Radhe Krishna Products - A Partnership Firm vs Parshottambhai Dharamshibhai Lunagriya

C/SCA/410/2014 CAV JUDGMENT

IN THE HIGH COURT OF GUJARAT AT AHMEDABAD

SPECIAL CIVIL APPLICATION NO. 410 of 2014

FOR APPROVAL AND SIGNATURE:

HONOURABLE MR.JUSTICE K.M.THAKER Sd/- =========================================================== 01. Whether Reporters of Local Papers may be allowed to see the Yes judgment? 02. To be referred to the Reporter or not? Yes

03. Whether their Lordships wish to see the fair copy of the No judgment? 04. Whether this case involves a substantial question of law as to the No interpretation of the constitution of India, 1950 or any order made thereunder? 05. Whether it is to be circulated to the civil judge? No =========================================================== RADHE KRISHNA PRODUCTS - A PARTNERSHIP FIRM & 2....Petitioner(s) Versus PARSHOTTAMBHAI DHARAMSHIBHAI LUNAGRIYA....Respondent(s) ================================================================ Appearance: MR TUSHAR MEHTA, SENIOR COUNSEL WITH MR PRATIK Y JASANI, ADVOCATE for the Petitioner(s) No. 1 - 3 MR SUNIT SHAH, COUNSEL WITH MR NEHAL M RAVAL, ADVOCATE for the Respondent(s) No. 1 ================================================================

CORAM: HONOURABLE MR.JUSTICE K.M.THAKER

Date : 28/08/2014

CAV JUDGMENT

1. In present petition, the petitioners have prayed,

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inter alia, that:

"10(A) This Hon'ble Court may be pleased to issue an appropriate writ, order and/or direction, quashing and setting aside the impugned order dated 25.11.2013 passed by the Ld. 6th Additional District & Sessions Judge, Jamnagar below application Ex.15 in Regular Civil Suit No.65/2012, and be further pleased to reject plaint of Regular Civil Suit No.65/2012 filed by the Respondent in the Court of Ld. 6th Additional District & Sessions Judge, Jamnagar."

2. The petitioners are aggrieved by order dated

25.11.2013 passed by the learned trial Court below Exh.15

in Regular Civil Suit No.65 of 2012 whereby the learned

trial Court rejected present petitioners' (i.e. original

defendants) application (Exh.15) which was filed under

Order VII Rule 11 (a) and (d) of the Civil Procedure Code

(hereinafter referred to as 'the Code').

3. The relevant facts involved in and leading to

present petition are that:

3.1 The petitioners are the original defendants and

the respondent herein is the original plaintiff in Regular

Civil Suit No.65 of 2012.

3.2 According to the details mentioned in the

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petition, the petitioner No.1 is a partnership firm which is

engaged in the business of processing and selling edible

lime ordinarily used in pan masala and/or with beetle nut

and tobacco.

3.3 The petitioners claim that they are selling their

product under different brand names viz. Babu, New Patel

and Shree Bhole Bapa Parcel. The petitioners have further

claimed that since 2006 they adopted, and started to use

the mark 'Babu Chuna' and 'Babu Parcel' on the packaging

of edible lime and that during the same time they also

started using another mark viz. 'New Patel Parcel Chuna'

and 'Shree Bhole Bapa Parcel' hereinafter referred to as

'Bhole Bapa').

3.4 The petitioners have claimed that in July 2012,

the respondents herein filed a civil suit which came to be

registered as Regular Civil Suit No.4 of 2012 (hereinafter

referred to as 'the said first suit') at Rajkot against the

petitioners on the allegation of (a) infringement of

copyright; and (b) passing off. The respondents also filed

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application for injunction / interim relief (Exh.5) whereon

the learned Court issued notice to the petitioners.

3.5 It is claimed by the petitioners that they have

obtained assignment of the trademark 'Babu Chuna' from

one Mrs. S. Sayali and for that purpose a deed of

assignment dated 7.8.2012 (i.e. after the respondents

filed the said first suit No.4 of 2012) has been executed

between said Mrs. S. Sayali and the petitioners.

3.6 The petitioners have also claimed that they filed

objections against the maintainability of the said first suit

(i.e. RCS No.4 of 2012).

3.7 According to the petitioners, the respondents

tendered a purshis (Exh.16) in the said first suit declaring

that the said suit and the injunction application is only for

infringement of copyright and accordingly he (i.e. the

plaintiff) will delete the averments of passing off in the

plaint and injunction application and will submit amended

plaint and injunction application.

4 C/SCA/410/2014 CAV JUDGMENT 3.8 The petitioners have also claimed that in

September 2012, they have filed a suit for infringement of

trademark against present respondent which is registered

as Regular Civil Suit No.7 of 2012.

3.9 The petitioners have alleged that during the

pendency of the said first suit, the respondent filed

another suit at Jamnagar which is registered as Regular

Civil Suit No.65 of 2012 (hereinafter referred to as 'the

said second suit').

3.10 In this background, the petitioners herein filed

an application (i.e. Exh.15) dated 19.1.2013 in the said

second suit and claimed that the said second suit is not

maintainable in light of Order VII Rule 11(a) and (d). After

hearing the parties with reference to the said application

(Exh.15), the learned trial Court passed the order dated

25.11.2013 and rejected the said application for the

reasons recorded in the order. Hence present petition.

4. Mr. Mehta, learned senior counsel submitted

that after having withdrawn the averments and the

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claim/relief with reference to alleged 'passing off' and

after declaring that the relief prayed for in the suit

No.4/2012 is to be restricted to the claim/relief against

alleged infringement of copyright, it is not permissible to

the plaintiff (i.e. present respondent) to file another suit

for similar claim/relief, however, the plaintiff in the said

first suit has filed second suit for same claim/relief.

According to the learned senior counsel for the petitioners,

any permission from the Court to file second suit for same

claim/relief was neither prayed for nor granted and

therefore also the said second suit (RCS No.65/2012) is

not maintainable. He also submitted that the said second

suit is a composite suit and that, therefore also, the said

second suit is barred by law. Mr. Mehta relied on the

provisions under Order 23 Rule 1(4) and Order 2 Rule 2 of

the Code and Section 27 read with Sections 135, 28 and

29 of the Trademarks Act. Mr. Mehta submited that in

light of the said provisions the plaint/suit deserve to be

rejected under Rule 11 (a) and (d) of Order 7 and the

application filed by the petitioners ought to have been

allowed however the learned trial Court failed to

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appreciate the said contentions and erred in rejecting the

application. According to Mr.Mehta, learned senior

counsel, the impugned order suffers from serious error of

non-application of mind and that the impugned order is a

non-speaking and unreasoned order and that the second

suit deserves to be and ought to have been rejected. In

support of his submissions, Mr. Mehta relied on below

mentioned decisions:

(a) Ratan Food Products vs. Jasvindersing Harcharansing Madan [LPA No.877/2010];

(b) T.Arivandandam Vs. T.V. Satyapal [1977(0)GLHEL-SC 31367);

(c) Maharaj Shri Manvendrasinhji Ranjitsinhji Jadeja Vs. Rajmata Vijaykunverba Wd/o Late Maharaja Mahendrasinhji [1998 (2) G.L.H. 823];

(d) Chandrakant Kantilal Jhaveri Vs. Madhuriben Gautambhai [G.L.R. 2010(52) 270];

(e) Croft Sales And Distribution Ltd. Vs. M.V.Basil [2011(0) GLHEL-HC 224598];

(f) Gulabchand Makanji Degamwala Vs. Motapondha Vibhag Tenants Co-operative Agricultural Society Limited [1962 GLR 991];

(g) Sheela Adhikari Vs. Rabindra Nath Adhikari [1987(0) AIJ-WB 503289];

(h) Bloom Dekor Limited Vs. Subhash Himatlal Desai with Bloom Dekor Limited Vs. Arvind B.Sheth [1994 (0) GLHEL-SC 3960];

(i) A.K.Gupta And Sons Ltd. Vs. Damodar Valley Corpn. [1994 (6) SCC 322]

(j) Dahyabhai Ranabhai Vaghela Vs. Bloom Dekor Ltd. [1995 (1) G.L.H. 865]

(k) Hindustan Zinc Limited, Udaipur Vs. Vijaysinh Amarsinh And Company [1993 (0) GLHEL-HC 204912];

(l) Cadila health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. [AIR 2001 Supreme Court 1952];

(m) Khoday Distilleries Limited Vs. Scotch Whisky Association [2008 (37) PTC 413(SC)];

(n) Virgo Industries (Eng.)Private Limited Vs. Venturetech Solutions

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Private Limited [(2013) 1 SCC 625];

(o) State Bank of India vs. Gracure Pharmaceuticals Ltd. [2013 GLHEL_SC 54681];

(p) Devarapu Narasimharao vs. Yerrabothula Peda Venkaiah [1998 (2) ALT 513];

(q) Modi Korea Telecommunications Ltd. vs. Indus Ind. Bank Ltd. [AIR 2001 Delh 254];

(r) Narayan Jethanand, since deceased by his heirs & legal representatives vs. Asapuri Vijay Saw Mill [1995 (1) GLH 1147];

(s) N.V. Srinivasa Murthy vs. Mariyamma (Dead) by proposed L. Rs.

[AIR 2005 SC 2897].

4.1 Per contra, Mr. Shah, learned counsel for Mr.

Raval, learned advocate for the respondent opposed the

petition and the submissions by Mr. Mehta and submitted

that the subsequent suit filed by present respondent is

neither barred by Order 2 Rule 2 nor by Order 23 Rule

1(4). Mr. Shah also disputed the contention that the

second suit is a composite suit or that it is hit by section

27 of the Act. Mr. Shah submitted that the first suit is

filed with reference to and in light of the mark 'Bhole

Bapa'. He also submitted that the relief prayed for / claim

in the first suit is against alleged infringement of copyright

in artistic work of plaintiff's label and the relief / claim

against passing off are raised with reference to mark

'Bhole Bapa', whereas the second suit is against and in

respect of alleged passing off by using mark 'Babu'.

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According to learned advocate for the respondent, the

said two suits are based on different subject matter and

separate cause of action. According to the respondent,

the provisions under Order 2 Rule 2 and/or Order 23 Rule

1(4) are not attracted in respect of the said second suit

and the suit is not barred by the said provisions. Mr.

Shah, learned advocate for the respondent also contended

that the application under Order 7 Rule 11 is based on

defence and their contention amounts to going into the

defence of the defendants. Mr.Shah, learned advocate for

the respondent also claimed that in a petition under

Article 227 of the Constitution, the Court would interfere

with the order of the learned trial Court only if the reasons

are perverse, however, in present case, the reasons

recorded by the learned trial Court are not perverse and

therefore, the order does not deserve to be and may not

be interfered. Mr.Shah, learned counsel relied on following

decisions:

(a) Alka Gupta vs. Narender Kumar Gupta [AIR 2011 SC 9];

(b) Oriental Bank of Commerce vs. Naresh Khushaldas Gangtani [AIR 2007 Gujarat 172];

(c) Societe Des Products NESTLE, SA vs. Essar Industries [2002 (24) PTC 156 (Del)];

9 C/SCA/410/2014 CAV JUDGMENT (d) Virgo Industries P. Ltd. vs. Venturetech Solutions P Ltd. [JT-2012-

8-600];

(e) Smithkline Beecham Consumer Healthcare Gmbh vs. Hindustan Lever Ltd. [2002 (25) PTC 417 (Bom) (DB)];

(f) Mahendra & Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd. [2002 (24) PTC 121 (SC)];

(g) Bengal Waterproof Ltd. vs. Bombay Water proof Mnfg. Co. [AIR 1997 SC 1398]

(h) Dhara Seeds vs. Gujarat Farm Seeds Pvt. Ltd. [(GJH)-2009-11- 43];

(i) Laxmikant V. Patel vs. Chetanbhat Shah [2002 (24) PTC 1 (SC)];

(j) Hindustan Uniliver Ltd. vs. Sree Annapoorna Foods [2013 (56) PTC 302 (Mad)];

(k) Surjit Kaur Gill vs. Adarsh Kaur Gill [2014 (2) Scale 81;

(l) Dandi Salt Pvt. Ltd. vs. Indo Brine Industries Ltd. [2013 JX (Guj) 759].

5. Before taking up rival submissions for

consideration, it is relevant and necessary to mention that

during subsequent submissions by the petitioners and the

respondent, a further affidavit dated 30.6.2014 came to

be tendered on record by the petitioners whereby it is

brought on record that after submitting the above referred

purshis dated 9.11.2012 (exhibit 16) in the said first suit,

the plaintiff of the said first suit did not take consequential

steps until 26.11.2012. It is claimed that sometime after

filing the said purshis dated 9.11.2012 the plaintiff, i.e.

present respondent submitted an application seeking time

to file an application under Order 6 Rule 17. Thereafter on

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15.12.2012 the plaintiff presented an application (Exh.18)

and prayed for further time and subsequently, on

29.12.2012, the plaintiff filed an application dated

15.12.2012 (Exh.22) under Order 6 Rule 17. Thereafter,

the proceedings of the said first suit were adjourned and

on 19.1.2013 the petitioners filed their reply to the said

application dated Exh.22 under Order 6 Rule 17 of the

Code. The petitioners and defendants have clarified that

until 9.5.2014 any order below said Exh.22 is not passed

by the Court.

5.1 Meaning thereby, even after filing above

mentioned purshis dated 9.11.2012 (Exh.16), until

29.12.2012 the plaintiff had not deleted the averments

related to alleged passing off from the said first suit and/or

or had not (until 29.12.2012) amended the said first suit

and that when the plaintiff filed said second suit No. 65 of

2012 i.e. on 3.11.2012, the said first suit No.4/2012 was

pending in its original and unamended form and that,

therefore, when the learned trial Court heard and

considered the defendant's application under Order 7 Rule

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11 (a) and (d) viz. Exh.15 the learned trial Court had to

consider - i.e. had no option but to consider - (a) the

unamended plaint of the first suit; and (b) the purshis

Exh.16; and (c) the defendant's application under Order 7

Rule 11 (in second suit); and (d) the documents placed on

record by the parties. Accordingly, after hearing the

parties and upon considering the material on record, the

Court passed the impugned order dated 25.11.2013.

6. I have heard learned counsel for the contesting

parties and also considered the material on record

including the plaint in said three suits and the impugned

order as well as the decisions relied on by learned

advocates.

Re: Order 7 Rule 11:

7. It is trite that for deciding an application

invoking Order VII Rule 11 (a) and (d) averments only in

the plaint can be taken into account and the plea/defence

raised by the defendant cannot and should not be taken

into account. Moreover the plaint must be read as a

whole and not in bits and pieces. The pleadings should be

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read without addition or substraction of any words and the

applicant / defendant cannot selectively pick-up some

sentence or passage and read it out of context. It is also

pertinent that at the stage of considering an application

under Order 7 Rule 11, the learned trial Court is not

supposed to examine and test the substance and merits of

the allegations and/or to decide as to whether there is

enough evidence whereby the plaintiff can prove its claim

and the allegations and whether the plaintiff will succeed

in the suit or not. The allegations by the plaintiff are

matter of proof and evidence. At this stage, the learned

trial Court would only examine as to whether the plaint

contains appropriate and necessary averments which

make out cause of action or not.

8. On this count it would be appropriate to take

into consideration following observations by Hon'ble Apex

Court in the decision in case between T. Arivandandam vs.

T.V. Satyapal [(1977) 4 SCC 467]:

"... ... ... if on a meaningful - not formal - reading of the plaint it is manifestly vexatious and meritless, in the sense of not disclosing a clear right to sue issued exercise his power under Order 7 Rule 11 CPC. ..."

13 C/SCA/410/2014 CAV JUDGMENT which explain the circumstances in which the power under

Order 7 Rule 11 should be exercised.

8.1 Thereafter, in the decision in case between

Reptacos Breh and Co. Ltd. vs. Ganesh Property [(1998) 7

SCC 184], Hon'ble Apex Court observed that the

averments in the plaint as a whole have to be seen to find

out whether clause (d) of Rule 11 of Order 7 was

applicable.

8.2 Subsequently in the decision in case between

Saleem Bhai vs. State of Maharashtra [(2003) 1 SCC 557],

Hon'ble Apex Court explained and clarified that the power

under said provision can be exercised at any stage of the

proceedings, Hon'ble Apex Court observed, inter alia,

that:

"9. A perusal of Order VII Rule 11 C.P.C. makes it clear that the relevant facts which need to be looked into for deciding an application thereunder are the averments in the plaint. The trial court can exercise the power under Order VII Rule 11 C.P.C. at any stage of the suit-before registering the plaint or after issuing summons to the defendant at any time before the conclusion of the trial. For the purposes of deciding an application under clauses (a) and (d) of Rule 11 of Order VII C.P.C. the averments in the plaint are germane; the pleas taken by the defendant in the written statement would be wholly irrelevant at that stage, ..."

8.3 In the decision in case between Mayar (H.K.)

14 C/SCA/410/2014 CAV JUDGMENT Ltd. vs. Owners & Parties, Vessel M.V. Fortune Express

[(2006) 3 SCC 100], Hon'ble Apex Court explained the

position with regard to Order 7 Rule 11 by following

observations:

"12. From the aforesaid, it is apparent that the plaint cannot be rejected on the basis of the allegations made by the defendant in his written statement or in an application for rejection of the plaint. The Court has to read the entire plaint as a whole to find out whether it discloses a cause of action and if it does, then the plaint cannot be rejected by the Court exercising the powers under Order VII Rule 11 of the Code. Essentially, whether the plaint discloses a cause of action, is a question of fact which has to be gathered on the basis of the averments made in the plaint in its entirety taking those averments to be correct. A cause of action is a bundle of facts which are required to be proved for obtaining relief and for the said purpose, the material facts are required to be stated but not the evidence except in certain cases where the pleadings relied on are in regard to misrepresentation, fraud, wilful default, undue influence or of the same nature. So long as the plaint discloses some cause of action which requires determination by the court, mere fact that in the opinion of the Judge the plaintiff may not succeed cannot be a ground for rejection of the plaint. In the present case, the averments made in the plaint, as has been noticed by us, do disclose the cause of action and, therefore, the High Court has rightly said that the powers under Order VII Rule 11 of the Code cannot be exercised for rejection of the suit filed by the plaintiff-appellants."

8.4 The issue related to limitation came up for

consideration in the decision in the case between C.

Natrajan vs. Ashim Bai [(2007) 14 SCC 183], and Hon'ble

Apex Court observed that:

"8. An application for rejection of the plaint can be filed if the allegations made in the plaint even if given face value and taken to be correct in their entirety appear to be barred by any law. The question as to whether a suit is barred by limitation or not would, therefore, depend upon the facts and circumstances of each case. For the said purpose, only the averments made in the plaint are relevant. At this stage, the court would not be entitled to consider the case of the defence.

9. Applicability of one or the other provision of the Limitation Act per se cannot be decisive for the purpose of determining the question

15 C/SCA/410/2014 CAV JUDGMENT

as to whether the suit is barred under one or the other article contained in the Schedule appended to the Limitation Act."

8.5 Recently, in the decision in case between

Church of Christ Charitable Trust and Educational

Charitable Society represented by its Chairman vs.

Ponniamman Educational Trust [(2012) 8 SCC 706],

Hon'ble Apex Court explained the position emerging from

Order 7 Rule 11 and observed, inter alia, that:

"... It is clear from the above that where the plaint does not disclose a cause of action, ... ... ... ... ... ... the Court has no other option except to reject the same. A reading of the above provision also makes it clear that power under Order VII Rule 11 of the Code can be exercised at any stage of the suit either before registering the plaint or after the issuance of summons to the defendants or at any time before the conclusion of the trial. ..."

"... It is clear that in order to consider Order VII Rule 11, the Court has to look into the averments in the plaint and the same can be exercised by the trial Court at any stage of the suit. It is also clear that the averments in the written statement are immaterial and it is the duty of the Court to scrutinize the averments/pleas in the plaint. In other words, what needs to be looked into in deciding such an application are the averments in the plaint. At that stage, the pleas taken by the defendant in the written statement are wholly irrelevant and the matter is to be decided only on the plaint averments. ..."

"... While scrutinizing the plaint averments, it is the bounden duty of the trial Court to ascertain the materials for cause of action. The cause of action is a bundle of facts which taken with the law applicable to them gives the plaintiff the right to relief against the defendant. Every fact which is necessary for the plaintiff to prove to enable him to get a decree should be set out in clear terms. It is worthwhile to find out the meaning of the words "cause of action". A cause of action must include some act done by the defendant since in the absence of such an act no cause of action can possibly accrue. ..."

8.6 Likewise, in the decision in case between Bhau

Ram vs. Janak Singh [AIR 2012 SC 3023], Hon'ble Apex

Court again clarified that:

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"8. The law has been settled by this Court in various decisions that while considering an application under Order VII Rule 11 CPC, the Court has to examine the averments in the plaint and the pleas taken by the defendants in its written statements would be irrelevant."

8.7 The expression 'the plaint should be read as a

whole' is further explained by Hon'ble Apex Court in the

decision in paragraph No.19 in case between Popat H.

Kotecha Property vs. State Bank of India Staff Association

[(2005) 7 SCC 510]:

"19. There cannot be any compartmentalization, dissection, segregation and inversions of the language of various paragraphs in the plaint. If such a course is adopted it would run counter to the cardinal canon of interpretation according to which a pleading has to be read as a whole to ascertain its true import. It is not permissible to cull out a sentence or a passage and to read it out of the context in isolation. Although it is the substance and not merely the form that has to be looked into, the pleading has to be construed as it stands without addition or subtraction of words or change of its apparent grammatical sense. The intention of the party concerned is to be gathered primarily from the tenor and terms of his pleadings taken as a whole. At the same time it should be borne in mind that no pedantic approach should be adopted to defeat justice on hair-splitting technicalities." (Emphasis supplied)

8.8 Thus, in the matters under Order 7 Rule 11, the

plea/defence by the defendant is a foreign territory,

wherein the Court should not enter and travel.

Re: Order 7 Rule 11(a):

9. So as to invoke Rule 11(a), the learned senior

counsel for the petitioners claimed that (i) the plaint does

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not disclose any cause of action; and (ii) any ingredients

for passing off. For examining the said objections, the

plaint of the said second suit is required to be examined

keeping in focus the above-mentioned principles and

guidelines laid down by Hon'ble Apex Court.

9.1 When the averments and allegations in the

plaint of the said second suit are examined (relevant part

of the said second suit is reproduced in the later part of

this judgment), it emerges that the plaintiff has claimed

that on account of the acts of the defendant and in light of

the provisions under the Trade Marks Act, 1999 coupled

with its position and status as user of the mark 'Babu'

certain rights have accrued in its favour and the suit claim

is based on the assertion that he is 'prior user' of the

trademark 'Babu' which enjoys 'established goodwill and

reputation' and that the acts of the defendants amount to

passing off and the acts of the defendants have caused

and it will cause loss and damages. There are sufficient

and specific averments in the plaint which clearly spell out

the cause of action which led the plaintiff to institute the

18 C/SCA/410/2014 CAV JUDGMENT

said second suit against alleged passing off by using mark

'Babu'. Thus, in this case it cannot be said that the

plaintiff has failed to make out cause of action. The

petitioners' contention is not sustainable.

10. Now so far as the allegation that the plaint does

not make out any ingredients of passing off, is concerned,

it is appropriate to take into account the elements for

maintaining action of passing off. The acknowledged and

essential elements are viz. (a) reputation of goods; (b)

possibility of deception; (c) likelihood of damages to the

plaintiff. The averments in the plaint must reflect the said

elements. In addition to the said essential elements there

are certain other characteristics related to the action of

'passing off' viz. degree of resemblance, nature of goods,

similarity in nature and character of goods, class of

purchasers, the span/period for which the plaintiff is

associated with the mark/goods.

10.1 On this count, it emerges from the plaint of

second suit that the plaintiff has claimed that due to its

19 C/SCA/410/2014 CAV JUDGMENT

very good quality his goods command and enjoy great

popularity and has significant presence and his trade

name / trade mark 'Babu' has acquired rich and high

goodwill and that the defendants are selling their products

by using mark 'Babu' which is identical and deceptively

similar to the plaintiff's trade name / trade mark 'Babu'

and thereby the defendants are 'passing off' their goods

as that of the plaintiff's and that he has proprietary

interest in the goodwill and that it is likely to be damaged

due to misrepresentations by the defendants (i.e. the

petitioners). It comes out clearly that the plaint contains

proper and sufficient, basic and necessary averments and

assertions so as to demonstrate presence of the requisite

elements to maintain action against alleged passing off.

Thus, second limb of the objection is also not established

by the petitioners and it fails.

11. In this view of the matter, the above-

mentioned objection, i.e. objection at Sr.No.(i) and (ii)

above are not sustainable. Once it is found that the above-

mentioned objections against the plaint of the said second

20 C/SCA/410/2014 CAV JUDGMENT

suit are not sustainable, then as corollary the objection in

light of Rule 11(a) of Order VII fails.

12. So as to invoke Rule 11(d) the learned senior

counsel for the petitioners claimed that (iii) the said

second suit is barred by law since (a) it is not maintainable

in light of Order 2 Rule 2; and (b) it is not maintainable in

light of Order 23 Rule 1(4); and (iv) the said second suit is

not maintainable because it is a composite suit and also

because it is hit by section 27 of the Act because the

plaintiff has claimed (a) relief against passing off and

copyright; and (b) also because the plaintiff has prayed

for damages as well as accounts of profit along with

prayer for injunction.

13. For sake of convenience, the contention at

Sr.No.(iv) viz. second suit is a composite suit therefore it is

not maintainable, may be considered before taking-up the

contention at Sr.No.(iii).

Re: Composite suit:

14. On the said count the learned senior counsel Mr.

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Mehta submitted that in the said second suit the plaintiff

has claimed relief against alleged passing off as well as

against alleged breach of copyright and also claimed

damages and accounts of profit therefore the said second

suit is not maintainable and to support first limb of said

submission, he relied on the decision dated 7.3.2012 in

Letters Patent Appeal No.877 of 2010, wherein the

Division Bench relied on the decisions in the case of M/s.

Dhodha House vs. S.K. Mangi [AIR 2006 SC 730] and in the

case of Dabur India Ltd. vs. K.R. Industries [(2008) 10 SCC

595] and observed, inter alia, that:

"7. In view of the aforesaid decision of the Hon'ble Supreme Court, since the cause of action with regard to the infringement of Copy Right Act and passing off Trade Mark under Section 27 of the Trade Marks Act are different and distinct cause of action, therefore, separate suits were required to be filed under the aforesaid Acts and composite suit would not be maintainable in view of the aforesaid decision of the Hon'ble Supreme Court in the case of Dabur India (supra)."

14.1 The question which, therefore, arises is whether

in his second suit the plaintiff has prayed for the said two

relief/s or only against alleged 'passing off'.

14.2 In this context, it is pertinent that though the

plaint should be read as a whole and few paragraphs or

few sentences cannot be conveniently picked up and

22 C/SCA/410/2014 CAV JUDGMENT

cannot be read out of context or in isolation, the plaintiff

has picked up two paragraphs, or rather few sentences

from two paragraphs viz. paragraphs No.5 and 7 of the

plaint and they are sought to be read out of context so as

to justify the said contention. The sentences from

paragraphs No.5 and 7 which are picked up by the

defendants, read thus:

"5. The plaintiff further submits that the plaintiff is using the said trade mark BABU represented in an artistic manner and to avail statutory protection for its artistic work, applied under the Copyright Act, 1957 on 3.6.2010 and Hon'ble Registrar of Copyright was pleased to register the said label. Therefore, the plaintiff is entitled to statutory protection of the same...."

"7. ... ... ... It is further submitted that the defendant has not only adopted the word BABU but the defendant has also imitated the artistic work of the label and colour scheme of the plaintiff...."

14.3 On plain reading of the plaint, it emerges that

the relief prayed for as well as the cause of action and the

subject-matter in the said second suit are alleged acts of

'passing off' only and not infringement of copyright. In

this context it is pertinent that the defendants have

conveniently overlooked the relevant parts of said para 7,

which read thus:

"7. The plaintiff came to know from the market source that the defendant is selling its products lime under trademark "BABU", which is identical and deceptively similar to the plaintiff's trademark "BABU"......"

23 C/SCA/410/2014 CAV JUDGMENT Likewise the defendants have also ignored the

later part of said para 7 of second suit which reads thus:

"It is further submitted that the defendant has not only adopted the word "BABU" but the defendant has also imitated the artistic work of the label and color combination of the plaintiff. Such act on the part of the defendant is nothing but a deliberate intention to trade upon the goodwill and reputation of the plaintiff. The plaintiff has filed Regular Civil Suit for the infringement of copyright of his another label under title SHREE BHOLE BAPA bearing Regular Civil Suit No.4 of 2012 in the Hon'ble District court, at Rajkot against the said defendants on 30/7/2012 and as a counterblast to this, the defendant opted for the another Trade Mark BABU of the plaintiff. This clearly discloses the deliberate intention of the defendant. The plaintiff is constrained to file present suit against the defendant for passing off under the trademark BABU. It is submitted that the defendant has been using the said trademark in his products. Therefore, it is required for the plaintiff to file the present suit for passing off action and hence it is not barred under any other provisions of law. ... ..." (Emphasis supplied)

14.4 When entire plaint - including the relief prayed

for - is read as a whole and without any addition or

deletion then it emerges that - (i) alleged passing off is the

only subject-matter and cause of action of the said second

suit; and (ii) the relief which are prayed for are only

against alleged 'passing off' and not for 'copyright

protection'. The petitioners have failed to demonstrate

and establish, and it is not possible to hold, that the said

second suit is a composite suit against alleged

infringement of copyright and also an action against

passing off. Thus, the said objection is without merits and

it should fail. In this view of the matter, first limb of

24 C/SCA/410/2014 CAV JUDGMENT

petitioners' objection (i.e. the ground at serial number (iv)

(a) mentioned above) cannot be sustained.

15. The above-discussion leads to, the second limb

of the said objection viz. the plaintiff has claimed

'damages' and also 'account of profit' and since the suit

comprises both claims, it is not maintainable in view of

section 27 and the suit should be rejected under Rule

11(d) of Order 7. Therefore, section 27 and other relevant

provisions may be considered.

Re: Sections 27, 28 and 135 of the Act:

15.1 Section 28 provides, inter alia, that registration

of trademark (i.e. a registered trademark) confers certain

rights on the proprietor of a trademark which is duly

registered in manner prescribed by the Act and section

27(1) provides, inter alia, that no infringement action will

lie in respect of an unregistered trademark. Thus, any

proceedings to prevent infringement of unregistered

trademark or to recover damages on account of

infringement of unregistered trademark is not

maintainable.

25 C/SCA/410/2014 CAV JUDGMENT

15.2 Sub-section (2) of section 27 carves out an

exception by recognizing common law right and it

provides, inter alia, that the restriction prescribed by

virtue of sub-section (1) of section 27 would not affect the

right to institute and maintain action for 'passing off'.

15.3 Section 135 of the Act provides, inter alia, that

in the suit for 'passing off the plaintiff may seek, and the

Court may grant, relief of (a) injunction (subject to such

conditions as the Court may consider appropriate) and

either the relief for (b) damages or account of profits at

the option of the plaintiff.

15.4 It emerges from plain reading of the said

provision that the Court cannot grant both reliefs (i.e. the

damages as well as account of profits). According to

section 135 the plaintiff cannot have both the reliefs but

can have either one of them, and that too, at his option.

When neither of the two reliefs (i.e. the reliefs prayed for

in the suit) are barred by law and the Court is competent

to grant either of the said two reliefs, then merely because

26 C/SCA/410/2014 CAV JUDGMENT

the plaintiff, while seeking injunction against alleged

passing off, mentions both claims in the plaint then entire

suit will not be rendered unsustainable and/or liable for

rejection under Order 7 Rule 11(d). Such position and

construction of said provisions, if accepted, will render

section 135 meaningless and ineffective or otiose and the

plaintiff's right to elect one of the two claims will stand

negated.

15.5 In this context, it is necessary to keep in focus

that the right of option allowed by law is a substantive

right and not a mere formality and that, therefore, it has

to be meaningful. A plaintiff cannot be asked or

compelled to, and is not even expected or supposed to

speculate completely in dark as to the quantum and/or

mode. Thus, such right would also enjoin further right viz.

to make informed decision. Obviously, such informed

decision can be taken only if sufficient material is

available. In this context, it would be appropriate to take

into account below quoted passage from Kerly's Law

Trade Marks and Trade names:

27 C/SCA/410/2014 CAV JUDGMENT

"Damages are a matter of right; the account of profits is an equitable remedy and the court has a discretion whether or not to grant it. Accordingly, a successful claimant in an infringement action is entitled to an inquiry as to damages (at his own risk as to costs) in any case where there is a prospect that the inquiry would reach a positive result; whilst only in certain cases will the court grant an account of profits. In these cases, the claimant has an option (exercisable at the conclusion of the hearing of the case) to claim Page 2585 either damages or profits; he cannot have both. Accordingly, it is usual in particulars of claim to ask for the two in the alternative. The principle upon which the court grants an account of profits is that where one party owes a duty to another, the person to whom the duty is owed is entitled to recover from the other party every benefit which that other party has received by virtue of his fiduciary position if in fact he has obtained it without the knowledge or consent of the party to whom he owed the duty. An account is generally refused if the defendant had no knowledge of the claimant's mark and, when ordered, is limited to the period during which such knowledge had existed; whilst knowledge or absence of knowledge does not affect the right to damages.

A claimant who has been successful in an action for trade mark infringement or passing of may not have sufficient knowledge of the defendant's activities to make an informed decision as to whether he should seek an inquiry as to damages or an account of profits. In such a case he may seek disclosure before making his election: Island Records v. Tring. Disclosure given in such circumstances should be limited to that which is necessary for the claimant to make an informed decision within a reasonable time; he is not entitled to all the disclosure which would be given in the inquiry, and in appropriate circumstances an audited schedule of infringing dealings may be a substitute for documentary disclosure."

15.6 In this view of the matter, ordinarily, a plaintiff

who initiates action against passing off, would, initially

(i.e. in the plaint) incorporate both the claims and can

exercise the option at appropriate stage. The question

which, therefore, would arise is about the stage at which

the plaintiff should exercise the option and declare the

selection.

15.7 So as to have sufficient material and relevant

28 C/SCA/410/2014 CAV JUDGMENT

details before him, in light of which he may take informed

decision and accordingly exercise option the plaintiff may

defer such election until the defendant enters the

proceedings and then the plaintiff may seek information in

accordance with the provisions of the Code or may defer

such election and await the stage of evidence and

exercise his option after the stage of evidence, however,

before conclusion of the final hearing. This view is

supported by the observations by Chancery Division in

case of Island Records Ltd. vs. Tring International plc and

other [(1995) 3 ALL ER 444], which laid down four

principles which, by now, are recognised and are well

settled. The relevant part of the decision reads thus:

"Four principles are clear. First, whilst a plaintiff can apply in proceedings in the alternative for damages and an account of profits, he cannot obtain judgment for both: he can only obtain judgment for one or the other (see Neilson v Betts (1871) LR 5 HL 1 and De Vitre v Betts (1873) LR 6 HL 319 at 321). Second, once judgment has been entered either for damages or an account of profits, any right of election is lost:

any claim to the remedy other than that for which judgment is entered is forever lost (see United Australia Ltd v Barclays Bank Ltd [1940 4 All ER 20 at 38, [1941] AC 1 at 30). Third, a party should in general not be required to elect or be found to have elected between remedies unless and until he is able to make an informed choice. A right of election, if it is to be meaningful and not a mere gamble, must embrace the right to readily available information as to his likely entitlement in case of both the two alternative remedies. It is quite unreasonable to require the plaintiff to speculate totally in the dark as to whether or not the sum recoverable by way of damages will exceed that recoverable under an account of profits. In an analogous situation, it has been held unreasonable to require a plaintiff to speculate whether a payment into court is sufficient to satisfy his claim for damages for infringement of copyright before he has been afforded inspection of the records of sales in the defendant's books (see Mate & Son v Samuel Stephen Ltd [1928-

35] Macg CC 257 at 261). Fourth, the exercise of the right of election

29 C/SCA/410/2014 CAV JUDGMENT

should not be unreasonably delayed to the prejudice of the defendant."

15.8 A profitable reference may also be made to the

decision in case of James Neilson vs. William Betts,

wherein it is observed, inter alia, that:

"My Lords, I have only farther to observe that the decree of the Court below directed not only an inquiry as to damages, but also an account of profits. The two things are hardly reconcilable, for if you take an account of profits you condone the infringement. I therefore think, my Lords, that we were right in calling upon the Respondent's Counsel to elect between the two which he would adopt. He has adopted the inquiry as to damages, and the other, the account of profits, must be struck out of the decree. But that ought not to alter the result of this appeal, and I trust, therefore, that your Lordships will concur in the motion I have to make, that this appeal should be dismissed with costs.

The motion will be that the decree of the Vice-chancellor be varied by striking out that portion of it which directs an account of profits, and that, subject to this alteration, the decrees, as well as the orders complained of, be affirmed, and the Appellant's petition of appeal dismissed with costs.

Decrees appealed from varied in one respect, and, subject thereto, the decrees and orders appealed from affirmed; and appeal dismissed with costs." (Emphasis supplied)

15.9 In the case of Lever vs. Goodwin [1887 (36) Ch.

D. 1 : 4 L.R. 1], Appeal Court (Chancery Division)

observed, inter alia, that:

"... ... ... ... ... It is well known that, both in trade-mark cases and patent cases, the plaintiff is entitled, if he succeeds in getting an injunction, to take either of two forms of relief; he may either say, "I claim from you the damage I have sustained from your wrongful act," or "I claim from you the profit which you have made by your wrongful act." Mr. Chadwyck Healey contended that the only profit which the Plaintiff could call for was that profit which arose from the sale of this soap where the ultimate purchaser bought it, not as the Defendants', but as the Plaintiff's soap. But, in my opinion, that is mistaking the whole gist of this action. The Defendants, as I understand, do not sell anything to retail purchasers, what they sell they sell to middlemen, that is to say, to people who purchase from them as wholesale merchants, and who

30 C/SCA/410/2014 CAV JUDGMENT

are going to sell it by retail; and the complaint against the Defendants is this: "You have dressed up your soap in such a dress that those middlemen to whom you sell it are enabled, by its having that deceptive dress upon it, to sell it the ultimate purchasers as the soap of the Plaintiffs." The profit for which the Defendants must account is the profit which they have made by the sale of soap in that fraudulent dress to the middlemen. It is immaterial how the middlemen deal with it. If they find it for their benefit not to use it fraudulently, but to sell the soap to the purchasers from them as Goodwin's, that cannot affect the question whether the sale by the Defendants to those middlemen of this soap in a fraudulent dress was a wrongful act. It still remains a wrongful act, because it put into the hands of the middlemen the means of committing a fraud on the Plaintiffs by selling the soap of the Defendants as the soap of the Plaintiffs.

In my opinion, therefore, the account of profits is right as it stands."

(Emphasis supplied)

15.10 It follows that inclusion of both the claims in the

plaint does not render the entire suit bad in law and the

plaintiff has right to exercise option during the

proceedings. Thus, the objection raised in light of section

27 of the Act is not sustainable and is not accepted. On

such ground entire suit cannot be rejected under Rule 11

of Order 7 of the Code. Hence, the contention mentioned

at Sr.No.(iv)(b) fails.

Re: Order 2 Rule 2:

16. Now the objection raised in light of Order 2 Rule

2 and Order 23 Rule 1 may be considered. The said

provision aims at discouraging multiple suits and

eliminating harassment with multiple suits for same cause

of action. On this count it would be profitable to take into

31 C/SCA/410/2014 CAV JUDGMENT

account certain decisions and judicial pronouncements. In

case of (a) Gurbux Singh vs. Bhooralal [AIR 1964 SC

1810], Hon'ble Apex Court observed thus:

"(6) In order that a plea of a bar under 0. 2. r. 2(3), Civil Procedure Code should succeed the defendant who raises the plea must make out (1) that the second suit was in respect of the same cause of action as that on which the previous suit was based, (2) that in respect of that cause of action the plaintiff was entitled to more than one relief, (3) that being thus entitled to more than one relief the plaintiff, without leave obtained from the Court, omitted to sue for the relief for which the second suit had been filed. From this analysis it would be seen that the defendant would have to establish primarily and to start with, the precise cause of action upon which the previous suit was filed, for unless there is identity between the cause of action on which the earlier suit was filed and that on which the claim in the later suit is based there would be no scope for the application of the bar. No doubt, a relief which is sought in a plaint could ordinarily be traceable to a particular cause of action but this might, by no means, be the universal rule. As the plea is a technical bar it has to be established satisfactorily and cannot be presumed merely on basis of inferential reasoning. It is for this reason that we consider that a plea of a bar under 0. 2. r. 2, Civil Procedure Code can be established only if the defendant files in evidence the pleadings in the previous suit and thereby proves to the Court the identity of the cause of action in the two suits...." (Emphasis supplied)

(b) In case of Bengal Waterproof Ltd. vs. Bombay

Waterproof Mfg. Co. [AIR 1997 SC 1398] Hon'ble Apex

Court observed that:

"7. A mere look at the said provisions shows that once the plaintiff comes to a court of law for getting any redress basing his case on case on an existing cause of action he must include in his suit the whole claim pertaining to that cause of action. But if he gives up a part of the claim based on the said cause of action or omits to sue in connection with the same then he cannot subsequently resurrect the said claim based on the same cause of action. So far as sub-rule (3) Rule 2 of Order 2, CPC is concerned, bar of which appealed to both the courts below, before the second suit of the plaintiff can be held to be barred by the same it must be shown that the second suit is based on the same cause of action on which the same in both the suits and if in the earlier suit plaintiff had not sued for any of the reliefs available to it on the basis of that cause of action, the reliefs which it had failed to press in service in that suit cannot be subsequently prayed for except with the leave of the Court. It must, therefore, be shown by the defendants forsupporting their plea of bar of Order 2 Rule 2 sub-rule (3)

32 C/SCA/410/2014 CAV JUDGMENT

that the second suit of the plain tiff filed in 1982 is based on the dame cause of action on which its earlier suit of 1980 was based and that because it had not prayed for any relief on the ground of passing off action and it had not obtained leave of the court in that connection, it cannot sue for that relief in the present second suit. So far as this plea of the defendants is concerned there is a threshold bar against them for their failure to bring on record the pleadings of the earlier suit which unfortunately has not been properly appreciated by the courts below...."

10. As seen earlier, Order 2 Rule 2 sub-rule (3) requires that the cause of action in the earlier suit must be the same on which the subsequent suit is based and unless there is identity of causes of action in both the suits the bar of Order 2 Rule 2 sub-rule (3) will not get attracted. The illustration below the said Rule amply brings out this position. A mere look at the said illustration shows that if a landlord sues the tenant in 1008 for the rent due till that year and omits to sue for rent for any of the previous years which had then accrued due he cannot subsequently sue the tenant for the previous rent due, claim for which was given up in the suit, It is obvious that a subsequent suit would not be barred in case of rent falling due after the first suit, say, for the year 1909 or 1910 etc. as that default would give him a fresh cause of action. In the facts of the present case it becomes obvious that when earlier suit was filed in 1980 the plaintiff had a cause of action regarding the alleged illegal use of his trade mark `DACK BACK' by the defendants and had also a grievance regarding the then existing deceitful action of the defendants in trying to pass of its goods `DUCK BACK'. Therefore, the cause of action foe the first suit of 1980 was based on the infringement of plaintiff's trade mark `DUCK BACK' by the defendants till the date of the suit filed in 1980. The grievance regarding passing off of the defendants' goods as if they were plaintiff's goods was also confined to the situation prevailing on the date of the earlier suit No.238 of 1980. That suit failed as the plaintiff had not claimed proper relief. Consequently for the alleged acts of infringement of plaintiff's trade mark or the alleged passing off actions on the part of the defendants till the date of the earlier suit no subsequent grievance could be ventilated by the plaintiff's by filing a fresh suit....." (Emphasis supplied)

(c) In case between Smithkline Beecham Consumer

Healthcare Gmbh vs. Hindustan Lever Limited [2002 (25)

PTC 417 (Bom) (DB)] wherein High Court of Bombay

observed, inter alia, that:

"16. A perusal of Order 2 Rule 2 of the CPC clearly reveals that this provision applies to cases where the plaintiff omits to sue portion of the cause of action on which such a suit is based either by relinquishing the cause of action or by omitting a part of it. The provision has, therefore, no application to cases where the plaintiff bases his suit on separate and distinct causes of action and chooses to relinquish one or the other of them. In such a case, it is always open to the plaintiff to file a fresh suit

33 C/SCA/410/2014 CAV JUDGMENT

on the basis of a distinct cause of action which he may have so relinquished. ... ... ...

18. Order 2 Rule 2 requires that the cause of action in t he earlier suit must be the same on which the subsequent suit is based and unless there is identity of causes of action in both the suits the bar of Order 2 Rule 2 will not get attracted. If there is recurring cause of action or there is fresh cause of action and if the plaintiff is pursuing the suit on such cause of action the bar under Order 2 Rule 2 would not be attracted. ... ......

19. ... ... ... In respect of passing off the evidence to establish the right is advertisements and sale of toothbrushes of the plaintiffs. In a copyright action the evidence will be totally different. In any event every fresh act of importation of a fresh mould would give to the plaintiffs under Section 51 read with Section 2(m) of the Copyright Act, 1957. In the facts of the present case, admittedly the cause of action upon which the plaintiffs have sued is different and distinct from the cause of action in the Delhi proceedings. As observed by the Supreme Court in Bengal Waterpool Ltd.'s case whenever and wherever a person commits breach of a registered trademark of another he commits a recurring act of breach of such trademark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. The ratio of this judgment is clearly applicable to the facts of the present case. It is, therefore, not possible to sustain the finding of the learned Single Judge that the suit of the plaintiffs was barred by Order 2 Rule 2." (Emphasis supplied)

(d) In the decision in case of State Bank of India vs.

Gracure Pharmaceuticals Ltd. [2013 (0) GLHEL-SC 54681]

Hon'ble Apex Court observed, inter alia, that:

"10. In Sandeep Polymers (P) Ltd.s case (supra), the above-mentioned principles were reiterated and this Court held as under:

"Under Order 2 Rule 1 of the Code which contains provisions of mandatory nature, the requirement is that the plaintiffs are duty-bound to claim the entire relief. The suit has to be so framed as to afford ground for final decision upon the subjects in dispute and to prevent further litigation concerning them. Rule 2 further enjoins on the plaintiff to include the whole of the claim which the plaintiff is entitled to make in respect of the cause of action. If the plaintiff omits to sue or intentionally relinquishes any portion of his claim, it is not permissible for him to sue in respect of the portion so omitted or relinquished afterwards.

11. The above-mentioned decisions categorically lay down the law that if a plaintiff is entitled to seek reliefs against the defendant in respect of the same cause of action, the plaintiff cannot split up the

34 C/SCA/410/2014 CAV JUDGMENT

claim so as to omit one part to the claim and sue for the other. If the cause of action is same, the plaintiff has to place all his claims before the Court in one suit, as Order 2 Rule 2, CPC is based on the cardinal principle that defendant should not be vexed twice for the same cause.

12. Order 2 Rule 2, CPC, therefore, requires the unity of all claims based on the same cause of action in one suit, it does not contemplate unity of distinct and separate cause of action. On the above- mentioned legal principle, let us examine whether the High Court has correctly applied the legal principle in the instant case." (Emphasis supplied)

(e) In the decision in case between Virgo Industries

(Eng.) Private Limited vs. Venturetech Solutions Private

Limited [(2013) 1 SCC 625], Apex Court observed:

"9. Order II Rule 1 requires every suit to include the whole of the claim to which the plaintiff is entitled in respect of any particular cause of action. However, the plaintiff has an option to relinquish any part of his claim if he chooses to do so. Order II Rule 2 contemplates a situation where a plaintiff omits to sue or intentionally relinquishes any portion of the claim which he is entitled to make. If the plaintiff so acts, Order II Rule 2 of CPC makes it clear that he shall not, afterwards, sue for the part or portion of the claim that has been omitted or relinquished. It must be noticed that Order II Rule 2 (2) does not contemplate omission or relinquishment of any portion of the plaintiff's claim with the leave of the court so as to entitle him to come back later to seek what has been omitted or relinquished. Such leave of the Court is contemplated by Order II Rule 2(3) in situations where a plaintiff being entitled to more than one relief on a particular cause of action, omits to sue for all such reliefs. In such a situation, the plaintiff is precluded from bringing a subsequent suit to claim the relief earlier omitted except in a situation where leave of the Court had been obtained. It is, therefore, clear from a conjoint reading of the provisions of Order II Rule 2 (2) and (3) of the CPC that the aforesaid two sub- rules of Order II Rule 2 contemplate two different situations, namely, where a plaintiff omits or relinquishes a part of a claim which he is entitled to make and, secondly, where the plaintiff omits or relinquishes one out of the several reliefs that he could have claimed in the suit. It is only in the latter situations where the plaintiff can file a subsequent suit seeking the relief omitted in the earlier suit proved that at the time of omission to claim the particular relief he had obtained leave of the Court in the first suit." (Emphasis supplied)

(f) In the said decision Hon'ble Apex Court further

observed that:

"The cardinal requirement for application of the provisions contained in

35 C/SCA/410/2014 CAV JUDGMENT

Order 2 Rules 2(2) and (3), therefore, is that the cause of action int eh later suit must be the same as in the first suit." (Emphasis supplied)

Thus, irrespective of the difference between

sub-clauses (2) and (3) the basic requirement viz. unity

and identity of cause of action is applicable in respect of

both, i.e. Sub-Rule (2) and (3) of Rule 2.

16.1 The principles which can be deduced from the

above-quoted decisions are:-

(a) the cardinal requirement for raising

objection against a suit in light of Rule 2 of

Order 2 is that the person who raises the

objection must establish that the cause of action

in the previous suit and the second suit is same;

(b) unless there is similarity and unity of cause

of action on which the previous suit was filed

and the cause of action for which the second

suit is filed, the prohibition would not be

attracted;

(c) similarity and unity of cause of action must

36 C/SCA/410/2014 CAV JUDGMENT

be demonstrated and it should be identifiable

from the plaint and without aid of and without

looking at the written statement or the defence;

(d) if a plaintiff intentionally omits to sue or if he

intentionally relinquishes part of the claim which

he is entitled to claim, then afterwards he

cannot sue for, and in the subsequent suit he

cannot resurrect, the same claim which he

omitted or relinquished;

(e) in order to establish that the cause of action

in both suits is the same, the defendant must

also establish that the claim has arisen out of

the same transaction;

(f) in case of recurring and/or continuous cause

of action, the bar under sub-rule (3) of Rule 2 of

Order 2 is not applicable and the said provision

cannot be invoked.

16.2 Since the thrust is on the identity and unity of

'cause of action' it would be appropriate to consider at this

37 C/SCA/410/2014 CAV JUDGMENT

stage the said expression 'cause of action'. The cause of

action, as is well settled, means every fact which will be

necessary for the plaintiff to prove, if traversed in order to

support his claim for the judgment. The causes of action

in the two suits may be considered to be the same if in

substance they are identical and the evidence required to

be led is similar or identical. In this context, profitable

reference may be made to Halsbury's Laws of England,

wherein with reference to the said expression 'cause of

action', it is stated thus:

"'Cause of action' has been defined as meaning simply a factual situation existence of which entitles one person to obtain from the Court a remedy against another person. The phrase has been held from the earliest time to include every fact which is material to be proved to entitle the plaintiff to succeed, and every fact which a defendant would have a right to traverse. 'Cause of action' has also been taken to mean that particular action on the part of the defendant which gives the plaintiff his cause of complaint, or the subject-matter of grievance founding the action, not merely the technical cause of action."

16.3 In this context, Privy Council, in the case of

Mohmmad Khalik Khan vs. Ali Mian [(1948) 75 Ind App

121] culled out following principles:

"The principles laid down in the cases thus far discussed may be thus summarized : (1) the correct test in cases falling under Order 2 Rule 2 is "whether the claim in the new suit is, in fact, founded on a cause of action distinct from that which was the foundation for the former suit, (Moonshee Buzloor Ruheen V. Shumsoonissa Begum, (1867)11 Moo Ind App 551 (605). The cause of action means every fact which will be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment (Read v. Brown, (1889) 22 QBD 128, 131). If the evidence to support the two claims is different then the causes of action are also different (Brunsden v. Humphrey, (1884) 14BD141). The causes

38 C/SCA/410/2014 CAV JUDGMENT

of action in the two suits may be considered to be the same if in substance they are identical (Brunsden v. Humphrey). The cause of action has no relation whatsoever to the defence that may be set up by the defendant, nor does it depend on the character of the relief prayed for by the defendant, nor does it depend on the character of the relief prayed for by the plaintiff." (Emphasis supplied)

16.4 Now, before taking in hands the plaints of the

said two suits for examining them in juxta-position, it

would be appropriate to recall that after present

respondent filed the said first suit No.4/2012 (but before

the respondent filed the said second suit, i.e. RCS

No.65/2012 on 3.11.2012), the petitioners herein (i.e.

defendants in the first suit No.4/2012) filed (on 15.9.2012)

a suit against present respondent (i.e. against plaintiff of

the said first suit No.4/2012), which came to be registered

as Regular Civil Suit No.7/2012.

16.5 In the said RCS No.7/2012, the petitioners have

expressly and specifically mentioned and described the

claim / relief and the subject-matter of the said suit, i.e.

RCS No.4/2012.

16.6 In this view of the matter, what could be better

medium than the petitioners' own suit and petitioner's

39 C/SCA/410/2014 CAV JUDGMENT

own description of (and admission regarding) the subject-

matter of present respondent's first suit (i.e. RCS

No.4/2012) to examine petitioner's said objection raised

on the allegation that cause of action in both suits is the

same.

16.7 In paragraphs No.15 and 19 of their suit

No.7/2012 the petitioners herein (i.e. the defendants)

themselves have thus described the subject-matter of

respondent's said first suit No.4/2012:

"15. The plaintiffs say and submit that the plaintiffs shocked and surprised much when the defendant herein filed a false and frivolous suit being Civil Suit No.4 of 2012 in the Court of Hon'ble 11 th Addl. District Judge, Rajkot for the alleged infringement of copyright and passing off against the use of the trade mark and packaging of SHREE BHOLE BAPA PARCEL of the present plaintiffs.

19. ... ... ... the defendant hurriedly and intentionally filed the aforesaid false and frivolous suit against the use of the trade mark label and packaging of SHREE BHOLE BAPA PARCEL for which otherwise also the defendant was having no cause of action."(Emphasis supplied)

16.8 From the said averments by the petitioners in

their own suit No.7/2012, it becomes clear that even the

petitioners (i.e. the defendants in the said first suit) have,

after proper examination, noticed that the cause of action

in the said first suit is alleged infringement of copyright

and passing off against the use of trade name and label

40 C/SCA/410/2014 CAV JUDGMENT

and packaging 'Bhole Bapa' and not against any other

packaging or trade name / trade mark being used by the

petitioners.

16.9 This aspect also becomes clear from the further

observations by the learned Court in the said order dated

31.12.2013 where the learned Court has recorded that:

"26. The plaintiff has filed this suit on 15.9.2012. It is also the case of plaintiff that the plaintiff came to know about illegal act of the defendant only in the first week of August, 2012 when the plaintiff received summons and notice of suit filed by defendant against the plaintiff's trade mark Shri Bhole Bapa Parcel. ... ..." (Emphasis supplied)

16.10 In paragraph No.5 of the said order below Exh.5

in aforesaid RCS No.7/2012, the Court has also recorded

and observed that:

"5. It is the say of plaintiff that the defendant herein filed CIVIL SUIT No.4 of 2012 in the District Court, Rajkot against the plaintiff herein for alleged infringement of copyright and passing off against the use of the trade mark and packaging of SHREE BHOLE BAPA PARCEL. It is the say of plaintiff that the said suit filed by defendant herein is false, frivolous and vexatious and it is filed with malafide intention to hide the wrong done by defendants." (Emphasis supplied)

16.11 Thus, from the averments in their own suit it

becomes clear that even the petitioners have understood

and perceived the said first suit No.4/2012 as an action

(against alleged infringement of copyright as well as

alleged passing off) in respect of and against label and

41 C/SCA/410/2014 CAV JUDGMENT

packaging which carries mark 'Bhole Bapa' (and not the

mark 'Babu').

17. Despite such clear and specific description of

respondent's said first suit by the petitioners in their own

suit, the petitioners, now (i.e. while pursuing their subject

application (Exh.15) under Order VII Rule 11) claim that

the said second suit is for the same claim and same cause

of action as in the first suit.

17.1 On examination and comparison of the plaints

in the said two suits and after taking into account the

purshis Exh.16 and also on taking into account the

claim/relief which the plaintiff is said to have relinquished

from the first suit, it emerges that the cause of action, the

claim/relief prayed for and the subject-matter in the said

first suit and second suit are different and the claim/relief

and cause of action and the subject-matter in the second

suit is not the same as the claim/relief and cause of action

and subject-matter in the first suit.

18. So as to invoke the provision under Order 2 Rule

42 C/SCA/410/2014 CAV JUDGMENT

2 the petitioners have also alleged that the first suit in its

original form (i.e. when the plaint was submitted) was a

composite suit (i.e. as an action against alleged

infringement of copyright and alleged passing off) and

subsequently the plaintiff submitted the purshis Exh.16

whereby the plaintiff abandoned a part of the cause of

action and the claim and the second suit is filed for same

claim and cause of action.

18.1 However, on this count what is relevant is the

vital fact that even in the original form of the said first suit

both the actions/claims (i.e. the action against alleged

infringement of copyright and the action/claim against

passing off) were with reference to and in connection with

trade mark / trade name 'Bhole Bapa'. Thus, when the

plaintiff (present respondent) filed the purshis (Exh.16)

declaring that the claim / reliefs with regard to 'passing

off' will be deleted, then, obviously, it would relate to the

said trade mark / trade 'Bhole Bapa'.

18.2 On this count it is also relevant to note that

43 C/SCA/410/2014 CAV JUDGMENT

according to their own claim the petitioners carry on

business under various names / marks e.g. New Patel,

Shree Bhole Bapa Parcel, Babu Parcel, Babu Chuna, New

Patel Parcel Chuna, etc. What is, however, relevant is that

said first suit is not filed with reference to and in

connection with all of those trade names / trade marks

under which the petitioners carry on their business but the

said first suit is filed in connection with only one trade

name / trade mark, i.e. 'Bhole Bapa'. In the plaint of their

own suit (RCS No.7/2012) the petitioners themselves have

mentioned that:

"... ... ... ... ... the defendant herein filed a false and frivolous suit being Civil Suit No.4 of 2012 in the Court of Hon'ble 11th Addl. District Judge, Rajkot for the alleged infringement of copyright and passing off against the use of the trade mark and packaging of SHREE BHOLE BAPA PARCEL of the present plaintiff. ..."

18.3 Thus, in their own suit the petitioners

themselves have expressly acknowledged, admitted and

mentioned that the use of 'Bhole Bapa' is the cause of

action for the claim against copyright as well as passing

off.

18.4 Thus, when the cause of action and subject-

44 C/SCA/410/2014 CAV JUDGMENT

matter of the said first suit is only with reference to mark

'Bhole Bapa', then the purshis, i.e. declaration in the

purshis Exh.16 would relate only to the said mark Bhole

Bapa. Hence, the claim/relief and the averments said to

have been deleted, i.e. the claim said to have been

abandoned by said purshis Exh.16 are also with reference

to and in connection with the said mark 'Bhole Bapa'.

18.5 Whereas the subject matter and the cause of

action and the relief prayed for and the claim in the said

second suit is the defendant's (i.e. present petitioner's)

alleged act of 'passing off' their (i.e. defendant's) goods as

plaintiff's goods (i.e. goods of present respondent) by

using the mark 'Babu' (which is different and distinct from

the trade name from 'Bhole Bapa' which is the subject

matter and cause of action in the first suit). It has

emerged that the said two suits are filed in respect of two

different and distinct trade names / trade marks. The

subject-matter and cause of action in the said second suit

is mark 'Babu'. Thus, the claim in the second suit is not

the claim which the plaintiff purportedly / is said to have

45 C/SCA/410/2014 CAV JUDGMENT

abandoned from the first suit. Merely because the relief

which the plaintiff abandoned from the first suit was

against 'passing off' and the second suit is filed against

'passing off', that single factor is not sufficient to lead to

the conclusion that the claim which the plaintiff is said to

have relinquished from the first suit and what is prayed for

in the second suit are the same. The comparative table -

which is part of paragraph No.20 of the plaint in the first

suit - demonstrates and illustrates the said aspect.

19. At this stage, it would be appropriate to take

into account the observations and findings recorded by

the learned trial Court with reference to the petitioner's

objections in light of Order 2 Rule 2. The learned trial

Court has observed and recorded, inter alia, that:

"Therefore plaintiff's suit before Rajkot District Court No.4/12 is for infringement of copy right of artistic lable of BABU against defendants with allegation that defendants has violated plaintiff's copy rights of artistic lable of BABU by reproducing and imitating the colour scheme, get up, lay out and arrangement of features wherein word "BAPA" used in place of "BABU". ... ... ... (Emphasis supplied)

17. While in this suit plaintiff has stated in plaint para-11 and 12 that,

"The plaintiff further submits that the defendant is residing and carrying on his business and selling his products under the trademark "BABU"

from the address shown in the cause title of the plaintiff, which is within the jurisdiction of this Hon'ble Court. Moreover, the goods of the defendant are also available within the territorial limits of this Hon'ble Court. Thus the entire cause of action has arisen within the JAMNAGAR District. Therefore, this Hon'ble Court is having territorial jurisdiction as

46 C/SCA/410/2014 CAV JUDGMENT

provided under the Trade Mark Act, 1999 and empowered to try and adjudicate the suit and grant relief as prayed for. Further, this Court is also having the jurisdiction under the provisions of the Trade Marks Act, 1999 and Civil Procedure Code 1908."

"The plaintiff further submits that the defendant is unauthorizedly using the said trademark "BABU", ... ... ..."

Thus this suit is pertaining to the unauthorized use by defendants for their product under the trade mark "BABU" and relief is passing off etc.

Hence the facts and even allegation is different in both the suits Nos. 3/12 and 65/12 (present suit). Suit no. 4/12 is for the product of the defendant under lable "BHOLE BABA" while present suit is regarding products of the defendants under the label of "BABU" and the relief in present suit is not on base of copy right of artistic label "BABU" but it is based on the fact that defendants is selling their products LIME under trade mark "BABU" which is identical and deceptively similar to the plaintiff's products under trade mark "BABU". Therefore, I do not agree with the submission of the L.A. for the defendant that this suit is a composite suit of infringement of copyright and infringement of trademark. (Emphasis supplied)

Thus present suit is for passing off under Trade Mark Act and suit No. 4/12 before Rajkot District Court is for infringement of copy right and therefore unreported judgment of the Hon'ble division bench of Gujarat High Court in L.P.A. No. 877/2010 in Special C.A. No. 38/2010 is not applicable in this case and as per above mention para-7 of present plaint cause of action is clearly disclosed for passing off therefore,"

20. Since for considering the petitioners' objection

in light of Order 2 Rule 2 and/or Order 3 Rule 1(4), it would

be necessary to examine the plaints of the said two suits

the relevant parts therefrom are reproduced below. In the

first suit the plaintiff has averred, inter alia, that:

"8. The "BABU artistic label" form a prominent part of the plaintiff. The plaintiff is origniator, bonafide adopter and honest user of "BABU artistic label". The plaintiff at the time of adoption the "BABU artistic label" have taken market search and after getting the positive reply from the competent authority has honestly adopted the "BABU artistic label". The plaintiff state and submit that engage in the business above "BABU artistic label" from the year 2000. The plaintiff has acquired common Law right as the plaintiff is using the said "BABU artistic label"

since 2000, but to acquire statutory right under The Copyright Act, the plaintiff applied for registration of the "BABU artistic label". Accordingly, the registration of "BABU artistic label" was granted in favour of the plaintiff and plaintiff acquired statutory right under The Copyright Act,

47 C/SCA/410/2014 CAV JUDGMENT

The said Registration of the "BABU artistic label" shall be prima facie evidence of the validity thereof. The said Registration is valid, subsisting and is in force. The Copyright Registry issued the copyright registration in favour of plaintiff. The Photo Copy of the Copyright Registration is produce with the list of documents. The said Copyright Registration is obtained on the basis of honest and prior user. The plaintiff state and submit that as per the provision of The Copyright Act, the plaintiff is the owner of the "BABU artistic label" and have exclusive right to reproduce the same. The plaintiff state and submit that the plaintiff is honest adopter prior user and owner of the artistic work as describe in the plaint and have a right to restrain the other person, firm, company using the same or reproduction in material form of plaintiff artistic label. The plaintiff further says that prior to launching the goods under the Artistic work had obtained Search Report from The Registrar Of Trade Marks as provided under The Copyright Act and the report doesn't refer to the names of the present defendants which otherwise shows that the defendants are subsequent.

14. In order to maintain distinctive identity the product from the product, manufacture, merchant, traders and service providers, coined conceived and honestly adopted a "BABU artistic lable" in the form of a label containing in an artistic manner (which shall be herein after referred to as the said Label "BABU artistic lable"). The said label is artistic work having distinct colour scheme, getup arrangement and eye- catching appearance for reference for plaintiff product / goods / services the label is annex with a list of documents. The said label is use by plaintiff openly, extensively and continuously from the year 2000 in respect of plaintiff product / goods / services the said label first printed and publish by the plaintiff and therefore, the plaintiff have exclusive right in the said artistic work of the label and no person, firm, and company is entitle to reproduce in material & substantial form, publish or use the said art work in a substantial and material form OR ANY Essential feature of artistic work / label without prior permission, license, consent of the plaintiff. The plaintiff further says and submit that he has not authorised any other person to reproduce the said Artistic Label.

15. On a bare perusal of the imitation label of the defendant, it is apparent that the same is a colourable imitation of the distinctive package / distinctive label of the plaintiff's and or essential futures of the plaintiffs distinctive label. Further cumulative effect, total image and visual impact of the impugned imitation label is substantially identical to and strongly reminiscent of the plaintiff's distinctive label and is a clear attempt by the defendant's to simulate the products / services of the plaintiff's and thereby committing acts of infringement of Copyright that vests in the Plaintiff.

16. "BABU artistic label" by the plaintiff under the distinctive label has acquire valuable reputation and goodwill under the circumstances explain about look & feel, distinctive trade dress layout colorscheme and getup of the distinctive label (including combination of colour) are associate by the public and consumer exclusively with the plaintiff label which resemble or closely resemble the distinctive label or which contain essential future of the plaintiff product / goods / services (including combination of colour), the defendant is misrepresenting there products / goods / services as those of plaintiff products / goods / services, and/or misrepresentatives that their goods have some connection or nexus with the goods of plaintiff causing damage to the plaintiff and to the goodwill and reputation of the plaintiff's business and is also diluting the distinctive of getup, layout looks and colour scheme

48 C/SCA/410/2014 CAV JUDGMENT

comprised the distinctively package and label. Such representation has been done deliberately so as to ride upon the reputation and goodwill of the plaintiff. Further, such misrepresentation of is causing / likely conclusion and deception of the trade, public and consumer. The plaintiff submit that such misrepresentation of the defendant is infringing or / and attempting to pass off their products / goods / services as those of plaintiff's products / goods / services. The plaintiff submit that the simulation / are resemblance of the imitation and label with those of the plaintiff's distinctive label with those of the distinctive label is clear evidence of the dishonest and fraudulent intention of the defendant to deceive and confuse the public, customer and traders and thereby earn unauthorised gains. The plaintiff state and submit that such wrongful action of the defendant amount to unfair competition and is actionable civil wrong. The plaintiff craves leave to take appropriate action for the passing off etc., by filing separate suit.

17. The plaintiff is the copyright owner of the copyright work referred in plaint. The plaintiff is also the first publisher of the work. The defendant's labels used on the impugned imitation products / goods / services is / are a reproduction of or a substantial reproduction of the plaintiff's copyright work comprise in the label used on distinctive "BABU artistic lable" represented at list of documents. The same has been unauthorised copy by the defendant from the plaintiff's label. Further the artistic work represented on the label is a reproduction or a substantial reproduction of the plaintiff's label by the defendant. Hence the defendant have infringed the plaintiff's copyright works.

18. The plaintiff state and submit that by reason of the above fact, products / goods / services under the distinctive artistic label contain the distinctive look and feel, color scheme; get-up and layout have come to associate by the traders, by the public and the consumer exclusively with the plaintiff's products / goods / services, artistic label (including its future referred in plaint) the plaintiff says that any colourable imitation thereof is bound to cause confusion and deception in the minds of the public traders and consumers.

20. Infringement of label and copyright: the use by the defendant/s of a closely similar mark for all types of lime, filter lime, double filter lime (calcium), calcium for betel nut & pan paste is without the consent authorisation license of the plaintiff and infringement of the plaintiff's products / goods / services label. The defendant/s has further reproduced the plaintiff's distinctive label. The colour scheme getup packaging fond plaintiff's product/label where the artistic label appears in a distinctive letter instruction for use printed on the label has been reproduce substantially by the defendant in respect of there products / goods / services, There by amounting to infringement of the copyright of plaintiff's. This is evident from a comparison between plaintiff's artwork and the artwork of the defendant. The plaintiff state and submit that by reproducing and imitating the colour scheme, getup, layout and arrangement of future as well as stylish manner of representing the word, the defendant have violated of the copyright of the plaintiff's said artistic work and liable for infringement of copyright.

The use by the defendant of a closely similar label / mark for all types of lime, filter lime, double filter lime (calcium), calcium for betel nut & pan paste is without the consent, authorisation, or licence of the plaintiffs and amounts to infringement of the plaintiffs copyright.

The defendant serve further reproduce the plaintiffs Blue / Brown and

49 C/SCA/410/2014 CAV JUDGMENT

Yellow Colour. The colour scheme and getup of the plaintiffs product packaging wherein the "BABU artistic label" appears in a distinctive letters along with the device the layout of the phrase special fodelo chuno and the other artistic work, in the front the temple and the picture and in the middle word and the white drop and other artistic work reproduce substantially by the defendant in respect of their product and packaging, thereby amounting to infringement the copyright of the plaintiff. This is evident from a comparison between plaintiffs product and the product of defendant as set out below.

PLAINTIFF PACKAGING DEFENDANT PACKAGING Photo Illegible Photo Illegible Use of colour label with Use of colour label with

background having a colour background having a colour combination of Brown and Yellow. combination of Brown and Yellow. The mark "BABU" is printed in The mark "BAPA" is printed in bold BABU Capital letters in bold BAPA Capital letters in English and Hindi with white ghost English and Hindi with white ghost

- line around the letters. - line around the letters. Use of the word parcel along with Use of the word parcel along with the mark "BABU". the mark "BAPA".

Use of catchy phrase special Use of catchy phrase special fodelo chuno under artistic fodelo chuno under artistic manner in blue colour on the face manner in blue colour on the face of pack-label. of pack-label.

The word SUPPER DOUBLE FILTER The word SUPPER DOUBLE FILTER LIME LIME Use of white drop in the pack- Use of white drop in the pack-

label label The layout design and colour The layout design and colour scheme of Lavender, dark Blue scheme of Brown and Dark Blue and Brown

28. The plaintiff state and submit that the plaintiff came to know about the defendant products / goods / services through their saleman on 10th July, 2012, salesman inform that defendant is offering the goods in the market in identical and deceptively similar label. The salesman obtain the packaging of defendant from hawkers of the defendant. After the salesman information and receiving the defendant's packaged goods through the salesman the present plaintiff approach their attorney for advice. The plaintiff attorney search the defendant application from the official website of the trademark registry and inform that the present defendant has file trade mark application. The trade mark search obtain by the plaintiff's attorney is submit with the list of documents. The Cause of action is arose when the plaintiff came to know and the cause of action is recurring cause of action and the plaintiff have no other option, hence file the present suit along with the ad-interim application. The salesman affidavit is submit with the list of documents and collected material are aslo submit with the list of documents."

"31A. To pass an order of permanent injunction restraining the defendants, his servants, agents, and other persons working under the control of the defendant from

50 C/SCA/410/2014 CAV JUDGMENT

(a) Using packaging similar to plaintiff "BABU" artistic lable including the get up and art work as well as Blue / Brown and Yellow colour scheme, fonts, writing style, placement of futures and use of white drop in relation to it all types of lime, filter lime, double filter lime (calcium), calcium for betel nut & pan paste products or in any other manner amounting to infringement of "BABU ARTISTIC LABLE".

31B. To pass an order of permanent injunction restraining the defendants, his servants, agents, and other persons working under the control of the defendant from using in the course of packaging which is a colorable imitation or substantial reproduction of the plaintiff BABU artistic packaging / label amounting to infringement of copyright thereto.

31C. Restraining the defendants, his servants, agents, and other persons from manufacturing and selling and offering for sale or other allied goods or any other goods bearing label / packaging similar to BABU LABLE and/or packaging and/or any other packaging deceptively similar to the plaintiffs BABU label mark and packaging and/or using a packaging, getup, lay out, colour scheme and arrangement of futures of which resembles the plaintiffs said product packaging and any manner what soever or doing any other thing so as to cause confusion or deception amounting to pass off the goods and business of the defendant as and for those of the plaintiff.

31D. To pass an order directing the defendant to submit a true and correct statement of sales effected under the impugned label so as to ascertain the amount of damages accrued to the goodwill and reputation and/or ascertain the amount of profits recoverable from the defendant.

31E. To pass an order directing to submit the true and correct statement of stocks, labels etc., containing the impugned label."

In the said second suit the respondent/plaintiff

has averred, inter alia, that:

"4. The plaintiff further submits that the plaintiff is selling the products referred above under brands and names to distinguish his products from the other manufactures. The plaintiff submits that the plaintiff has started, processing, packing and selling his one of the product KATHA i.e. PAN PASTE used in PAAN under the Trade Mark BABU with word "sai" in small letters, wherein the word "BABU" is placed in a prominent way, and therefore the product and business of the plaintiff is known and recognized by the said prominent word "BABU" because of the use of the said Trade Mark since 1995-1996 has became very popular amongst the public at large and in the market and therefore the plaintiff decided to expand his business. Accordingly, the plaintiff started business of manufacturing, processing, packing and selling another product CHUNA i.e. LIME under the Trademark BABU in the year 2000. At this stage, the plaintiff respectfully begs to submit that for the products of CHUNA i.e. LIME, the plaintiff has chosen the name as BABU only and dropped the word "sai". Thus, since the year 2000 the plaintiff

51 C/SCA/410/2014 CAV JUDGMENT

has started its business under the name BABU. It is further submitted that the plaintiff to avail better protection, had applied for registration of the trademark "sai BABU" in the year 1999, which is taken on record under No.: 842369 in class: 31 in respect of KATTHA (Pan Paste) claiming user since 01/01/1995, of which the process for registration is yet not completed, still however, the plaintiff is entitled to remedy of passing off under the provisions of common law due to plaintiff's prior, open, continuous, uninterrupted and extensive use of the said trademark BABU since the year 1995-1996.

7. The plaintiff came to know from the market source that the defendant is selling its products lime under trademark "BABU", which is identical and deceptively similar to the plaintiff's trademark, "BABU". It is further submitted that the defendant has not only adopted the word "BABU" but the defendant has also imitated the artistic work of the label and color combination of the plaintiff. Such act on the part of the defendant is nothing but a deliberate intention to trade upon the goodwill and reputation of the plaintiff. The plaintiff has filed Regular Civil Suit for the infringement of Copyright of his another label under title SHREE BHOLE BAPA bearing Regular Civil Suit No.4 of 2012 in the Hon'ble District Court, at Rajkot against the said defendants on 30/7/2012 and as a counterblast to this, the defendant opted for the another Trade Mark BABU of the plaintiff. This clearly discloses the deliberate intention of the defendant. The plaintiff is constrained to file present suit against the defendant for passing off under the trademark BABU. It is submitted that the defendant has been using the said trademark in his products. Therefore, it is required for the plaintiff to file the present suit for passing off action and hence it is not barred under any other provisions of law. It is further submitted that the plaintiff is not aware of the constitution of the defendants and therefore the plaintiff craves leave to amend the pleadings as and when required.

10. It is further submitted that the defendant never got any permission from the plaintiff for using the said trademark BABU. Therefore, the plaintiff has never permitted the defendants to use its trademark, even though the defendant has been using the same with malafide intention. Therefore, the defendant is required to be restrained by an order of perpetual injunction from this Hon'ble Court.

12. The plaintiff further submits that the defendant is unauthorizedly using the said trademark "BABU", whereby the customers, retailers and public at large are deceived and made to believe that the said product bearing trademark "BABU" sold by the defendants have some relation with the plaintiff. Thereby the defendants are passing off their goods as the goods of the plaintiff and hence the plaintiff is entitled to get remedy under the provision of Common Law as well as Trade Marks Act, 1999. Thus it is clear that the defendants have deliberately, willfully and with malafide intention used trademark "BABU" for its product to misguide the customers, retailers and public at large and make them believe that the defendants products has some connection with the product provided by the plaintiff and/or that the products which is being sold by the defendants have origin from plaintiff. It is submitted that because of such unauthorized use of trademark "BABU" by the defendants, deception has already taken place in the market, and it is damaging the plaintiff's reputation and goodwill. It is submitted that the defendants are in no way connected with the plaintiff's firm and the defendants have not taken any permission from the plaintiff to use the plaintiff's trademark "BABU". Therefore, injunction order as prayed for is required to be granted against the defendants.

52 C/SCA/410/2014 CAV JUDGMENT 15. ... ... ... ... ... The present plaintiff submits that the present plaintiff has filed the suit for infringement of copyright on 30/07/2012. Therefore immediately as per the alleged assignment deed dated 07/08/2012, he went to one Ms. S Sayali, of Maharashtra and purchased the trademark BABU registered under No.: 1494903 as per the above mentioned assignment deed and filed suit against the present plaintiff on 15/09/2012 though knowing fully well about the settled principles of law. The plaintiff at this juncture begs to submit that the Rights conferred by registration are subject to other provisions of the Trade Marks Act, 1999. It is further submitted that the settled law provides better rights to a person who is prior in adoption and use of the disputed Trade Mark. The plaintiff further submits that the plaintiff has filed rectification application against the defendants before the competent authority, which is still under process of adjudication before the competent authority. As per the above mentioned facts and circumstances for sake of argument, it creates a doubt on the defendants pleadings made in plaint and if he is using the said trademark since 2006 and he is the owner of the said trademark as per his own averments than what was the reasons to purchase the said trademark immediately from third party. It is also pertinent to note that the present defendants have not produced any single documentary evidence with respect to partnership deed of firm or any documentary evidence with respect to any proprietorship except alleged assignment deed supported by an affidavit of the assignor.

18. The plaintiff respectfully submits that the cause of action arose to file this suit against defendant when the plaintiff came to know that the defendant has adopted and used word "BABU", which is ditto-to- ditto same and identical to the plaintiff's trademark "BABU" and filed a Regular Civil Suit under No. : 07/12 against the present plaintiff and when the defendant published caution notice in Akila & AAJKAL daily newspapers published from Rajkot and when the plaintiff says and submits that the cause of action is recurring one and when the defendant has filed a civil suit No.7/2012 before this Hon'ble District Court of Rajkot for infringement of trademark BABU. Moreover, the defendant is using the said trademark within territorial jurisdiction of this Hon'ble Court.

23. Therefore, plaintiff prays as under:

"(a) The defendants, its directors, its successors, servants, agents, assignees, dealers, sellers, stockiest and/or distributors and/or anybody claiming through the defendant be restrained permanently and perpetually from using the trademark "BABU" and/or any other identical and/or deceptively similar mark of their products and thereby passing off their goods as the goods of the plaintiff.

(b) A decree may be passed against the defendants and in favour of the plaintiff for the declaration that the plaintiff is only the proprietor of the trademark "BABU" and declare that only the plaintiff is entitled to sell product under the trademark "BABU".

(c) The defendants be ordered to produce accounts for selling product to his customers under the trademark "BABU" and be directed to pay the profit whatsoever derived from selling product under the illegal use of trademark "BABU" to the plaintiff with interest @ 18% from the date of filing of this suit till realization. The Hon'ble Court be pleased to direct t he defendants to pay the damages for the loss of reputation and goodwill, which may deem fit and proper to this Hon'ble

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Court in the interest of justice.

(d) Any other and further relief as may be deemed just and proper looking to the facts and circumstances of the case, be granted in the interest of justice.

(e) A heavy exemplary cost of the suit may be awarded to the plaintiff." "

21. In view of the petitioners' objection in light of

Order 2 Rule 2 it is relevant to mention with reference to

the said first suit that, even according to the petitioners,

the plaintiff of the said suit prayed for relief against

alleged infringement of copyright as well as alleged

passing off, with reference to the trade name Bhole Bapa.

Thus, in the said first suit, the plaintiff prayed for entire

relief which could have been prayed for so far as the said

trade name Bhole Bapa is concerned and that, therefore,

it cannot be said that with regard to the said trade name,

the plaintiff did not pray for entire relief and/or omitted to

claim entire relief which could have been prayed for with

regard to the trade name Bhole Bapa.

21.1 Moreover, in the said second suit any relief, in

any form or in any manner, is not prayed for with

reference to the said trade name 'Bhole Bapa'. Actually,

after having filed the purshis Exh.16, the plaintiff,

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according to the submission and statement by learned

counsel for the plaintiff, i.e. present respondent, has not

filed other suit with reference to or in connection with the

very same trade name, i.e. Bhole Bapa.

21.2 Furthermore, the said second suit is an action

against passing off by using the trade name / trade mark

'Babu' (and not the trade name 'Bhole Bapa'). Therefore,

in view of the legal position that a composite suit for

protection of copyright and against passing off is not

maintainable, any relief against passing off with reference

to the trade name / trade mark 'Babu' (which is the

subject-matter of and cause of action for the said second

suit) could not have been included and prayed for in the

first suit because inclusion of such claim or relief would

have turned the said first suit into composite suit.

21.3 From the foregoing discussion, it has emerged

that (a) the plaintiff (respondent herein) did not omit to

claim any relief which he could have otherwise claimed in

and at the time of first suit and/or (b) the plaintiff has not

55 C/SCA/410/2014 CAV JUDGMENT

claimed/resurrected, in the second suit, the

claim/relief/cause of action which he abandoned from the

said first suit; and, above everything (c) the cause of

action in the second suit is not the same as in the said first

suit and/or the claim and cause of action in the second

suit is not the same which the plaintiff is said to have

deleted / abandoned from first suit.

21.4 Moreover, the basic and primary requirement

(viz. unity and similarity of cause of action and/or claim in

the first and the subsequent suits) for invoking and

applying the provision under Order 2 Rule 2 is absent and

the petitioners have failed to establish that there is unity

and similarity of the claim and/or cause of action in the

said two suits. Hence, from any perspective and angle

and on any ground it cannot be said that the said second

suit is hit by Order 2 Rule 2. In this view of the matter, the

contention raised in light of Order 2 Rule 2 fails and the

objection at earlier mentioned Sr.No.(iii)(a) is not

sustainable. In this view of the matter, the objection in

light of Order 2 Rule 2 fails.

56 C/SCA/410/2014 CAV JUDGMENT 21.5 There is yet another facet related to this

objection. The said second suit by present respondent is

an action against alleged passing off by the petitioners.

With reference to action against passing off Hon'ble Apex

Court has, in the decision in case of Bengal Waterproof

Ltd. vs. Bombay Waterproof Mnfg. Co. [AIR 1997 SC 1398],

held that act of passing off gives recurring cause of action

and whenever and wherever fresh deceitful act is

committed, the person deceived will have a fresh cause of

action and action against passing off will not be hit by

provision under Order 2 Rule 2. In the said decision

Hon'ble Apex Court observed:

"11. ... ... ... ... ... ... It is obvious that such infringement of a registered trade mark carried on from time to time would give a recurring cause of action to the holder of the trade mark to make a grievance about the same and similarly such impugned passing off actions also would give a recurring cause of action to the plaintiff to make a grievance about the same and to seek appropriate relief from the court. It is now well settled that an action foe passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach of infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper reliefs, for all times to come in future defendant of such a suit should be armed with a licence to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts. We posed a question to the learned counsel for the

57 C/SCA/410/2014 CAV JUDGMENT

defendants as to whether after the disposal of the earlier suit if the defendants had suspended their business activities and after a few years had resumed the same and had started selling their goods under the trade mark `DACK BACK' passing them off, the plaintiff could have been prohibited and prevented by the bar of Order 2 Rule 2 sub- rule (3) from filing a fresh suit in future when such future infringement or passing off took place. He rightly and fairly stated that such a suit would not be barred. But his only grievance was that whatever was the infringement or passing off alleged against the defendants in 1980 had, according to the plaintiff, continued uninterrupted and, therefor, in substance the cause of action in both the suits was identical. It is difficult to agree. In cases of continuous causes of action or recurring causes of action bar of Order 2 Rule 2 sub-rule (3) cannot be invoked. In this connection it is profitable to have a lock at Section 22 of the Limitation Act, 1963. It lays down that `in the case of a continuing tort, a fresh period of limitation begins to run at every moment of the time during which the beach or the tort, as the case may be, continues'. As act of passing off is an act of deceit and tort every time when such tortious act or deceit is committed by the defendant the plaintiff gets a fresh cause of action to some to the court by appropriate proceedings. Similarly infringement of a registered trade mark would also be a continuing wrong so long as infringementcontinues. Therefore, whether the earlier infringement has continuer or a new infringement has taken place cause of action for filing a fresh suit would obviously arise in favour of the plaintiff who is aggrieved by such fresh infringements of trade mark or fresh passing off actions alleged against the defendant. Consequently, in our view even on merits the learned Trial Judge as well as the learned Single Judge were obviously in error in taking the view that the second suit of the plaintiff in the present case was barred by Order 2 Rule 2 sub-rule (3), CPC." (Emphasis supplied)

Thus, act of passing off gives fresh and

recurring cause of action and in case of continuous or

recurring causes of action, Order 2 Rule (2) sub-rule (3) is

not applicable and cannot be invoked.

Re: Order 23 Rule 1(4):

22. So far as the provision under Order 23 Rule 1(4)

is concerned, (a) the said provision will be attracted and

will be applicable only if the 'subject matter' of the

second/subsequent suit is the same as in the previous/first

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suit or it is same as part of the claim which he abandoned

from first suit; and (b) the said provision comes into play

after the institution of a suit; (c) the said provision

enables and allows the plaintiff to abandon, subject to and

with permission of the Court, entire suit or to abandon

part of the claim raised in the suit after the suit is

instituted; (d) the restriction or prohibition prescribed

under the said provision are (in the event the plaintiff

withdraws the suit or part of the claim) mandatory; (e)

however, it will be applicable when unity of the parties

and of the 'subject-matter' and claim is established; (f)

when a plaintiff withdraws his suit or part of his claim

without Court's permission, he stands disentitled to

institute fresh suit in respect of same 'subject-matter' or

such part of the claim.

22.1 If the defendant establishes relevant factors e.g.

institution of second suit after withdrawing previous

suit/part of the claim, and also establishes absence of

permission by the Court, unity of the parties in both the

suits, as well as unity and similarity of the subject-matter

and claim in the said two suits, then the said provision

59 C/SCA/410/2014 CAV JUDGMENT

would be attracted. But if the person raising objection

against the suit fails to establish the said aspects, then the

said provision will not be applicable. The obligation to

establish relevant aspects is on the person who attacks

the suit by invoking this provision.

22.2 Thus, according to the said provision the

primary and basic, or cardinal, requirement is similarity

and unity of 'subject matter'. If the 'subject matter' of the

fresh/subsequent suit is not the same as in the first suit

(or is not same as the claim/part of the claim first suit

which the plaintiff abandoned) then the said provision will

not be applicable and the fresh/second suit will not be hit

by said provision.

22.3 At this stage, it is relevant to mention that on

examination of the plaints in both the suits, it has

emerged that the subject-matter and the cause of action

in the said second suit is not the same as in the first suit

and the subject matter and/or the claim in the second suit

is not in respect of the claim which the plaintiff allegedly

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relinquished from the said first suit. Therefore, in present

case, the said provision viz. Sub-Rule (4) of Rule (1) of

Order 23 is not attracted and is not applicable.

22.4 The petitioners have opposed the said second

suit in light of Order 23 Rule 1(4). On this count, it is

claimed that by filing purshis Exh.16 in the said first suit,

the plaintiff abandoned claim against passing off and since

the said claim is abandoned without Court's permission,

the said second suit is not maintainable. In this context it

is relevant to mention that while examining the objection

in light of Order 2 Rule 2 the factual aspects have been

examined in detail and those aspects have been discussed

at length hereinabove earlier (under heading Order 2 Rule

2). Therefore, repetition is avoided. Suffice it to say that

though the said second suit is an action against alleged

'passing off' actually the said second suit is in respect of

altogether different and distinct subject matter and cause

of action viz. trade name / trade mark viz. 'Babu'. Thus,

the basic and primary requirement similarity and unity of

subject matter to attract provision under Order 23 Rule

1(4) is absent in the second suit. Consequently, the said

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provision, i.e. Order 23 Rule 1(4) will not be applicable to

the said second suit.

22.5 When it has emerged that the cardinal and

primary requirement for applicability of and for attracting

the bar under Order 23 Rule 1(4) (viz. similarity and unity

of the 'subject matter') is absent and it has also emerged

that even the cause of action and the relief prayed for in

the second suit is different from the subject matter and

cause of action in the first suit as well as from the claim

said to have been withdrawn, then, as a corollary it would

follow that the second suit is not hit by the bar under said

provision. Consequently, other aspects and/or other

factual details will not survive and will not be relevant

and/or would pale into insignificance. Therefore, once the

aforesaid facts have emerged and thereby it has also

emerged that the second suit is not hit by said provision

then other or further sequence and details of events

related to said second suit (viz. whether said second suit

was filed before and was pending when, the plaintiff

submitted the purshis Exh.16 or not i.e. whether the said

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purshis was filed / submitted after the second suit was

filed) need not detain the Court and they may not be

discussed after the above-mentioned facts have emerged.

However, so as to complete the record those aspects need

to be mentioned and considered.

22.6 In this context, it may be mentioned that first

suit was filed on 30.7.2012 and the second suit came to

be filed on 3.11.2012 whereas the purshis exhibit 16 was

filed on 9.11.2012 i.e. after the second suit was filed. Thus

the second suit was already filed and was pending when

the plaintiff filed the said purshis and when the second

suit came to be filed the said first suit and / or the part of

claim in the first suit was not withdrawn / abandoned. By

the said purshis exhibit 16 the plaintiff had "declared" that

he "will delete" the claim and averments with regard to

passing off from the first suit, however, such claim or such

averments were actually not deleted from the said first

suit. In fact it was only on 29.12.2012 that the plaintiff

submitted the application (dated 15.12.2012. Exh.22)

under Order 6 Rule 17. It is also pertinent that final order

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below the said application is not passed. Consequently

actual withdrawal / abandonment of the claim and

averments from the first suit has not taken place.

However Mr. Shah, learned advocate for petitioner would

claim that once the purshis exhibit 16 is filed the

declaration contained therein should be deemed to have

become effective and the claim and averments from the

first suit should be deemed to have been deleted. Even if

the said submission by leaned Counsel for petitioner is

accepted and submission of purshis (on the record of first

suit) is, in itself, considered and construed as withdrawal

and abandonment of the claim (related to passing off)

from said first suit, then also such withdrawal or

abandonment of the claim would be effective from the

date of submission of said purshis (Exh.16). Since the said

purshis exhibit 16 was filed on 9.11.2012 (i.e. after the

second suit was filed on 3.11.2012) the said part of the

claim, even according to the submission by the petitioners

would stand deleted on 9.11.2012 when the second suit

was already filed and was pending since 3.11.2012.

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22.7 In this context, it may be mentioned that the

provision under Order 23 rule (1)(4) would be applicable if

the second suit is filed, in respect of same subject matter,

'after' the previous suit or part of the claim in the previous

suit is abandoned / relinquished. On this count, reference

may be made to the decision in case of (a) Girdharilal

Bansal vs. The Chairman, Bhakra Beas Management Board

[AIR 1985 Punjab and Hariyana 219(1)], wherein with

reference to Order 23 Rule 1(4) the High Court, in

paragraph 2 of the judgment, observed, inter alia, that:-

"4. After hearing the learned counsel for the parties, I give the following findings issue-wise.

Issue No. 1.

This issue relates to the matter whether the second petition filed by the contractor on the same allegations and for the same relief is barred under O.23, R.1(4) of the Civil P.C. or not in view of the fact that the earlier petition was got dismissed as withdrawn. The Court below relied on Teja Singh v. Union Territory of Chandigarh (1981) 1 Serv LR 274 : (AIR 1982 Punj and Har 169) (FB)and decided the issue against the contractor and held that the present petition was barred. The learned counsel for the appellant has not challenged the dictum laid down in the aforesaid decision but has argued that on the facts of this case that decision is not applicable because here the second application was filed before the first application was withdrawn and to these facts the provisions of Order 23, C.P.C. are not attracted in view of Ram Mal v. Upendra Dutt, AIR 1928 Lah 710 and Mangi Lal v. Radha Mohan, AIR 1930 Lah 599. The earlier application was filed on 6th Oct, 1982 and the present application was fixed on 26th Oct., 1982 and the first application was withdrawn vide order dt. 18-11-1982. The learned counsel for the Board could not show if aforesaid two decisions were ever dissented from or overruled. The aforesaid two Lahore decisions clearly say that if second suit is filed before the first suit is withdrawn then O.23, C.P.C. is not attracted and the second suit cannot be dismissed under O.23, R.1(4) of the Civil P.C. Accordingly, I reverse the decision of the trial Court and hold that the present petition was not barred under O.23, C.P.C."

(b) Similarly in the decision in case of P.A.

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Muhammed vs. The Canara Bank (AIR 1992 KERALA 85)

High Court of Kerala, relying on the decision in case of

Girdharilal Bansal (supra), has observed, inter alia, that:

"7. No doubt, under O. XXIII, R. 1, C. P. C. "at any time after the institution of a suit, the plaintiff may as against all or any of the defendants, abandon his suit or abandon a part of his claim" (subject of course, to what is contained in the proviso). Under sub-rule (3), where the Court is "satisfied that the suit must fail by rason of some formal defect, or that there are sufficient grounds for allowing the plaintiff to institute a fresh suit for the subject-matter of a suit or part of a claim, it may, on such terms as it thinks fit, grant him permission to withdraw from such suit or such part of the claim with liberty to institute a fresh suit in respect of the subject-matter of such suit or such part of the claim". Under sub-rule (4), where the plaintiff "abandons any suit or part of claim, or withdraws from a suit or part of a claim, without the permission referred to in sub-rule (3), he shall be liable for such cost as the court may award and shall be precluded from instituting any fresh suit in respect of such subject-matter or such part of the claim". The court below held that rule 1(4) applied to the case and therefore, the suit was barred. But, then, the fact that the second suit was pending when the first suit was dismissed as withdrawn, went unnoticed. The question to decide is whether in such a circumstance, the second suit is barred or not.

8. As noticed above, sub-rule(4) of Rule 1 of Order XXIII, C.P.C. precluded the plaintiff from instituting a fresh suit where the earlier suit was withdrawn or abandoned without permission of the Court. It is clear that the prohibition is in regard to the institution of a fresh suit after the earlier suit on the same cause of action had been withdrawn without the leave of court. But, where the subsequent suit was pending when the earlier one was dismissed as withdrawn, abandoned or as not pressed, the provisions of O. XXIII, Rule 1, in terms, would be inapplicable."

22.8 Thus, as observed and held in the said decisions

if the second suit is filed before the first suit (or part of the

claim in the first suit is abandoned) then the bar under

Order 23 Rule 1 (4) will not be applicable. However,

learned Counsel Mr. Mehul Shah relied on the decision by

High Court of Calcutta in case of Prapti Fashions (Pvt.)

Limited vs. Manoj kumar Gupta (2013 (55) PTC 234 Cal.)

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wherein reliance is placed on AIR 2003 Raj. 319. In the

decision in AIR 2003 Raj. 319 (which is referred to in case

of Prapti Fashion (supra) relied on by the petitioner) it is

observed, inter alia, that:

"16. It is true that the party is required to take permission from the Court under O. 23, R. 1(3) of the C.P.C. only if party wants to institute a fresh suit in respect of the same subject-matter. Order 23, R. 1(3), C.P.C. is not dealing with the situation where before withdrawal of suit, the plaintiff files another suit and thereafter, withdraws earlier suit. The Court can grant permission to file fresh suit only on fulfilment of the requirements under the provisions of O. 23, R. 1(3). When procedure has been given in the Code of Civil Procedure for filing fresh suit after institution of one suit by the plaintiff, then it excludes the procedure by which the parties, on their own whims and wish can file fresh suit and bye-pass the procedure and make the provisions of law nugatory. Not only this but it appears that the argument of the learned counsel for the petitioner came by ignoring not only above legal position, but has been advanced without noticing true meaning of effect of Ss. 10, 11 and 12 and O. 2, Rr. 1 and 2, C.P.C. and other relevant provisions of C.P.C. Fundamental aim and object is to avoid multiple suits may it be founded on same cause of action or may be relating to same subject-matter."

22.9 Thus, even in the said decision, the legal

position viz. (a) permission will be necessary only if the

party wants to file fresh suit for same subject matter;

and (b) Order 23 Rule 1(4) will not apply tot he case where

second suit is filed and thereafter the first suit is

withdrawn (which is the case in present matter). In the

said decision, i.e. AIR 2003 Raj 319, it is observed that

such course of action may make the provision nugatory.

However, with regard to the said decision what is relevant

to note is that on reading of the said decision it appears

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that the concept of 'recurring cause of action' which is laid

down and explained by Hon'ble Apex Court in case of

Bengal Waterproof Limited [AIR 1997 SC 1398] did not

arise for consideration and, therefore, was not considered

in the said decision AIR 2003 Raj 319. In the said decision

[AIR 1997 SC 1398] Hon'ble Apex Court has observed that

act of passing off is an act of deceit and tort and every

time when such tortious act or deceit is committed by the

defendant the plaintiff gets a fresh cause of action to

come to the court by appropriate proceedings and that in

the case where recurring cause of action arise the

provision under Order 2 Rule 2(3) does not apply. Thus, so

far as the second suit is concerned (in respect of which the

objection is raised) it being an action against alleged

passing off the plaintiff has recurring or continuous cause

of action.

22.10 It is pertinent that in the case of N.R. Narayan

Swamy vs. B. Francis Jagan (supra), Hon'ble Apex Court

applied the concept of 'recurring cause of action' in

respect of eviction suit under Rent Act and observed, inter

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alia, that in matters of recurring cause the restriction

under Order 23 Rule 1(4) is not applicable. In the said

decision Hon'ble Apex Court has observed:

"6. In our view, the High Court ought to have considered the fact that in eviction proceedings under the Rent Act the ground of bona fide requirement or non-payment of rent is a recurring cause and, therefore, landlord is not precluded from instituting fresh proceeding. In an eviction suit on the ground of bona fide requirement the genuineness of the said ground is to be decided on the basis of requirement on the date of the suit. Further, even if a suit for eviction on the ground of bona fide requirement is filed and is dismissed it cannot be held that once a question of necessity is decided against the landlord he will not have a bona fide and genuine necessity ever in future. In the subsequent proceedings, if such claim is established by cogent evidence adduced by the landlord, decree for possession could be passed. {Re: K.S. Sundararaju Chettiar vs. M.R. Ramachandra Naidu [(1994) 5 SCC 14 (para 10)] and Surajmal vs. Radhe Shyam [(1988) 3 SCC 18]}.

10. The aforesaid rule would have no application in a proceeding initiated for recovering the suit premises on the ground of bona fide requirement which is a recurring cause. Order XXIII rule 1(4)(b) precludes the plaintiff from instituting any fresh suit in respect of such subject matter or such part of the claim which the plaintiff has withdrawn. In a suit for eviction of a tenant under the Rent Act on the ground of bona fide requirement even though the premises remains the same, the subject matter which is cause of action may be different. The ground for eviction in the subsequent proceedings is based upon requirement on the date of the said suit even though it relates to the same property. Dealing with similar contention in Vallabh Das vs. Dr. Madanlal and Others [(1970) 1 SCC 761)], this Court observed thus:-

"The expression subject-matter is not defined in the Civil Procedure Code. It does not mean property. That expression has a reference to a right in the property which the plaintiff seeks to enforce. That expression includes the cause of action and the relief claimed. Unless the cause of action and the relief claimed in the second suit are the same as in the first suit, it cannot be said that the subject-matter of the second suit is the same as that in the previous suit."

11. The Court further observed that the mere identity of some of the issues in two suits would not bring about identity of the subject matter in two suits." (Emphasis supplied)

22.11 In the decision in AIR 2003 Raj 319 the concept

of recurring cause of action and the above referred two

decisions by Apex Court did not arise for consideration in

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view of the facts of that case. Therefore, the said decision

would not render assistance to the petitioner and so far as

the decision in case of Prapti Fashion (supra) is concerned,

in the said decision the High Court found that the subject

matter in both suits was same, whereas in present case it

has emerged, on examination of facts, that the subject

matter in case of the said two suits are different.

23. In this view of the matter, even if the

submission by learned Counsel for the petitioners in light

of the decision in AIR 2003 Raj. 319 and in case of Prapti

Fashion is accepted and even if in present case the Court

proceeds on the premise or on assumption that

submission of the purshis Exh.16 in the first suit, in itself,

amounts to and should be teated as actual withdrawal of

the claim against passing off, then also in view of the fact

that in the matter of passing off the plaintiff has recurring

cause of action, the bar under Order 23 Rule 1 (4) will not

be attracted.

23.1 Furthermore, in present case even if one goes a

step further and proceeds on the premise or assumption

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that though the second suit is an action against passing

off and though the plaintiff has recurring cause of action

(as held by Apex Court in above referred two decisions)

but the said concept may not be applied in present case

then also the petitioners' contention and objection should

fail because the primary and fundamental requirement for

attracting Order 23 Rule 1(4) viz. similarity and unity of

subject matter of second suit and first suit is absent in

present matter, i.e. in second suit.

24. With reference to the said second suit most

relevant and important aspect is that the fundamental and

basic requirement (for attracting Order 23 Rule 1(4) of the

Code) viz. similarity and unity of subject matter and / or

similarity and unity of cause of action, is absent in the

second suit and that, therefore, even if the above-

mentioned submissions by the petitioners are, for the sake

of considering the objection, accepted then also, in view of

the aforesaid vital fact the said objections against the

second suit should fail.

24.1 Since, the subject matter and the cause of

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action of the second suit is different from the subject

matter and cause of action in the first suit as well as from

the claim said to have been abandoned (from the said first

suit by virtue of the purshis exhibit 16), the provision

under Order 23 Rule 1(4) will not be applicable to the said

second suit. Thus, the said second suit does not deserve

to be rejected in exercise of power under Order 7 Rule 11

(d).

25. At this stage, the decisions relied on by learned

senior counsel for the petitioners may be considered. So

far as the decisions relied on by the petitioners are

concerned, learned senior counsel relied on the decision

dated 7.3.2012 in Letters Patent Appeal No.877 of 2010,

wherein the Division Bench has observed that the cause of

action with regard to infringement of copyright and

passing off are different and therefore, a composite suit

cannot be filed. In present case, on plain reading of the

plaint, it has emerged that the second suit is not based on

cause of action related to infringement of copyright. In

the decision in the case of T. Arivandandam (supra), the

Hon'ble Apex Court observed that where the suit is found

72 C/SCA/410/2014 CAV JUDGMENT

to be vexatious and meritless, then the power under Order

7 Rule 11 should be exercised. In present case, after

considering facts of the case and the material on record,

particularly the plaint of second suit, it is found that the

suit cannot be termed as vexatious or abuse of process, as

alleged by the petitioners. In the decision in case of

Maharaj Shri Manvendrasinhji Ranjitsinhji Jadeja (supra),

the Division Bench, on meticulous examination of the facts

of the case, the relevant provisions and the averments in

the plaint, found that the covenant on which the plaintiff

replied did not give out any cause of action and it was not

possible to read in the articles of the covenant that rule of

primogeniture was guaranteed to the erstwhile rulers of

Kathiawar. In present case, it has emerged from the

details and averments in the plaint that the petitioners

have claimed that on account of prior user of the

trademark in question, the plaintiff has acquired certain

rights and benefits available under the Trade Marks Act.

Thus, the facts of the present case are different from the

set of facts in the cited decision. Likewise, the facts of

present case are different from the facts involved in the

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decision in case of Chandrakant Kantilal Jhaveri (supra). In

the case of Croft Sales and Distribution Ltd. (supra) the

Division Bench, on examination of the plaint, reached to

the conclusion that the whole suit was based on

hypothesis and not on any liability which could be

identified under Indian Law on date of institution of the

suit, whereas in the case on hand, material facts and

averments in the suit bring out cause of action as well as

averments necessary to maintain action for passing off. In

the decision in case of Sheela Adhikari (supra), the

Calcutta High Court dealt with the issue wherein the suit

comprises some causes of action which lie within the

jurisdiction of the Court where it is filed and other do not.

In view of such facts the Court observed that if the Court

can return the plaint and allow the plaintiff to resubmit the

plaint after necessary deletion, then the plaintiff can also

be allowed to do the same thing while the plaint is on

Court's file. The said decision does help the petitioners. The decision in case of Bloom Dekor Limited (supra) as

well as Dahyabhai Ranabhai Vaghela (supra) are

materially different on facts as well as in respect of the

74 C/SCA/410/2014 CAV JUDGMENT

issue involved in the said cases than the case on hand.

The other decisions are also materially different on facts

and do not assist the petitioners. In view of the fact that

in present case, the Court has, upon examining the facts

and the plaint in detail, reached to the conclusion that the

second suit is not for the same cause of action as in the

first suit, the decision in the case of Hindustan Zinc

Limited (supra) does not assist the petitioners inasmuch

as in the said case, the Court, on facts observed that '... ...

... I have no manner of doubt in holding that very

contentions are repeated in the second suit....' and that,

therefore, the Court held that the suit amounts to abuse of

process. So far as the decisions in case of Cadila Health

Care Ltd. (supra) as well as in case of Khoday Distilleries

Limited (supra) are concerned, when present case is

examined in light of the said decision as well as decisions

relied on by the plaintiff, it emerges that the plaint

contains primary, basic and proper averments necessary

to present a suit against alleged passing off. As

mentioned earlier, at this stage, the Court would not enter

into the issue as to whether the allegations are true or not

75 C/SCA/410/2014 CAV JUDGMENT

and whether they are sufficient to establish alleged

passing off and/or as to whether the evidence is sufficient

to lead the plaintiff to success in his action or not are

matters of evidence and therefore, the said decision are

not of assistance at this stage (though it might be while

trial proceeds on merits). However, at this stage, it cannot

be concluded that the plaint is hit by the said decision. In

the decision in case of Khoday Distilleries Limited (supra),

the suit was opposed on ground of delay. In present case,

at this stage, the said issue is not raised by the

petitioners/defendants. Besides this, the said issue is a

mixed question of fact and law and would otherwise also,

if raised, can be and will be decided during the trial. So

far as the decisions in cases of Virgo Industries (Eng.) Private Limited, State Bank of India vs. Gracure

Pharmaceuticals Ltd. (supra) as well as in case of N.V.

Srinivass Murthy (supra) are concerned, the Hon'ble Court,

in the said decisions, considered the matters in light of

Order 2 Rule 2. The said provision would come in picture

when the cause of action in both the suits is common. In

present case, the subject-matter and cause of action in

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the said two suits are different. In this view of the matter,

the decisions do not help the petitioners. Learned senior

counsel for the petitioners also relied on the decision

dated 10.10.2013 in Appeal from Order No.154 of 2013. It

is a decision in an appeal under Order 43 Rule 1(r),

wherein order below application for interim relief, whereby

the learned trial Court had, in exercise of power under

Order 39 Rule 1, granted interim relief against the

defendants, was challenged. Moreover, in the said

decision, the subject-matter in both the suits was use of

trademark 'Dandi Namak / Dandi Salt' and both the suits,

i.e. subsequent suit, wherein the impugned order under

Order 39 was passed and the previous suit which came to

be withdrawn, were related to and in connection with the

use of the same (i.e. above-mentioned) trademark.

Besides this, in the said decision, the Court reached to

specific conclusion and finding that the plaintiff had

furnished false declaration and both the suits were based

on same cause of action and the case suffered from

suppression of material facts and the plaintiff did not

approach the Court with clean hands. Thus, the said

77 C/SCA/410/2014 CAV JUDGMENT

decision also does not render any assistance to the

petitioners in light of the facts of second suit.

26. In this view of the matter, the conclusion

reached by the learned trial Court cannot be faulted and

the impugned order does not warrant interference. The

petitioner has failed to make out any ground or

justification to convince the Court to set aside the

impugned order. Therefore, the petition fails and deserves

to be rejected and is accordingly rejected. Notice is

discharged.

Sd/-

(K.M.THAKER, J.)

Learned advocate for the petitioners requested

that ad-interim relief granted vide order dated 16.1.2014

against further hearing of Exh.5 application may be

continued. In view of the said request, it is directed that

interim relief granted vide order dated 16.1.2014 with

regard to further hearing of Exh.5 application will continue

till 4.10.2014.

Sd/-

(K.M.THAKER, J.) Bharat

78