
17. Coming to the second application filed on behalf of defendant
seeking leave of the Court to place on record additional documents,
which according to the defendant are important and essential for
effective adjudication and deciding the matter in controversy.
18. It is the case of the defendant that plaintiff has filed suit for
permanent injunction restraining infringement of trademark, passing
off, rendition of accounts etc. It is stated that the documents i.e. a
table of comparison showing the points of dissimilarity between the
plaintiff's mark 'NOURISH' and the defendant's mark 'NOURISH
YOU', a table of comparison showing the points of dissimilarity
between the plaintiff's trade dress under the mark 'NOURISH' and the
defendant's trade dress under the mark 'NOURISH YOU', an
illustrative table showing the usage of word 'NOURISH' by various
third parties establishing the presence of similar products in
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circulation in the market, scanned copy of Chartered Accountant
Certificate showing the revenue and promotional expenses of the
defendant under the trademark for the year 2023, print outs from
defendant's website https://nourishyou.in/ showing the prominent use
of the defendant's mark 'NOURISH YOU' along with WHOIS search
result webpage showing the details of the website registration,
printouts from the plaintiff's website https://nourishstore.co.in/along
with WHOIS search result webpage showing the details of the
website registration, printouts from social media websites showing
the extensive presence of the defendant under the trademark
'NOURISH YOU', printout from the plaintiff's social media regarding
the earliest post to show the earliest usage of the mark 'NOURISH',
printout of various third party blog/websites covering investments by
celebrities in the defendant company and evidencing extensive use
and goodwill of the defendant, printout of the defendant's presence
among the offline retailers evidencing the extensive use of the
defendant's products under the trademark 'NOURISH YOU', print out
of the third party e-commerce website showing domestic listings
along with international listings of the defendant's products under the
trademark 'NOURISH YOU', print out of status page along with
notice of opposition/counter statement, where applicable of the Trade
Marks applied by the plaintiff and refused/opposed/objected
/abandoned by the Trade Marks Registry, Compact Disc (CD)
containing the cover files along with Status page and Examination
report of the Trademarks applied by the plaintiff and
refused/opposed/objected/abandoned by the Trade Marks Registry,
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Print out of Search report consisting multiple third party marks
containing the word 'NOURISH' and printouts of various third party
websites showing products listing of third parties on the internet
showing the usage of the mark containing the word 'NOURISH' are
material and relevant documents.
19. It is asserted by defendant that these documents are crucial for
adjudicating the lis between the parties and that no prejudice would
be caused to the plaintiff, if the document is permitted to be placed
on record as the documents are available on
www.ipindiaservices.gov.in whereas, grave prejudice would else, be
caused to the defendant. It is further submitted that as the suit is at the
initial stage and these documents being necessary and relevant be
permitted to be brought on record.
20. Per contra, the plaintiff opposed the present application stating
that the defendant itself claims that the documents are available in
public domain and the defendant under the garb of present application
is further delaying the proceedings.
21. As discussed in preceding paragraphs, the application filed by
the defendant under Order VI Rule 17 CPC seeks amendment of
written statement was allowed subject to cost of Rs. 50,000/- to be
paid to the plaintiff. Even though no reasonable cause for non
disclosure of documents at the time of filing of original written
statement was given by the defendant, however, having heard ld.
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Counsels for parties, the court is of opinion that application deserves
to be allowed as the documents are relevant and even otherwise, the
documents such as print outs from the defendant as well as plaintiff's
website showing the trademark and their extensive presence including
search report are in public domain being accessible on
www.ipindiaservices.gov.in. The application is accordingly allowed
taking additional documents on record subject to their admissibility
and relevance being decided during trial. The plaintiff is at liberty to
file affidavit of admission-denial of defendant's additional documents.
22. Liberty is given to the plaintiff to file replication to the
amended written statement of defendant within 30 days. Along with
replication, if any, filed by the plaintiff, an affidavit of admission /
denial of documents of defendant be filed by the plaintiff, without
which, the replication shall not be taken on record. If any of the
parties wish to seek inspection of any documents, the same shall be
sought and given within the timelines.
23. List this matter for arguments on pending application,
completion of pleadings, admission/denial of documents and marking
of exhibits of documents on 06.01.2024.
VINEETA GOYAL
District Judge (Commercial Court-03)
PHC / New Delhi / 05.12.2023
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