Citation Codes

Equivalent Citations

citation codes

Case Number

Appeal From Order No. 133 of 2008, Civil Application No. 4940 of 2008, Appeal From Order No. 133 of 2008

Advocates

Mr. Tejas M Barot for Appellant(s): 1,
Mr. RR Shah for Respondent(s): 1,

Judges

K.A Puj, J.

Acts

provisions of Order-2, Rule-2, or Order-23, Rule-1 of the Civil Procedure Code
ORDER 23 RULE 4 CIVIL PROCEDURE CODE
Order XXIII, Rule-1, Code of Civil Procedure
ORDER 43 RULE 1 A CIVIL PROCEDURE CODE
provisions of Order-23, Rule-4. 7
provisions of Order-23, Rule-1
Order-23, Rule-4 of the Code
Order-2, Rule-2, Sub-rule (3)
Clause (b) of Sub-rule (4)

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Smart Summary

Structured Summary of the Court Opinion

Factual and Procedural Background

The appellant (original defendant) challenged, by an Appeal From Order under Order 43 Rule 1 CPC, an order of the Additional District Judge and Presiding Officer, Fast Track Court No.7, Vadodara dated 27.3.2008. The impugned order (Application Ex.5 in Regular Civil Suit No.10 of 2007) granted an interim injunction in favour of the respondent (original plaintiff) restraining the appellant from manufacturing, marketing, selling, printing and publishing the trade mark "GUWAR NEELIMA-51" or any identical or similar trade mark to the respondent's "GUWAR NEELIMA-51".

The Court issued notice for final disposal on 23.4.2008 and heard counsel for both sides. The appellant's principal ground was that the present suit was not maintainable because the respondent had earlier filed a suit (Regular Civil Suit No.7 of 2004, later renumbered as Suit No.15 of 2006) concerning the same cause of action and relief, which was unconditionally withdrawn (Ex.33). The appellant relied on withdrawal rules (Order 23) and an earlier stay granted by this Court in an appeal in the earlier suit.

The respondent answered that the cause of action in the earlier suit was different because, after filing the earlier suit, the respondent obtained registration of the trade mark and the appellant subsequently infringed it; therefore a fresh suit was necessary. The trial court found a prima facie case for infringement/passing off and granted interim relief based on documentary evidence, including a registration certificate.

Legal Issues Presented

Whether a plaintiff who has earlier withdrawn a suit without seeking leave or liberty to institute a fresh suit is precluded from instituting a fresh suit in respect of the same subject-matter (i.e., applicability of Order 23 Rule 1/Rule 4 CPC).
Whether the bar in Order 2 Rule 2 (sub-rule (3) / related provisions) prevents bringing a subsequent suit in trade mark cases where alleged infringement or passing off is continuing.
Whether the trial court erred in granting interim injunction on the material before it — specifically whether the plaintiff had shown a prima facie case of infringement/passing off and whether evidence of single or isolated transactions was insufficient (issues as framed by the parties, including reliance on requirements for commercial-scale transactions in passing off).

Arguments of the Parties

Appellant's Arguments (Mr. Tejas M. Barot)

The present suit is not maintainable because the respondent had earlier filed a suit concerning the same cause of action and relief (Regular Civil Suit No.7 of 2004, renumbered as Suit No.15 of 2006) which was unconditionally withdrawn (Ex.33).
Order 23 Rule 1 (and Clause (b) of Sub-rule (4) of Rule 1 as cited) precludes institution of a fresh suit in respect of the same subject-matter where the earlier suit was withdrawn without prior permission; therefore the fresh suit should have been barred.
The appellant relied on Vallabh Das v. Dr. Madan Lal (1970 (1) SCC 761) to show the limits on re-instituting litigation after withdrawal and on Narayan Jethanand v. Asapuri Vijay Saw Mill (1995 (1) GLH1147) to reinforce that withdrawal without permission bars fresh suit on same subject-matter.
The respondent failed to prove a series of infringing transactions; an isolated transaction would be inadequate to justify interim relief. For passing off, commercial-scale supply must be shown (relying on Glen Raven Mills Inc. v. Vaspar Concepts Pvt. Ltd.).
Accordingly, the interim injunction granted by the trial court should be vacated and the impugned order quashed.

Respondent's Arguments (Mr. R.R. Shah)

The cause of action in the earlier suit differed from the present suit because, after the earlier suit was filed, the respondent obtained registration of his trade mark and subsequent infringement by the appellant occurred.
Provisions in Order 2 Rule 2 or Order 23 Rule 1 CPC cannot be invoked to bar trade mark actions of this nature; reliance was placed on M/s Bengal Waterproof Ltd. v. M/s Bombay Waterproof Manufacturing Co. (AIR 1997 SC 1398) and a decision of this Court in Kachchh Kala v. New Kutch Kala (First Appeal No. 5061 of 1998 dated 23.11.2005).
The respondent had produced documentary evidence (including registration) before the trial court; the trial court found prima facie similarity between the marks (use of "GUWAR" and variants "NEELAM-51" / "NEELIMA-51", pink background, English letters) and concluded plaintiff established a prima facie case deserving of interim protection.
Therefore, the trial court's grant of interim relief was based on documentary evidence and did not call for interference.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Vallabh Das vs. Dr. Madan Lal and Others, 1970 (1) SCC 761	Interprets Order XXIII Rule 1 CPC: Court may permit withdrawal with liberty to institute a fresh suit on such terms; concept of "subject-matter" and its scope (includes cause of action and relief).	The appellant relied on this case to argue that the present suit (same cause of action and relief) was not maintainable after withdrawal. The Court discussed the case but found it distinguishable in light of continuous infringement principles applied from Bengal Waterproof.
Narayan Jethanand (through heirs) vs. Asapuri Vijay Saw Mill, 1995 (1) GLH 1147	Holds that when a plaintiff withdraws a suit without permission, Order 23 Rule 4 CPC precludes instituting a fresh suit in respect of the same subject-matter against the same defendant; rule is mandatory.	Cited by the appellant to assert that unconditional withdrawal bars fresh suit. The Court acknowledged the principle but held it did not bar the present suit because of the continuing nature of the alleged wrong and the applicability of Bengal Waterproof.
Glen Raven Mills Inc. vs. Vaspar Concepts Pvt. Ltd. & Anr., 1995 PTC (15) 392 (Delhi High Court)	To establish passing off, supply by defendant at a place must be on a commercial scale; direct transactions of sale/purchase with distributors/retailers of commercial proportion are necessary.	Relied upon by the appellant to argue insufficiency of evidence for passing off. The Court recorded the reliance but did not adopt it as determinative, because it found other reasoning (continuous infringement and documentary prima facie evidence) sufficient to uphold interim relief.
M/s Bengal Waterproof Ltd. vs. M/s Bombay Waterproof Manufacturing Co. & Anr., AIR 1997 SC 1398	Where infringement and passing off continue after the earlier suit, such continuing or recurring wrongs give a fresh cause of action; Order 2 Rule 2(3) cannot be invoked to bar a subsequent suit for continuing acts of infringement or passing off.	The Court relied on this apex-court decision as controlling: continuing infringement/passing off provides a recurring cause of action and therefore the plaintiff was not precluded from filing the fresh suit despite earlier withdrawal.
Kachchh Kala vs. New Kutch Kala, First Appeal No. 5061 of 1998 (decided 23.11.2005)	Not fully elaborated in the opinion; cited by the respondent in support of his position on trade mark matters.	The decision was relied on by the respondent; the Court noted the reliance but the opinion does not set out a detailed principle from this case beyond that reliance was placed on it.

Court's Reasoning and Analysis

The Court proceeded by first recording that the earlier suit had been filed against the same defendant and that the subject-matter was "more or less" the same. The Court then examined governing principles and precedents to determine whether the earlier withdrawal barred the present suit or the grant of interim relief.

Central to the Court's reasoning was the Supreme Court's decision in M/s Bengal Waterproof Ltd. (AIR 1997 SC 1398). The Court highlighted the proposition that where the cause of action in a subsequent suit relates to continuous acts of infringement or continuous passing off that continued after an earlier suit, the subsequent suit is not barred by the provisions that otherwise prevent re-litigation (specifically Order 2 Rule 2(3) and related withdrawal rules). The Court explained that infringement of a registered trade mark and passing off are continuing wrongs; each instance of infringement or passing off gives rise to a fresh cause of action.

Applying that principle to the present facts, the Court concluded that the earlier suit had been withdrawn on technical grounds without consideration of the relief claimed and did not preclude the plaintiff from instituting the present suit because the alleged infringement continued up to the date of the fresh suit. Consequently, Order 23 Rule 4 (and related withdrawal provisions) did not bar the fresh suit in these circumstances.

On the question of the interim injunction, the Court observed that the trial judge had exercised discretion based on documentary evidence produced before him (including a certificate of registration and observed similarities between the marks). The Court found that the exercise of discretion was not perverse and that there was material on record to justify prima facie findings; therefore there was no justification to interfere with the interim order.

The Court emphasized that its observations were prima facie; the trial judge must adjudicate the suit on the evidence led at trial without being influenced by these prima facie remarks.

Holding and Implications

Core Ruling: The Appeal From Order is dismissed; the impugned order granting interim injunction is not interfered with.

Consequences expressly stated in the opinion:

The Appeal From Order fails and is dismissed.
Because the appeal is dismissed, the related Civil Application does not survive and is disposed of.
The interim injunction granted by the trial court stands (the Court refused to interfere with the trial court's discretionary order).
The observations in the present order are prima facie; the trial court must decide the suit on the merits and the evidence led by parties at trial without being influenced by the prima facie remarks recorded by this Court.

The opinion does not announce or claim to establish any new legal precedent beyond its application of existing Supreme Court and High Court authorities (notably the Bengal Waterproof principle regarding continuing infringements and recurring causes of action).

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Dhara Seeds (S) v. Gujarat Farm Seeds (Pvt.) Ltd. (S)

JUDGEMENT :-

K.A.Puj, J.

1 The appellant - ori. defendant has filed this Appeal From Order under Order-43 Rule-1 of Civil Procedure Code challenging the order passed by the learned Additional District Judge and Presiding Officer, Fast Track Court No.7, Vadodara below Application Ex.5 in Regular Civil Suit No. 10 of 2007 on 27.3.2008 whereby the learned trial Judge granted interim injunction in favour of the present respondent - ori. plaintiff and the appellant was restrained from manufacturing, marketing, sellings printing and publishing the trade mark "GUWAR NEELIMA-51" or any other trade mark which is identical, same or similar to the trade mark "GUWAR NEELIMA-51" of the present respondent ori. plaintiff.

2 This Court has issued notice for final disposal on 23.4.2008. Heard Mr. Tejas M. Barot, learned Advocate appearing for appellant and Mr. R.R. Shah, learned Advocate appearing for respondent.

3 The main ground of challenge of the order passed by the learned trial Judge is that the suit itself is not maintainable and yet the interim relief was granted. For this purpose, Mr. Barot has submitted that before filing of present suit the respondent ori. plaintiff has already filed earlier suit being Regular Civil Suit No.7 of 2004 in the Court of learned District Judge, Kheda and the said suit was in respect of same cause of action and relief. The said suit was subsequently renumbered as Suit No.15 of 2006 on its transfer to the Court of learned District Judge, Anand. The said suit was in respect of same cause of action and relief and it was unconditionally withdrawn by the respondent - plaintiff vide Ex.33. He has, therefore, submitted that in view of withdrawal of earlier suit, fresh suit for the same cause of action and same relief was not maintainable. He has further submitted that against the order passed in the earlier suit, the appellant preferred Appeal from Order No.12 of 2006 before this Court wherein stay was granted against the implementation of the order passed by the learned trial Judge in earlier suit. He has, therefore, submitted that once this Court stayed the order granting interim injunction, with a view to circumventing the said order of this Court, the respondent - ori. plaintiff could not have been permitted to file second suit in respect of the same subject matter.

4 Mr. Barot further invited Court's attention to the provisions of Order-23, Rule-1 which is in respect of withdrawal of suit. He has submitted that the Order-23, Rule-1 permits withdrawal of suit by the plaintiff. However, Clause (b) of Sub-rule (4) of Rule-1 precludes institution of fresh suit in respect of same subject matter, where the suit is withdrawn without prior permission of the Court. In view of the said provision, when the institution of the suit for the same subject matter has been barred by law, it was not open to the learned trial Judge to entertain Application ex.5 and to pass the impugned order.

5 In support of his submissions Mr. Barot relied on the decision of Apex Court in the case of Vallabh Das vs. Dr. Madan Lal and Others, reported in 1970 (1) SCC 761, wherein it is held that the Order XXIII, Rule-1, Code of Civil Procedure empowers the Courts to permit a plaintiff to withdraw the suit brought by him with liberty to institute a fresh suit in respect of the subject-matter of that suit on such terms as it thinks fit. The term imposed on the plaintiff in the previous suit was that before bringing a fresh suit on the same cause of action, he must pay the costs of the defendants. Therefore, one has to see whether that condition governs the institution of the present suit. For deciding that question one has to see whether the suit from which this appeal arises is in respect of the same subject-matter that was in litigation in the previous suit. 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. Since in the present suit the same cause of action and relief is prayed for, it is not maintainable in view of the ratio laid down by the Apex Court in the above above decision.

6 Mr. Barot further relied on the decision of this Court in the case of Narayan Jethanand, since deceased by his heirs & legal representatives vs. Asapuri Vijay Saw Mill, reported in 1995 (1) GLH1147, wherein it is held that when the plaintiff withdraws the suit without permission of the Court, he is precluded from instituting a fresh suit in respect of the same subject-matter under Order-23, Rule-4 of the Code and against the same defendant. This rule is mandatory. Therefore, the plaintiff cannot thereafter institute a suit for enforcing what was the subject-matter of the former suit. The subject-matter means series of acts or transactions alleged to exist giving rise to the relief claimed. Therefore, in such a situation, when the former suit is withdrawn unconditionally or without any order granting leave to withdraw the suit with liberty to bring fresh suit in the circumstances would obviously operate a bar to a fresh suit, as contemplated by the provisions of Order-23, Rule-4.

7 Mr. Barot further made the submission that the respondent - ori. plaintiff has failed to prove that the appellant has entered into series of transactions. Merely on the basis of one isolated transaction interim relief cannot be granted. He has further submitted that on the basis of evidence produced by the plaintiff before the trial Court it is difficult for the trial Court to come to the conclusion that the appellant has committed infringement of the plaintiff's Trade Mark.

8 In support of his submission Mr.Barot relied on the decision of the Delhi High Court in the Case of Glen Raven Mills Inc. vs. Vaspar Concepts Pvt. Ltd., & Anr. Reported in 1995 PTC (15) 392, wherein it is held that, to give jurisdiction to the Court in a case of passing off, it is necessary to prove mat the supply made by the defendant at a particular place was on a commercial scale. There should have been direct transaction of sale and purchase between the defendant and a I distributor or a wholeseller or a retailer and such transactions should be of commercial proportion.

9 Based on the above submissions, Mr. Barot submitted that the impugned order passed by the learned trial Judge requires to be quashed and set aside and the interim injunction granted by the trial Court is required to be vacated.

10 As against the submissions of Mr. Barot, learned advocate Mr. R.R. Shah appearing on behalf of respondent - ori. plaintiff has submitted mat cause of action is different in earlier suit as well as in the present suit. He submitted that after filing the earlier suit, the respondent has got the registration of his Trade Mark and the said trade Mark has been infringed by the appellant and hence the present suit is filed. He has further submitted that in respect of Trade Mark matters, provisions of Order-2, Rule-2, or Order-23, Rule-1 of the Civil Procedure Code cannot be invoked. For this purpose he relied on the decision of the Apex Court in the case of M/s. Bengal Waterproof Ltd. vs. M/s. Bombay Waterproof Manufacturing Company and Anr., reported in AIR 1997 SC 1398. Mr. Shah has also relied on the decision of this Court in the case of Kachchh Kala vs. New Kutch Kala, decided on 23.11.2005 in First Appeal No. 5061 of 1998. He has further submitted that the respondent - ori. plaintiff has produced all necessary evidence before the trial Court and on the basis of these documents the learned trial Judge has come to the conclusion that the plaintiff as well as defendant's Trade Mark are in the field of grain seeds quoting the name of 'GUWAR', as one of the grain. The plaintiff had connected GUWAR with NEELAM-51 whereas the defendant had adopted the word NEELIMA-51. These are the letters printed in English. The background is also in pink colour. The learned trial Judge has also pointed out certain similarities between these two Trade Marks and has come to the conclusion that the plaintiff has established their prima facie case and since the plaintiff has obtained a certificate of registration, plaintiff deserves the protection by the order of the Court. He has, therefore, submitted that this finding is arrived at by the trial Court on the basis of documentary evidence produced and hence it cannot be said that the impugned order was passed by the trial Court without any evidence. He has, therefore, submitted that no interference is called for in the order passed by the trial Court.

11 Having heard learned Advocates appearing for the respective parties and having gone through their rival contentions in light of the statutory provisions as well as decided case law on the subject the Court is of the view that the earlier suit was filed by the plaintiff against the same respondent and more or less subject-matter was also same. In view of the decision of the Apex Court in the case of M/s. Bengal Waterproof Ltd., (Supra) it cannot be said that the plaintiff is precluded from filing fresh suit against the defendant of the same cause of action. It is observed by the Apex Court in the above decision that where the cause of action for the first suit was based on the infringement of plaintiff's trade mark by the defendant till the date of the suit and 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, the second suit in which plaintiff's grievance was regarding the continuous acts of infringement of its trade mark and the continuous passing off action on the part of the defendants, subsequent to the filing of the earlier suit and which had continued on the date of the second suit would not be barred under Order-2 Rule-2(3). 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. In cases of continuous causes of action or recurring causes of action bar of Order-2, Rule-2, Sub-rule (3) cannot be invoked. 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 come to the Court by appropriate proceedings. Similarly infringement of a registered trade mark would also be a continuing wrong so long as infringement continues. Therefore, whether the earlier infringement has continued or a new infringement has taken place cause of action for filing a fresh suit would obviously arise. It was more so when earlier suit was disposed of as technically not maintainable in absence of proper reliefs. In such a case for all times to come in future, defendant of such a suit cannot be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts.

12 In view of the above categorical observations by the Apex Court, the Court is of the view that even the bar of Order-23, Rule-4 would not come in the way of the plaintiff to file afresh suit as the infringement of the trade mark continued at the time when the fresh suit was filed. The earlier suit was disposed of as withdrawn only because of technical ground without granting or considering the relief claimed for by the plaintiff in that suit. The observations made by the Apex Court clearly apply to the facts of the present case and hence it cannot be said that the subsequent suit filed by the plaintiff is hit by the provisions contained in Order-23, Rule-4 of the Civil Procedure Code simply because the plaintiff has not sought for liberty to file a fresh suit. So far as granting of interim relief is concerned, the trial Court has exercised its discretion on the basis of documentary evidence available with the trial Court which cannot be said to be perverse or without any application of mind. The Court, therefore, does not see any justification to cause for any interference in the order passed by the trial Court.

13 The Appeal From Order, therefore, fails. Since the Appeal is dismissed the Civil Application does not survive and it is accordingly disposed off.

14 The observations made in the order of the trial Court or in this order by the Court are of prima facie nature and the learned trial Judge would dispose of the suit without being influenced by the same and on the basis of the evidence that may be led by the parties.

Dhara Seeds (S) v. Gujarat Farm Seeds (Pvt.) Ltd. (S)

Structured Summary of the Court Opinion

Factual and Procedural Background

Legal Issues Presented

Arguments of the Parties

Appellant's Arguments (Mr. Tejas M. Barot)

Respondent's Arguments (Mr. R.R. Shah)

Table of Precedents Cited

Court's Reasoning and Analysis

Holding and Implications

Dhara Seeds (S) v. Gujarat Farm Seeds (Pvt.) Ltd. (S)

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