UNREPORTED
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% DATE OF RESERVE: July 28, 2009
DATE OF DECISION: August 11, 2009
+ IA No.128/2009 (u/O-26 R-17 filed by the defendant)
in CS(OS) 1444/2007
NETWORK SOLUTIONS, LLC ..... Plaintiff
Through: Mr. C.M. Lall and Mr. Dushyant K.
Mahant, Advocates
versus
NETWORK SOLUTIONS PVT. LTD. ..... Defendant
Through: Mr. Hemant Singh and Ms. Pallavi Singh,
Advocates
CORAM:
HON'BLE MS. JUSTICE REVA KHETRAPAL
1. Whether reporters of local papers may be allowed
to see the judgment?
2. To be referred to the Reporter or not?
3. Whether judgment should be reported in Digest?
: REVA KHETRAPAL, J.
1. The defendant seeks to amend its written statement in the present action
filed by the plaintiff for injunction and damages for passing off and unfair
competition.
2. The defendant alleges that it came to know about the plaintiff’s
trademark application bearing registration No.1252814 (NETWORK
SOLUTIONS) through their erstwhile attorneys, M/s. Khaitan & Co., Mumbai
in the month of July, 2005, whereupon instructions were issued to the said
erstwhile attorneys by the defendant to file an opposition to the said
CS(OS) 1444/2007 Page No. 1 of 11
application. The defendant had reason to believe that the said opposition had
been filed. Thereafter, the files pertaining to the trademarks of the defendant
were transferred to their previous attorney, namely, Anand & Anand. The
instant suit was filed by the plaintiff in August, 2007. Based on the assumption
that pursuant to the defendant’s instructions the opposition had been filed by its
erstwhile attorney, an averment was made to that effect in paragraph 21 of the
written statement by its Attorneys, namely, Anand & Anand, which reads as
under:
“21. The contents of paragraph 21 pertaining to the
plaintiff’s trademark application in India and its
advertisements are a matter of record. The defendant has
opposed the said application and the plaintiff may expect to
receive the official communication from the trademark
office. The copy of the notice of opposition filed by the
defendant before the Trademarks Registry is also filed
herewith. It is, therefore, denied that the application of the
plaintiff is liable to proceed to registration.”
3. After the filing of the written statement, the files of the instant suit were
transferred by the defendant from its previous attorneys, M/s. Anand & Anand
to the present attorneys, M/s. Khaitan & Co., Delhi, who despite best efforts to
locate a copy of the notice of opposition or the filing receipt from the previous
attorneys, namely, Khaitan & Co., Mumbai and Anand & Anand, New Delhi,
were unable to locate the same. Consequently, the defendant seeks to
incorporate an amendment to that effect in paragraph 21 of the written
CS(OS) 1444/2007 Page No. 2 of 11
statement as under:
“The contents of paragraph 21 of the plaint pertaining to
the plaintiff’s trademark application in India and its
advertisements are a matter of record. The defendant came
to know about the said application through its
advertisement in Trade Marks Journal dated 30th March
2005 which was made available to the public on 3rd June
2005. The defendant instructed its erstwhile attorneys
namely, Khaitan & Co. to file opposition to the said
application and had reason to believe that the said
opposition had been filed. Thereafter, the files pertaining
to the trade marks of the defendant were transferred to the
previous attorney namely, Anand & Anand, who also stated
the fact of filing of the opposition based on the impression
that the opposition had been filed by Khaitan & Co.
However, the defendant is unable to locate the copy of any
notice of opposition or the filing receipt, if any, and hence
is not sure whether an opposition was actually filed by its
attorneys acting in the matter previously. Nevertheless, the
defendant reserves its right to seek cancellation of the
registration if granted by the Registrar of Trade Marks to
the plaintiff by way of cancellation petition before
Intellectual Property Appellate Board. The registration, if
any, granted by the Registrar of Trade Marks to the plaintiff
would be in breach of the provisions of Section 9 of the
Trade Marks Act as “NETWORK SOLUTIONS” is a
highly descriptive trade mark and cannot be registered in
favour of the plaintiff in the absence of it having acquired
any secondary significance.”
4. The plaintiff has filed reply to the instant application, opposing the
amendment on the ground that it is palpably false to allege that “despite best
efforts” the defendant is unable to locate the copy of the notice of opposition or
the filing receipt from either of the previous attorneys; and submits that it was
only when the plaintiff preferred an application under Section 340 of the Code
CS(OS) 1444/2007 Page No. 3 of 11
of Criminal Procedure, 1973 against the defendant for lying on oath about the
filing of a notice of opposition, the defendant by way of the present application
has sought amendment as a cover-up for the perjury committed by it. The
application, therefore, deserves to be dismissed with exemplary costs.
5. Mr. Hemant Singh, the learned counsel for the defendant-applicant in
support of the defendant’s application for amendment has urged the following
grounds.
(i) The amendment is clarificatory in nature and no prejudice will
be caused to the plaintiff since the plaintiff itself has sought and has
been allowed to amend the plaint. As a matter of fact, the plaintiff by
amending its plaint had incorporated the plea that an application for
registration of its trademark “NETWORK SOLUTIONS” was initially
wrongly filed on a “proposed user basis”, despite instructions to file an
application in which “use” was claimed since January 01, 1993 and
“use in commerce” since January, 1998. This amendment was sought
on the basis that the attorneys of the plaintiff had advised the plaintiff to
file the said application on “proposed user basis”, despite the plaintiff
having used the trademark world over extensively since the year 1993.
The written statement having relied upon the “proposed user clause” in
the application of the plaintiff and the alleged delay in the filing of the
CS(OS) 1444/2007 Page No. 4 of 11
present suit, amendment was sought by the plaintiff even after issues
had been framed in the suit and was allowed by this Court. The
defendant has been directed by this Court to file its written statement to
the amended plaint and would like to use this opportunity to clarify the
facts pertaining to the filing of opposition.
(ii) Even otherwise, no prejudice will be caused to the plaintiff by
such amendment since the effect of filing or not filing of the opposition
by the defendant is totally irrelevant in a passing off action.
(iii) The amendment in the plaint in respect of the most crucial aspect
of “use” having been allowed to the plaintiff, an opportunity has to be
given to the defendant to amend its pleadings and it would be unjust
and unfair to refuse permission to the defendant to amend its written
statement when the plaintiff has been allowed to drastically amend the
plaint.
(iv) What is sought to be amended is an averment made in the written
statement that an opposition was filed to the trademark application of
the plaintiff, pursuant to instructions given to the erstwhile attorneys of
the defendant. This is an averment and not an admission and, therefore,
no question of retraction of any admission made by the defendant arises
in the instant case, as is sought to be made out by the plaintiff.
CS(OS) 1444/2007 Page No. 5 of 11
6. Mr. C.M. Lall, the learned counsel for the plaintiff, on the other hand,
vehemently opposed the amendment on the following grounds:
(a) Merely because an amendment has been allowed in the plaint, the
defendant does not get a right and certainly not an unfettered and
unbridled right to file a new written statement. [Kripal Singh vs.
Calcutta Beads Centre & Ors. 1998 VII AD (DELHI) 409 (F.B.)].
(b) An amended pleading cannot be at variance with or inconsistent
with the original pleading.
(c) The proviso to Order VI Rule 17 of the CPC makes it abundantly
clear that no application for amendment is to be allowed by the Court
after the trial has commenced unless the Court comes to the conclusion
that in spite of the due diligence, the party could not have raised the
matter before commencement of the trial. There can be no two views
about the legal position that trial commences once the issues are framed
and the matter is fixed for evidence. [See the judgment of this Court in
CM(M) No.338/2007 titled David Paint Industries and Anr. vs.
Anandsons Trade Linders decided on 11.08.2008]. On completion of
pleadings in the instant suit, issues were framed on 2nd November, 2007
and the plaintiff was given eight weeks’ time to file its affidavit in
evidence by order dated 2nd November, 2007 and by subsequent orders
CS(OS) 1444/2007 Page No. 6 of 11
dated 25th April, 2008 and 16th July, 2008. The plaintiff instead of filingits affidavit by way of evidence filed an application under Order VI
Rule 17 CPC to amend its plaint, which amendment was allowed by this
Court by its order dated 1st December, 2008.
(d) In any case, the defendant cannot be allowed to take away the
false averment made in the written statement and substitute it with the
correct factual position after the plaintiff has served on the defendant an
application under Section 340 Cr.P.C. for committing gross perjury.
7. Having heard the learned counsel for the parties, I am inclined to permit
the defendant to amend its written statement, inter alia, for the following
reasons:
8. The plaintiff has altered the entire substratum of its case by amendment
of the plaint, basing its cause of action on “user” of the trademark
“NETWORK SOLUTIONS” since the year 1993 instead of “proposed user”
from December 02, 2003. When the plaintiff has been permitted by this Court
to amend its pleading on such a crucial aspect of the case (the action being one
for passing off), it would be both unjust and inequitable to reject the
application of the defendant for amendment. As held by the Supreme Court in
Gurdial Singh and Ors. vs. Raj Kumar Aneja and Ors. (2002) 2 SCC 445,
when one of the parties has been permitted to amend its pleadings, an
CS(OS) 1444/2007 Page No. 7 of 11
opportunity has to be given to the opposite party to amend its pleading upon
his making an application under Order VI Rule 17 CPC, which would
“ordinarily and liberally be allowed”, such amendments being in the nature of
“consequential amendments”.
9. Then again, it does not lie in the mouth of the plaintiff to contend that
the amendment cannot be permitted to the defendant by reason of the Civil
Procedure (Amendment) Act, 2002 (Act 22 of 2002) whereby the Parliament,
inter alia, inserted a proviso to Order VI Rule 17 of the Code, which reads as
under:
“Provided that no application for amendment shall be
allowed after the trial has commenced, unless the court
comes to the conclusion that in spite of due diligence, the
party could not have raised the matter before the
commencement of trial.”
The plaintiff itself sought to alter the substratum of its case after the
framing of issues and instead of filing its affidavit by way of evidence, filed an
application for amendment of the plaint after almost a year of the framing of
issues. The said amendment, was allowed by order dated 1st December, 2008
and almost immediately thereafter, the defendant applied for amendment of its
written statement.
10. Further, by no stretch of imagination, it can be said that the defendant
by amendment of its pleadings is seeking to resile from an admission made by
CS(OS) 1444/2007 Page No. 8 of 11
it. The defendant had made an averment in the written statement to the effect
that an opposition had been filed by its Attorneys to the trademark registration
of the plaintiff, and is merely seeking to clarify the factual position by
explaining that the said averment was made under the mistaken impression that
its Attorneys had carried out its instructions and filed an opposition in
accordance with its instructions. Subsequently, however, the defendant not
having been able to locate the copy of the notice of opposition or the filing
receipt from the previous attorneys, namely, Khaitan & Co., Mumbai or from
M/s. Anand & Anand, to whom the file had been transferred by the defendant,
the defendant became unsure whether any such opposition had been filed.
Hence the clarificatory amendment sought to be incorporated in its written
statement.
11. It is settled law that even a categorical admission made in a pleading,
though cannot be resiled, but it may be explained or clarified. [See: Gautam
Sarup V. Leela Jetley and Ors. (2008) 7 SCC 85] In the instant case, in my
view, the defendant seeks to clarify the averment made by it, which by no
stretch of imagination can be termed an admission, let alone a categorical
admission. This is sought to be done by the defendant at the stage when it is
required to file its written statement to the amended plaint and, therefore, is
more or less in the nature of a consequential amendment. Had the defendant
CS(OS) 1444/2007 Page No. 9 of 11
filed a copy of the opposition with its earlier pleadings, it would have been a
different matter altogether. The assertion made by it that an opposition had
been filed, in my view, can certainly be explained or clarified by the defendant
by stating that though instructions had been issued to its Attorneys to file an
opposition and the defendant remained under the impression that such
instructions had been carried out, the Attorneys in fact did not file the
opposition. [See Gautam Sarup vs. Leela Jetly and Ors. (2008) 7 SCC 85].
In the instant case, in my considered view, the amendment sought by the
defendant also satisfies the twin conditions of (a) not working injustice to the
other side and (b) of being necessary for the purpose of determining the real
question in controversy between the parties. As already stated, it is more or
less in the nature of a consequential amendment. Upon the plaintiff amending
the plaint, it seeks to set the record straight by admitting that no opposition was
filed to the trademark registration of the plaintiff and the assertion made by the
defendant in the written statement filed by it was under the erroneous
impression that its Attorneys had, acting on its instructions, filed the
opposition. Far from improving the case of the defendant, the amendment
sought to be made by the defendant improves the case of the plaintiff to show
that no opposition was filed by the defendant to its trademark registration at the
relevant point of time.
CS(OS) 1444/2007 Page No. 10 of 11
12. It may be noted also that there is no question of an amendment of the
aforesaid nature causing any serious injustice or any irreparable loss to the
plaintiff. On the contrary, as stated above, it fortifies the case of the plaintiff
and weakens the defence of the defendant. To what extent this is so, will
depend upon subsequent examination and careful scrutiny of the evidence led
by the parties at the appropriate stage. Suffice it to say at this stage that the
amendment deserves to be allowed taking an overall view of the subject matter
of the suit, the explanation given by the defendant and as no prejudice to the
plaintiff will be caused.
9. The application is accordingly allowed. The defendant is directed to file
its amended written statement within four weeks in consonance with the
judgment of the Supreme Court in the case of Gurdial Singh (supra) by
incorporating the changes in a different ink or by highlighting the same with
the use of a highlighter or by underlining in red the changes made.
The application stands disposed of accordingly.
CS(OS) 1444/2007
List the case before the Joint Registrar for further proceedings on
7th September, 2009.
REVA KHETRAPAL, J.
AUGUST 11, 2009
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CS(OS) 1444/2007 Page No. 11 of 11