A. Abdul Karim Sahib vs A. Shanmugha Mudaliar

T. Ramaprasada Rao, J.—The petitioner before me is the plaintiff in the lower Court. The plaintiff instituted a suit on the ground that the

defendant is passing off his trade mark and in particular asked for a permanent injunction restraining the defendant from manufacturing or marketing

the goods under a mark which is deceptively similar to the plaintiff''s mark. The suit was instituted on 24th September, 1962. Two days after the

institution of the suit, the plaintiff secured registration of his trade mark under the Trade Marks Act, and after obtaining such rights and before the

case was taken up for trial, he filed I.A. No. 62 of 1965 in O.S. No. 3 of 1962 on the file of the District Judge of North Arcot for amending the

plaint incorporating therein two paragraphs which are extracted in the petition. One of those paragraphs really sets out the fact that the petitioner

has secured registration of the trade mark under consideration under the Trade and Merchandise Marks Act of 1958, and the other paragraph

relates to the prayer portion and in effect is an enlargement of the prayer already on record by asking for a permanent injunction restraining the

defendant from manufacturing, using, passing off and marketing the beedies with the wrappers design, marked as 1,2 and 3 in the plaint schedule

as being an infringement of the plaintiff''s registered trade marks. On the above facts, the learned District Judge was of the view that the plaintiff is

attempting to claim an independent relief which is inconsistent with the one already claimed by him. He was also of the opinion that the original

cause of action, as disclosed in the pleadings, is different from the cause of action sought to be introduced by this amendment. In his judgment if the

amendment is allowed, the plaintiff should be deemed to have been permitted to change his front and it would put the defendant to such prejudice

that even compensation by terms could not set right events. I do not agree with this view.

The suit was originally laid as if it was a passing off action. An amendment is sought after the plaintiff secured registration of his trade mark under

the Trade and Merchandise Marks Act of 1958. This later right secured by him is a statutory right which he can avail himself of, as against a

person who, according to the plaintiff, is marketing beedies with a mark which is deceptively similar to that of his. Whether it is deceptively similar

or not is a matter to be decided on trial. But the plaintiff is anxious to introduce into the original pleadings an additional paragraph setting forth the

statutory right secured by him under the Trade and Merchandise Marks Act, 1958. As far as I am aware, the statute law relating to infringement of

trade marks is based on the same fundamental idea as the law relating to passing off. There are certain procedural differences between the two.

But in substance and in effect, an action for passing off can easily be telescoped into an action for infringement and vice, versa. In fact, Rajagopala

Ayyangar, J., in C.S.No. 385 of 1954(Original Side High Court Madras) held that the law relating to infringement and. passing off are

fundamentally similar in its scope and application.

Another contention raised before me by the learned Counsel for the respondent and which was accepted by the learned District Judge was that

the amendment would change the cause of action, and as the amendment is based on supervening facts, such an amendment ought not to be

allowed unless the circumstances so require. In R.M. Subramaniam Vs. N. Sundaram Iyer, , a Full Bench of our High Court had to consider the

propriety of a Court taking note of subsequent events. It is no doubt true that a suit has to be decided on the facts and circumstances existing on

the date of its institution, but circumstances do warrant a Court taking into consideration supervening events as well provided the justice of the case

requires. In the above decision, the Full Bench observed:

The discretion of the Court, under its inherent powers, to adjust the right of parties on the basis of events happening after the starting of the action,

is well recognised and accepted as a rule of justice, equity and good conscience. In some case, it is almost the duty of the Court to advert to the

subsequent events brought to its notice lest it should fail to do substantial justice between the parties.

Justice should not only be done but seem to be done is a salutary principle of Law.

In Lydia Margaret Santhanam and Anr. v. David Thamburaj and Anr. (1966) 1 M.L.J. 408, Veeraswami, J., held as follows:

The test for allowing applications for amendment of plaints would be, not merely Whether a new cause of action is introduced but whether, if it is

allowed, thereby the defence would in any way be prejudiced, either by deprivation of the plea of limitation or any other plea... A new cause of

action can well be allowed to be taken by way of an amendment provided it is an alternative plea.

I very respectfully agree with the above observations.

Lastly, I desire to refer to the case reported in Nichhalbhai Vallabhai and Others Vs. Jaswantlal Zinabhai and Others, , where their Lordships of

the Supreme Court make it very clear that,

...if the amendment is refused the plaintiff may have to bring another suit and the object of the rule for allowing amendments to the plaint is to avoid

multiplicity of suits.

Having regard to the above well-accepted judicial pronouncements, I am of the opinion that the supervening event of registration of the trade

mark under the Trade and Merchandise Marks Act, 1958, is a factor which I can take note of, and on that basis, allow the amendment prayed for,

in the interests of justice. Apart from it, this rule of amendment of pleadings is an essential rule of justice, equity and good conscience, and I am

satisfied that the alternative plea that is sought to be raised by the petitioner in the amendment petition is only by way of expatiating his rights which

he has secured by statute, whilst at the same time asking for one and the same relief originally prayed for namely, a permanent injunction against the

defendant restraining him from imitating his trade mark. I do not think that the learned District Judge is right when he observed that the original

cause of action is different from the cause of action now sought to be introduced by this amendment. I am also of the opinion that no prejudice

would be caused to the defendant who is already opposing the main suit, namely, the action for passing off. Whatever evidence the defendant car

have in the suit for passing off is certainly available to him in the suit for infringement as well. Rajagopala Ayyangar, J., has said the fundamental

principles in both the actions, that is action for passing off and action for infringement, are almost similar. Above all by allowing the amendment,

multiplicity of suits are avoided; and this has to be done as pointed out by the Supreme Court. In this view, I set aside the order of the learned

District Judge and allow the Civil Revision Petition, but in the circumstances no costs.