S.N. Aggarwal, J:-
1. This order shall dispose of an application under Order VI Rule 17 CPC filed by the plaintiffs seeking amendment of the plaint in a suit for permanent injunction, infringement of registered trade name, passing off, damages, rendition of accounts filed against the defendants.
2. The facts of the case relevant for the decision of this application are as follows:-
3. The plaintiffs are manufacturing and marketing dental products including toothbrushes, tooth paste and tooth powder in India under the well known trade mark 'COLGATE'. One of the products of the plaintiffs is a tooth brush marketed under the trade name 'COLGATE EXTRA CLEAN'. The shape and design of the said toothbrush is the subject-matter of design Registration No. 185480 dated 9.5.2001. It is stated that the said design registration is currently valid for a period of five years upto 9.5.2006. The plaintiff&have alleged infringement of their design registered vide No. 185480 by the defendants for which the cease and desist notice was sent to them. In respect of design Registration No. 185480 dated 9.5.2001, the plaintiffs have filed the present suit seeking various reliefs as mentioned above. The plaintiffs have also prayed for grant of interim injunction during the pendency of the suit.
4. The defendants in their reply to the injunction application have taken a primary defence of prior design registration under No. 185103 dated 22.3.2001 in respect of their 'CELLO' toothbrush.
5. Confronted with the defence taken by the defendants in their reply to the injunction application, the plaintiffs have come up with the instant amendment application seeking to incorporate the existence of four additional design registrations of variants of the toothbrush to which the toothbrush design in the present suit is related. The details of these additional design registrations are as follows:-
176343 dated 4th May 1998
176345 dated 4th May 1998
180362 dated 16th September 1999
176344 dated 4th May 1998
6. In substance, the plaintiffs nów seek to allege infringement on the part of the defendants even in respect of its four other design registrations by adding Paragraphs 4A and 13A after Paragraphs 4 and 13 of the plaint. The plaintiffs also seek to amend prayer clause (a) in Paragraph 18 of the plaint. The amendment proposed to be made in the plaint is to the following
Design No.
Date
Class
Features
176343
04/05/1998
The novelty resides in the shape and configuration of the toothbrush particularly in the head, neck, handle and in the combination thereof, as illustrated
176345
04/05/98
The novelty resides in the shape and configuration of the toothbrush, as illustrated, particularly in the head, handle, neck, bristles and in the combination jointly and severally.
180362
16/09/1999
The novelty resides in the shape and configuration of the toothbrush, as illustrated, particularly in the head, neck, handle, bristles and in the combination jointly and severally.
176344
04/05/1998
The novelty resides in the shape and configuration of the toothbrush, as illustrated, particularly in the head, handle, neck, bristles and in the combination jointly and severally.
13A. The impugned toothbrush design of the defendants under the trademark CELLO infringes the plaintiffs registered designs bearing numbers 176343 dated 4th May 1998, 176345 dated 4th May 1998, 180362 dated 16 September 1999 and 176344 dated 4th May 1998 as the essential features of the said registrations have been fraudulently imitated by the defendants. The defendants are estopped from taking the defence of ??ck on novelty or distinctiveness or prior publication against the plaintiffs registered designs si?ce the defendants have admittedly obtained registration for a similar design subse?uently. As such the defendants have no plausible defence to infringement and the fact of their registration of design No. 185103 in itself amounts to an admission of the invalidity thereof being hit by ??ck of novelty and distinctiveness as well as prior publication. The impugned design registration pf the defendant is liable to be cancelled being clearly covered as it is by the plaintiffs Registration Nos. 176343,176345,180362 and 176344 for the design of toothbrush. The plaintiffs are taking appropriate steps to file a cance?lation petition against the impugned design No. 185103 in the Patent Office, Kolkata.
18(a). For a decree of permanent injunction restraining the defendants, their partners/proprietor, principal officers, seryants, agents, representatives, deal-ers and all others acting for and on its behalf, from making, selling, offering for sale, advertising, directly or indirectly dealing in toothbrushes being an obvious and fraudulent imitation of the design of the 'COLGATE EXTRA CLEAN' toothbrush amountingto infringement of plaintiff No. l's registered design Nos. 185480, 176343, 176345, 180362 and 176344."
7. It is stated by the plaintiffs that the amendments sought are bona fide and are based on statutory rights and necessitated due to the disclosure in the defendants' rep?y to IA 7742/2003 which were not in the plaintiffs' knowledge before the said reply was filed. It is further stated that the plaintiffs had no reason or cause to anticipate the defence taken by the defendants prior to the institution of the suit. According to the plaintiffs, the amendments proposed to be made in the plaint are necessary to resolve the matter in controversy.
8. The defendants have filed their reply in opposition to the grant of prayer made in the instant application. The defendants have contended that the plaintiffs are trying to set up a totally new case based upon the design registration numbers which were not disclosed earlier. According to the defendants, the incorporation of additional registered designs amounts to adding a new cause of action which cannot be allowed being contrary to law. As per the defendants, the proposed amendment establishes the fraudulent conduct of the plaintiffs as they have filed the present suit claiming novelty and distinctiveness in their design registered under Registration No. 185480 whereas the same is nów being claimed to be variation of subject-matter of prior registration design Nos. 176343, 176344, 176345 and 180362. It is contended that the amendments proposed to be made in the plaint are totally frivolous, unnecessary and untenable in law. It is contended that in case the amendment proposed to be made in the plaint are allowed, it will cause irreparable prejudice to the defendants as the plaintiffs would succeed in setting up a new case which is contrary to law.
9. I have heard the arguments of learned counsel for both the parties and have also perused the record.
10. In the suit originally filed, the plaintiffs have alleged infringement of its design registered under Registration No. 185480 dated 9.5.2001 in respect of its toothbrushes. The defendants in their reply to the injunction application have taken a defence of prior registration of the design in their favour. The defendants have stated that they ho?d prior design registration under No. 185103 dated 22.3.2001 in respect of their 'CELLO' toothbrush. The plaintiffs' design Registration No. 185480 is dated 9.5.2001.
11. Having realized that the defendants have taken a defence of prior registration, the plaintiffs nów by way of amendment seek to allege that the defendants are guilty of infringement of their other designs registered under Registration Nos. 176343, 176345, 180362, 176344 in respect of their 'COLGATE' toothbrush. The said amendment proposed to be made in the plaint was strongly opposed by the learned counsel for the defendants who had argued that in case proposed amendment is allowed then it would change the entire cause of action in the suit. The contention of the counsel for the defendants was that it is the registration of a design and its infringement that gives rise to a cause of action to the plaintiff to file a suit in respect of such design. It was further argued that each registration gives rise to a separate cause of action. On the other hand, Mr. Anand appearing for the plaintiffs had argued that the proposed amendment would not change the ?uality and ?uantity of the reliefs claimed by the plaintiffs in the suit. His contention was that the plaintiffs are alleging infringement in the design of their product 'COLGATE' toothbrush. According to Mr. Anand, the p?aintiffs only seek to bring more materia? before the Court to establish their case of infringement of their designs by the defendants and the same would not amount to changing the cause espoused in the suit. The plaintiffs' learned counse? had referred to a Judgment of the Supreme Court in Kailash v. Nanhku & Ors., (2005) 4 SCC 480 and had laid emphasis on Para 28 at Page 495 of the said Judgment which is extracted below:-
"All the rules of procedure are the handmaid of justice. The language em-p?eyed by the draftsman of processual law may be libera? or stringent, but the fact remains that the object of prescribing procedure is to advance the cause of justice. In an adversarial system, no party should ordinarily be denied the opportunity of participating in the process of justice dispensation. Unless compelled by express and specific language of the statute, the provisions of CPC or any other procedural enactment ought not to be construed in a manner which would leave the Court helpless to meet extraordinary situations in the ends of justice. The observations made by Krishna lyer, J. in Sushil Kumar Sen v. State of Bihar are pertinent: (SCC p. 777, paras 5-6)
"The mortality of justice at the hands of law troubles a judge's conscience and points an angry interrogation at the law reformer,
The processual law so dominates in certain systems as to overpower substan-tive rights and substantial justice. The humanist rule that procedure should be the handmade, not the mistress, of lega? justice compels consideration of vesting a residuary power in judges to act ex debito justitiae where the tragic se?uel otherwise would be wholly ine?uitable .... justice is the goal of jurisprudence -processual, as much as substantive."
12. Replying on the above Judgment, it was argued by Mr. Anand that as procedures are handmaid of justice, the procedural law should not come in his way in making out a case of infringement against the defendants. There is no dispute about the proposition laid down by the Hon'ble Supreme Court in the aforementioned judgment but the point to be decided in the present case is whether the amendment proposed to be made by the plaintiffs in the plaint can be allowed without injustice to the other side or can it not
13. The cause of action for a suit is a bundle of facts of be proved by a party before the reliefs prayed for can be granted. What the plaintiffs have alleged in the suit originally instituted is that the defendants have infringed their design registered under Registration No. 185480 dated 9.5.2001 in respect of their product 'COLGATE' toothbrush. However, nów by way of proposed amendment the plaintiffs seek to allege infringement in respect of its other designs registered under Registration Nos. 176343, 176344, 176345 and 180362 also.
14. Whether amendment can or cannot be allowed has to be seen in the light of the provisions contained in Order VI Rule 17 CPC which are reproduced herein below:-
"Order VI”
PLEADINGS GENERALLY
17. Amendment of pleadings - The Court may at any stage of the proceed-ings allow either party to alter or amend his pleadings in such manner and on such terms as may be just, and all such amendments sha?l be made as may be necessary for the purpose of determining the real ?uestions in controversy between the parties:
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."
15. The purpose and object of Order VI Rule 17 CPC is to allow either party to alter or amend his pleadings in such a manner and on such terms as may be just.
. The power to allow the amendment is wide and can be exercised at any stage of the proceedings in the interest of justice on the bass of guidelines laid down by the various High Courts and the Supreme Court. The amendment cannot be claimed as a matter of right and under all circumstances. However, the Courts while deciding such prayers should not adopt hypertechnical approach. Libera? approach should be the genera? rule particularly in cases where the other side can be compensated by costs. Technicalities of law should not be permitted to hamper the Courts in administration of justice between the parties. Amendments are normally allowed in the pleadings to avoid multiplicity of litigation.
16. In Pirgonda Hongonda Patii v. Kalgonda Shidgonda Patii & Ors., AIR 1957 SCC 368, it was held by the Hon'ble Supreme Court as under:-
"All amendments ought to be allowed which satisfy the two conditions (a) not working injustice to the other side, and (b) of being necessary for the purpose of determining the real ?uestions in controversy between the parties. Amendments should be refused only where the other party cannot be placed in the same position as if the pleading had been originally correct, but the amendment would cause him an injury which could not be compensated in costs. It is merely a particular case of this genera? nile that where a plaintiff seeks to amend by setting up afresh claim in respect of a cause of action which si?ce the institution of the suit had become barred by limitation, the amendment must be refused; to allow it would be to cause the defendant an injury which could not be compensated in costs by depriying him of a good defence to the claim. The ultimate test therefore still remains the same: can the amendment be allowed without injustice to the other side, or can it not."
17. Let us test the proposed amendment which plaintiffs seek to m?ke in their plaint on the touch stone of the above guidelines laid down by the Hon'ble Supreme Court on the subject. The basie ?uestion that cali for consideration is whether the defendants would suffer an injustice in case the amendment proposed to be made in the plaint is allowed and whether the injustice so caused to them cannot be compensated in terms of costs. In case the injustice likely to be caused to the -defendants by allowing the proposed amendment cannot be compensated in terms of cost then the amendment cannot be allowed. In the present case, the defendants have raised a plea of prior registration in their favour and this would prima facie non suit the plaintiffs in view of provisions contained in Section 22(3) read with Section 19 of the Designs Act, 2000. Section 22 (1) and (2) of the Designs Act, 2000 provides a key to the ?uestion whether each registration gives rise to a separate cause of action. The provisions of Section 22 (1) and (2) of the Designs Act, 2000 are to the following effect:-
22. Piracy of registered design. -
(1) During the existence of copyright in any design it shall not be lawful for any person-
(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article. (2) If any person acts in contravention of this section, he shall be liable for every contravention -
(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt. or
(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees:
Provided further that no suit or any other proceeding for relief under this sub-section shall be instituted in any Court below the Court of District Judge."
18. A plain reading of the above statutory provisions would show that the infringement of each registration would give rise to a separate cause of action which has to be specifically pleaded by the plaintiff who seeks to bring an action in Court for infringement of copyright in design registered under the Designs Act, 2000. Furthermore, the plaintiff has to specifically allege as to copyright in which particular design has been infringed by the defendants. Registration of each design gives rise to a separate cause of action. I am of the considered opinion that in case the plaintiffs seek to allege violation of copyright by the defendants in respect of its earlierdesigns registered under Registration Nos. 176343,176344,176345,180362 then the plaintiffs have to file a separate suit for the said purpose. The designs under Registration Nos. 176343, 176344, 176345, 180362 by no means can be allowed to be incorporated in the suit original?y filed only in respect of one design registered under Registration No. 185480 dated 9.5.2001. The amendment, if allowed, would change the entire cause of action and would cause a serious prejudice to the defendants that cannpt be compensated in terms of costs. Hence, the amendment proposed to be made in the plaint cannot be allowed.
19. In view of the above, I do not find any merit in the instant amendment application and the same is, therefore, dismissed but with no order as to costs.