M/S
Bengal Waterproof Limited Vs. M/S Bombay Waterproof Manufacturing Company &
Anr [1996] INSC 1431 (18
November 1996)
A.S.
Anand, S.B. Majmudar S.B. Majmudar. J.
ACT:
HEAD NOTE:
Leave
granted.
By
consent of learned advocates of parties the appeal arising from the Special
Leave Petition was finally heard and is being disposed of by this judgment. A
short question arises for our consideration in this appeal. It is to the effect
as to whether the suit filed by the appellant against the respondents in the
Court of Chief Judge, City Civil Court, Hyderabad being Original Suit No.123 of
1982 was barred by the provisions of Order 2 Rule 2 Sub-rule (3) of the Code of
Civil Procedure, 1908 (`CPC' for short). The Trial Court held that the suit was
barred by the aforesaid provisions. We will refer to the appellant as plaintiff
and the respondents as defendants for the sake of convenience in latter part of
this judgment. A learned Single Judge of the High Court of Andhra Pradesh held
on merits that the plaintiff had established its case of passing off against
the defendants. However the decree of dismissal of the suit as passed by the
Trial Court on the ground that the suit was barred by 0.2 R.2 Sub-rule (3) was
confirmed by the learned Single Judge. As no writ appeal lies against the said
order before the Division Bench of the High Court the plaintiff preferred
Special Leave Petition under Article 136 of the Constitution of India and as we
have granted the leave, the present appeal fell for consideration before us.
The
case of the plaintiff is that it is a proprietor of the trade mark bearing the
word `DUCK BACK' which is registered under the Trade and Merchandise Marks Act,
1000 and also the owner of the copyright in the artistic design of the word
`DUCK BACK' registered under the Copyright Act and that the plaintiff has
acquired a good reputation in the Indian market for waterproof goods and rubberised
waterproof raincoats, It is the further pass of the plaintiff that it markets
its products under the registered trade mark `DUCK BACK' throughout the country
and its product has obtained good reputation and popularity amongst the
consumers as `DUCK BACK' raincoats. The plaintiff further alleges that it came
to know that defendants were manufacturing and marketing similar products under
the trade mark `DUCK BACK' which phonetically and visually resembled the
plaintiff's trade mark resulting in confusion amongst consumers and amounted to
passing off of plaintiff's goods as the goods of the defendants. The plaintiff
was, therefore, advised to sue the defendants under in the City Civil Court,
Hyderabad for infringement of registered trade mark `DUCK BACK' and it prayed,
inter alia, for permanent injunction on that basis.
The
learned Trial Judge in that suit being Original Suit No.238 of 1980 which will
be styled as the first suit, passed the judgment and degree dated 6th April
1982 and dismissed the same on the ground that there was no infringement of
plaintiff's trade mark goods named and styled as `DUCK BACK' and, therefore,
the reliefs as prayed for in the plaint were not maintainable and could not be
granted.
It is
the case of the plaintiff that it was misinformed and ill-advised when it
instituted the first suit for injunction restraining the defendants from
manufacturing, selling, distributing and sealing in any manner with the
waterproof `DUCK BACK' raincoats. The plaintiff further alleged that even
thereafter in 1982 it came to its notice that defendants were carrying on the
infringement of plaintiff's registered trade mark and were passing off their
goods as goods of the plaintiff and, therefore, they were liable to be
restrained by way of permanent injunction from infringing the trade mark and
copyright of the plaintiff as well as from passing off their goods is the
second suit and from which the present appeal arises was registered as Original
Suit No.123 of 1982 before the Chief Judge, City Civil Court, Hyderabad. It is
alleged in this second suit that by two letters both dated 30th April 1982 addressed to the defendants
separately the plaintiff called upon the defendants to desist from marketing,
selling or offering for sale the said goods in Class 25 with the mark `DACK
BACK'.
It was
further averred in the plaint of the second suit that by two letters both dated
25th May 1982 Mohammed Raftullah, acting as Advocate for both the defendants,
baldly refuted the factual statements in the plaintiff's said letters dated
30th April 1982 and set up the defence of res judicata and also purported to
challenge deny the very validity of the registration of the plaintiff's trade
mark `DUCK BACK'. It was further averred in the plaint paragraph 19 that the
cause of action arose on or about 6th April 1982 and continues to arise de die
et diem within the jurisdiction of the Trial Court. In pars 20 of the second
suit it was further averred that the cause of action arose at Hyderabad where the defendants were indulging
in the illegal action, sought to be restrained in the suit and also where the
defendants reside. The prayers in the second suit read as under :
"Therefore,
the Hon'ble Court may be pleased to grant :
(a)
permanent injunction restraining the defendants and each of them, whether
acting by themselves or by their servants or agents from infringing the
plaintiff's registered trade mark No.4378 as OI 29.8.1942 being the word mark
DUCKBACK by the USE IN COURSE of trade the mark DACKBACK or any other near
resemblance to the plaintiff's said trade mark.
(b) a
permanent injunction restraining the defendants and each of them, whether
acting by themselves or by their servants or agents from doing the following
acts, that is to say, passing causing or assisting others to pass off
waterproof of rubberised material, air pillows, shoes, hot water bags and other
goods in Class 25 not being OI the plaintiff's manufacture by advertising,
offering for sale or selling any imitation of the plaintiff's said goods by
attaching to the same to the mark DACKBACK or any colourable imitation of the
plaintiff trade mark DUCKBACK.
(c) an
injunction restraining the defendants their servants or agents from infringing
the plaintiff's copyright being NO. A-4548/69 dated 19.7.1969 in any way ;
(d) delivery
up for construction all blocks. dies and other implements for the printing or
uttering the mark DACKBACK with all papers containing the said mark such as
letter beads. bills or advertisements material ;
(e) an
enquiry into damages and such sum as may he found due thereon ;
(f) to
grant such other relief or reliefs as this Hon'ble Court may deem fit and proper in the circumstances of the case ;
(g) award
costs of the suit."
The defence.
amongst others, was that they had nor infringed the plaintiff's trade mark and
in any case the suit was barred by res judicata and by Order 2 Rule 2 sub- rule
(3), CPC in view of the fact that the earlier suit based on the same cause of
action was already dismissed by the same cause of action was already dismissed
by the Trial Court on 6th April 1982. As noted earlier. the learned Trial Judge
dismissed the suit on the ground that it was barred by Order 2 Rule 2 sub-rule
(3) of CPC. So far as the learned Single Judge of the High Court was concerned,
he agreed with the plaintiff on merits and cook the view that the waterproof
raincoats manufactured by the first defendant bearing trade mark `DACK BACK'
phonetically and visually resembled the waterproof raincoats manufactured by
the plaintiff bearing trade mark `DUCK BACK'. Thus, on merits the learned
Single Judge of the High Court held in favour of the plaintiff. However, he persuaded
himself to hold that the present suit, namely, the second suit is barred by
Order 2 Rule 2 sub-rule (3), CPC and, therefore the decree of the Trial Court
dismissing the second suit deserved to be confirmed. Of course, the learned
Single Judge of the High Court also took the view in favour of the plaintiff
that the suit was not barred by res judicata.
At the
time of hearing of this appeal it became obvious that the fate of this
litigation depends upon the finding on the moot question whether the second
suit of the plaintiff is barred by Order 2 Rule 2 sub-rule (3), CPC as on
merits are High Court has agreed with the plaintiff and there are no cross
objections or cross special Leave Petitions. The learned counsel for the
respondent-defendants fairly stated that if this Court takes the view that the
suit is not barred as held by the High Court plaintiff's suit would be required
to be decreed.
Under
these circumstances we now proceed to address ourselves to the sole moot
question as to whether the second suit filed by the plaintiff was barred by
Order 2 Rule 2 sub-rule (3), CPS. The said rule, its sub-rules and illustration
below it read as under :
"2.
Suit to include the whole claim.-(1) Every suit shall include the whole of the
claim which the plaintiff is entitled to make in respect of the cause of action
;
portion
of his claim in order to bring the suit within the jurisdiction of any Court.
(2)
Relinquishment of part of claim.-Whether a plaintiff omits to sue in respect
of, or intentionally relinquishes, any portion of his claim, he shall not
afterwards sue in respect of the portion so omitted or relinquished.
(3)
Omission to sue for one of several reliefs.-A person entitled to more than one
relief in respect of the same cause of action may sue for all or any of such reliefs,
he the Court, to sue for all such reliefs, he shall not afterwards sue for any
relief so omitted.
Explanation.-For
the purposes of this rule an obligation and a collateral security for its
performance and successive claims arising under the same obligation shall be
deemed respectively to constitute but one cause of action.
Illustration
- A lets a house to B at a yearly rent of Rs.1,200. The rent for the whole of
the years 1905, 1907 is due and unpaid, A sues B in 1908 only for the rent due
for 1906. A shall not afterwards sue B for the rent due for 1905 or 1907."
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 for supporting their plea of bar
of Order 2 Rule 2 sub-rule (3) 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 id 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. A Constitution
Bench of this Court in the case of Gurbux Singh v. Bhooralal 1984 (7) SCR 831
speaking through Ayyangar, J. in this connection has laid down as under :
"
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
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. It is
common ground that the pleadings in C.S.28 of 1950 were not filed by the
appellant in the present suit as evidence in support of his plea under 0.2.r.2,
Civil Procedure Code. The learned trial Judge, however, without these pleadings
being on the record inferred what the casue of action should have been from the
reference to the previous of deduction. At the stage of the appeal the learned
District Judge noticed this lacuna in the appellant, cage and pointed out, in
out opinion rightly, that without the plaint in the previous suit being on the
record, a plea of a bar under 0.2 r.2, Civil Procedure Code was not
maintainable In view of the aforesaid authoritative pronouncement of the
Constitution Bench of this Court the learned Trial Judge as well as learned
Single Judge of the High Court ought to have held that the plea raised by the
defendants in the present case is barred at the threshold as the defendants had
not produced on the record of the Trial Court the pleadings in the firs suit.
Thus there is a complete bar against the defendants from raising the bar of
Order 2 Rule 2 sub-rule (3) against the plaintiff in the present case. In this
connection, we may refer to one submission made by the learned counsel for the
defendants which appealed to the learned Dingle Judge of the High Court. He
submitted that the averments in the second suit of the plaintiff were that the
first suit was misconceived and proper relief was not prayed for. Therefore, it
can be inferred that the second suit was hit by the bar of Order 2 Rule 2
sub-rule (3), CPC and he further submitted that at least in counter filed in
reply to the Special Leave Petition the defendants have produced the copy of
the plaint in the first suit. We fail to appreciate how this effort on the part
of the defendants can be of any avail to them. Firstly, the Constitution Bench
of this Court in Gurbux Singh's case (supra) has clearly ruled that there
cannot be any inference about the bar of Order 2 Rule 2 sub-rule (3), CPC which
may be culied out from plaint in the second case and secondly once the plea of
bar of Order 2 Rule 2 sub-rule (3) was not available to the defendants in the
suit in the absence of the pleadings in the earlier suit being brought on the
record by them in support of their case before the Trial Court they had missed
the bus especially when even before the High Court, no attempt was made by the
defendants to produce the pleadings in the earlier suit by way of an
application foe additional evidence. Therefore, it is too late in the day foe
the defendants to contend that along with counter in the Special Leave Petition
before us they had produced the copy of the plaint in the earlier suit. In the
light of the clear pronouncement of the Constitution Bench in the case of Gurbux
Singh (supra), it must be held that it was not open to the defendants to raise
the contention of the bar of Order 2 Rule 2 sub-rule (3), CPC in the present
case and, therefore, the learned Single Judge of the High Court was clearly in
error in non-suiting the plaintiff on that ground.
However,
in order to give completeness to this judgment and as the defendants were
permitted to enter into the arens of contest on this ground by the Trial Court
as well as by the High Court we have thought it fit to examine their contention
even on merits.
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. It is also pertinent to note that in the
earlier suit, that is, the first suit the plaintiff had claimed Rs.25,000/- by
way of damages for the alleged illegal acts of the defendants which were
brought on the anvil of action is concerned no subsequent suit lies as it would
be barred under Order 2 Rule 2 sub-rule (3). But we are concerned in the
plaintiff.
In the
second suit, namely, the present suit the grievance is not based on any acts of
infringement of passing off alleged to have been committed by the defendants in
1980 but plaintiff's grievance is regarding the continuous acts of infringement
of its trade mark `DUCK BACK' and the continuous passing off action on the part
of the defendants subsequent to the filling of the earlier suit and which had
continued on the date of the second suit of 1982. The relevant averments
regarding the fresh cause of action which had accrued to the plaintiff after
the disposal of the earlier first suit are found in paragraphs 13 to 20 of the
plaint in the present second suit. They read as under :
"13.
Thereafter the plaintiff made enquiries and came to learn the following which
it believes to be true :
(a)
That the defendants neither manufacture nor sell nor deal with goods in class
25 with the mark DUCKBACK.
(b)
That the Defendant No.1 manufactures and the defendant No.2 offers for sale,
sells or otherwise deals with waterproof articles rubberised or otherwise in
class 25 applying thereto the mark DACKBAK, a word mark.
(c)
That the defendants are well aware of the fact that the plaintiff's goods in
class 25 have been marketed and sold for years under the plaintiff's trade mark
DUCKBACK.
14.
The plaintiff avers that the mark DACKBACK is phonetically, visually and in
size similar to the plaintiff's said registered trade mark DUCKBACK.
15.
The plaintiff avers that the defendants by their said acts have not only
infringed the statutory rights of the plaintiff not only under the Trade and
Merchandise Marks Act, 1958 but also under the Copy Right Act, 1957 by their
wrongful use of the mark DUCKBACK, which is confusing similar to or deceptively
resembling the plaintiff's said mark or design DUCKBACK, but also have invaded
the common law tight of the plaintiff by passing off goods in class 25, not
being those of the plaintiff's manufacture or sold by the plaintiff.
16. By
the two letters dated 20.4.1982 addressed to the defendants separately, the
plaintiff called upon the defendants to desist from marketing, selling or
offering for sale the said goods in Class 25 with the mark DACKBACK. Xerox copy
of the said two letters dated 30.4.1982 are filed herewith and marked `D' and
`E'.
17. By
two letters both dated 25.5.1982 from Mohammed Raftullah, acting as Advocate
for both the defendants, baldly refuted the factual statements in the
plaintiff's said letters dated 30.4.1982 and set up the defence of RES JUDICATA
and also purported to challenge and deny the very validity of the registration
of the plaintiff's trade mark DUCK BACK.
The
plaintiff reserves its comments on the said letters both dated 25.5.1982 are filed
herewith and marked `F' and `G' respectively.
18.
The Plaintiff has suffered loss which cannot be easily assessed and would
suffer further loss and damage unless the defendants were restrained from
further infringing the said trade mark DUCKBACK by the use of the mark DACKBACK
or any other near resemblance or colourable imitation of the plaintiff's mark
DUCKBACK or from passing off in any way goods in class 25 not being those of
the plaintiff by the use of the mark DACKBACK or otherwise as the goods of the
plaintiff.
19.
The cause of action arose on or about 6.4.1982 and continues to arise DE DIE ET
DIEM within the jurisdiction of this Hon'ble Court.
Thus
the suit is within limitation.
20.
The cause of action arose at Hyderabad
where the defendants are indulging in the illegal action sought to be
restrained in the suit and also where the defendants reside. Thus, the Hon'ble Court has got jurisdiction." The
aforesaid averments in the plaint clearly show that the present suit is not
based on the some cause of action on which the earlier suit was based. The
cause of action for filling this present second suit is the continuous and
recurring infringement of plaintiff's trade mark by the defendants continuously
till the filing of the present second suit. We asked the learned counsel for
the defendants as to whether pending the suit and at present also the
defendants are trading in the offending goods, namely, bearing the mark `DACK
BACK' and he informed us that defendants even at present are carrying on this
business.
Therefore,
pending the second suit all throughout and during the pendency of these
proceedings the defendants have carried on the business of trading in the
commodity waterproof raincoats `DACK BACK'. It is obvious that thus the alleged
infringement of plaintiff's trade mark `DUCK BACK' and the alleged passing off
action on the part of the defendants in selling their goods by passing off
their goods as if they were plaintiff's goods has continued all throughout
uninterrupted and in a recurring manner. 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 reliers, 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 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 infringement continues. 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.
Once
this conclusion reached the result is obvious. As the learned Single Judge of
the High Court has held on merits in favour of the plaintiff and has taken the
view that the action of the defendants is actionable and amounts to acts of
passing off as the waterproof raincoats manufactured by the first defendant
bearing the trade mark `BACK BACK' are phonetically and visually similar to
those of the plaintiff hearing the trade mark `DUCK BACK', it must be held that
the plaintiff had made put a case for actionable breach of infringement of
plaintiff's trade mark as well as actionable act of passing off by the
defendants of their goods as if they were plaintiff's goods and, therefore, the
plaintiff's suit would be required to be decreed.
In the
result the appeal suceeds and is allowed. The judgment and order of dismissal
of the plaintiff's suit as passed by the Trial Court and as confirmed by the
High Court are set aside. Plaintiff's Original Suit No.123 of 1982 in the Court
of Chief Judge, City
Civil Court, Hyderabad is ordered to be decreed as prayed
for. Appeal is accordingly allowed with costs all throughout.
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