AMENDMENT OF USE CLAIM IN TRADEMARK CASES: EXPANSIVE OR EVASIVE?

The Division Bench of the Delhi High Court recently affirmed the decision of the Single Judge by allowing an application for amendment of plaint before commencement of trial in a trade mark dispute. The Hon’ble Court further examined the nature and circumstances in which an amendment to a claim of first use in trade mark disputes can be allowed. The Division Bench, while allowing an amendment with regard to use claim in a trademark dispute, ruled that the courts, at the time of adjudicating matters related to amendments in suits at a pre-trial stage, should not adopt a narrow approach in allowing parties to bring such facts on record that may be fundamental to effective determination of the dispute.

Background:

The parties SUPERON SCHWEISSTECHNIK INDIA LTD (the Plaintiff) and D & H INDIA LTD (the Defendant) were in dispute over the use of the mark “SUPERCROME” by the Defendant.

The Plaintiff claimed use of the mark “SUPERON” since the year 2004 and sued the Defendant over its use of the mark “SUPERCROME”. In its defense, the Defendant argued that while the Plaintiff was incorporated only in the year 2004, the disputed mark has been used by the Defendant since the year 2001.

The Plaintiff filed a request for amendment of their use claim in the plaint stating that while the Plaintiff company was incorporated in the year 2004, the trademark SUPERON was adopted by the Plaintiff group through its sister concern-Stanvac Chemicals India Limited in the year 1994.

The Defendant contested the Plaintiff’s claim and argued that the amendment was introduced in hindsight, in order overcome the contentions advanced by the Defendant, and is liable to be disallowed.

Whether subsequent amendments to the use claim can be allowed?

Quoting Justice Lahoti, former Chief Justice of India, “Procedural law cannot betray the substantive law by submitting to subordination of complexity...... When the statute does not provide the path and precedents abstains to lead, then they are the sound logic, rational, reasoning, common sense and urge for public good which play as guides of those who decide. Wrong must not be left unredeemed and right not left unenforced. Forum ought to revealed when it does not clearly exist or when it is doubted where it exists”. Thus, the primary objective of amendment of pleadings is to secure the ends of justice.

Further, Order VI, Rule 17 of the Civil Procedure Code (CPC) deals with the provision of amendment of pleadings in disputes of civil nature. The said rule permits the court at any stage of the proceedings to allow either party to alter or amend their pleadings in such manner and on such terms as may be just, and specifically states that “all such amendments shall be made as may be necessary for the purpose of determining the real questions in controversy between the parties”. The said provision serves as both a facilitator as well as a caveat to courts in determining the real questions in disputes, while adjudicating upon a claim of amendment.

The test laid down by the Supreme court in the matter of M/s. Revajeetu Builders and Developers Vs. M/s. Narayanaswamy and Ors.[1] while adjudicating an application for amendment, is as follows:

On critically analysing both the English and Indian cases, some basic principles emerge which ought to be taken into consideration while allowing of rejecting the application for amendment.

(1) Whether the amendment sought is imperative for proper and effective adjudication of the case?

(2) Whether the application for amendment is bona fide or mala fide?

(3) The amendment should not cause such prejudice to the other side which cannot be compensated adequately in terms of money;

(4) Refusing amendment would in fact leads to injustice or lead to multiple litigation;

(5) Whether the proposed amendment Constitutionally or fundamentally changes the nature and character of the case? And (6) As a general rule, the court should decline amendments if a fresh suit or the appended claims would be barred by limitation on the date of application.

Court’s observations in the present case:

1. Joint Registrar’s decision:

The issue regarding amendment of use claim was first heard by the Joint Registrar (Judicial) who allowed the request and was of the view that since the issues have not been framed, the amendment may not cause any prejudice to the Defendant as it may have an opportunity to rebut the Plaintiff’s claim. Further The Joint Registrar was of the view that this fact will bring clarity before the court to decide the real controversy.

2. Single Judge’s decision:

The decision was challenged by the Defendant and the matter was heard by the Single Judge of the Delhi High Court. The Single Judge was also of the view that since the suit is at the initial stage and the Plaintiff was only seeking to place on record the fact that its group company, Stanvac Chemicals India Ltd., has been using the trademark SUPERCROME since the year 1994-prior to the incorporation of the Plaintiff. The Single Judge opined that whether the amended use claim will have any real impact on the merits of the case of the Plaintiff will be examined at the time of adjudication, and thus allowed the amendment.

3. Division Bench’s ruling:

The decision of the Single Judge was challenged before the Division Bench of the Delhi High Court. The court emphasized that all that was required to be seen was whether the amendment in question, was necessary for the purpose of determining the real questions in controversy between the parties. The controversy between the parties in the present case was relating to alleged infringement, and passing off, by the Defendant, of the registered trademark of the Plaintiff. Prior user is one of the essential factors to be examined while adjudicating such a claim of infringement and passing off. The date from which the Plaintiff was using the SUPERON trademark is fundamental to adjudication of the controversy and hence the amendment was allowed.