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Judgment
K.K. Sasidharan, J.—This appeal is at the instance of the unsuccessful petitioner in Application No. 5296 of 2010 in C.S.No. 674 of 2010
and the challenge is to the order dated 28 February 2011 dismissing the application filed under Order VII Rule 11 of the CPC to reject the plaint
in C.S.No. 674 of 2010.
The Litigative Journey
The respondents filed a suit in C.S.No. 674 of 2010 praying for a decree of permanent injunction restraining the appellant from in any manner
infringing their registered trade mark ""Annapoorna"" and for other consequential reliefs. According to the respondents, their predecessor-in-interest
adopted the mark ""Annapoorna"" originally for his boarding and lodging business and chain of hotels owned by the group under the name and style
of ""Sree Annapoorna and Sri Gowri Shankar"". Subsequently, a partnership was formed during the year 1980 under the name and Style of ""Sree
Annapoorna Gayathri Foods"" which was reconstituted on 24 November 1985 and the name of the firm was changed to ""Sree Annapoorna
Foods"". The respondents have been marketing condiments and instant foods under the name and style of ""Sree Annapoorna"". By virtue of long,
continuous and extensive use, the trademark ""Annapoorna"" has become distinctive of and is immediately identified by the trade and public with the
products manufactured and marketed by the respondents. The appellant attempted to sell condiments and instant food items under the name and
style of ""Knorr Annapurna"" and ""Kissan Annapurna"". This made the respondents along with other partners Latha and Vijayaprasad to file a suit in
C.S.No. 866 of 2002 against the appellant. The respondents in the said suit prayed for a permanent injunction restraining the appellant from in any
way passing off their goods of the description set out in the schedule to the plaint or its related products as that of their product either under the
name and style of ""Annapoorna"" or under any name deceptively similar thereto. The respondents have filed an interlocutory application in the said
suit. Finally, the matter was taken up before a Division Bench in O.S.A.No. 246 of 2003. Before the Division Bench the appellant has given an
undertaking that the spices and condiments under the trade mark ""Knorr Annapurna"" will not be sold in the State of Tamil Nadu. The said
undertaking was recorded by the Division Bench. The suit in C.S.No. 866 of 2002 is still pending on the file of this Court.
It was only during the pendency of the suit in C.S.No. 866 of 2002, the respondents have filed the present suit in C.S.No. 674 of 2010 on
account of the subsequent events.
The appellant entered appearance in the subsequent suit and filed an application in A.No. 5296 of 2010 invoking Order VII Rule 11 read with
Section 151 of the Code of Civil Procedure. The prayer was to reject the plaint on the ground of re-litigation. The appellant raised four substantial
grounds in the affidavit filed in support of the application to reject the plaint. Those four grounds relates to non-maintainability of the relief of
infringement in view of the registration obtained by the appellant, res judicata, delay, laches, acquiescence and gross abuse of judicial process.
Before the learned Single Judge, the appellant contended that the respondents have relinquished the claim by restricting the relief in the earlier plaint
and as such it was not open to them to file a fresh suit at a later point of time.
The respondents filed a detailed counter affidavit in Application No. 5296 of 2010 disputing the claim made by the appellant. The respondents
contended that the second suit was filed on account of the subsequent events and as such the suit was maintainable in spite of the pendency of the
earlier suit in C.S.No. 866 of 2002.
The learned Single Judge considered the issue in the light of several judgments of the Supreme Court and ultimately dismissed the application.
Feeling aggrieved, the appellant is before us.
Summary of preliminary submissions:
The learned counsel for the appellant made extensive submissions with regard to the merits of the case pleaded by the appellant. According to
the learned counsel, other than re-producing the judgments of the Supreme Court, the learned Judge has not made any attempt to answer the
questions raised by the appellant.
The learned Senior Counsel for the respondents fairly conceded the fact regarding non consideration of the matter on merits by the learned
Single Judge. The learned Senior Counsel made a request before us to consider the matter on merits instead of remanding the matter for fresh
consideration by the learned Single Judge.
The learned counsel for the appellant also agreed that it would be in the interest of both parties to decide the application once for all on merits
instead of setting aside the impugned order for the purpose of re-consideration by the trial Court. Accordingly, we have heard the submissions of
the learned counsel for the appellant and the learned Senior Counsel for the respondents at length on the merits of the application filed under Order
VII Rule 11 read with Section 151 of the Code of Civil Procedure.
Rival contentions on the mertis of the application:
The learned counsel for the appellant made the following submissions:
(i) The suit filed by the respondents in C.S.No. 674 of 2010 was barred u/s 29 of the Trademarks Act, 1999 The appellant is the registered
proprietor of the trademark ""Annapurna"" ever since 1999 and the same was known to the respondents. The respondents having filed a Civil Suit in
C.S.No. 866 of 2002 for the relief of passing off against the appellant, was not entitled to file another suit for the very same relief.
(ii) The relief of infringement sought for by the respondents was barred on account of Sections 28(1), 28(3) and 29(1) of the Trademarks Act.
(iii) The respondents while filing the earlier suit in C.S.No. 866 of 2002 relinquished the present relief. The cause of action for filing the present suit
was very much available to the respondents. However, they have not chosen to include the said relief and the same would amount to
relinquishment and as such the second suit was not maintainable.
(iv) The application in A.No. 5296 of 2010 was not only under Order VII Rule 11 but also u/s 151 of the Code of Civil Procedure. The learned
Single Judge without considering the scope of the provisions, dismissed the application.
The learned Senior Counsel for the respondents would contend:
(i) The relief claimed in C.S.No. 866 of 2002 has nothing to do with the relief claimed in the present suit in C.S.No. 674 of 2010. Therefore, there
is no relinquishment as such.
(ii) The manufacture and sale of products under the trade name ""Annapurna"" per se by the appellant subsequent to the initiation of the suit in
C.S.No. 866 of 2002 made the respondents to file the present suit. Since the cause of action for filing the second suit was entirely different, the suit
was clearly maintainable.
(iii) None of the four grounds raised by the appellant would satisfy the ingredients of Order VII Rule 11 of the CPC for the purpose of rejecting
the plaint.
Analysis:
The only issue that arises for consideration in this intra-court appeal is as to whether the plaint in C.S.No. 866 of 2002 is liable to be quashed
on the ground of re-litigation.
The respondents along with two others earlier filed a suit in C.S.No. 866 of 2002 against the appellant praying for a decree of injunction in
respect of the trademark ""Annapoorna"" or any other name deceptively similar thereto. The respondents in the said suit contended that the cause of
action has arisen to file a Civil Suit in view of the manufacture and sale of similar products by the appellant under the name and style of ""Knorr
Annapurna"". The appellant has given an undertaking in the said suit that they would not market spices and condiments under the trademark ""Knorr
Annapurna"" in the State of Tamil Nadu. The said undertaking is still in force. The respondents have no case that the appellant is marketing spices
under the tradename ""Knorr Annapurna"" in the State of Tamil Nadu.
The respondents in the cause of action paragraph in C.S.No. 674 of 2010 submitted that the cause of action for filing the present suit has
arisen on account of the manufacture and sale of products by the appellant under the trademark ""Annapurna"" per se, which is identical and
deceptively similar to their registered trade mark ""Annapoorna"". According to the appellant, the very same cause of action was available to the
respondents while filing the suit in C.S.No. 866 of 2002. However, they have not included the present prayer in the earlier suit. The present suit
based on the earlier cause of action would amount to an act of relinquishment and therefore, the second suit was not maintainable.
The appellant in the counter affidavit filed in the interlocutory application in O.A.No. 854 of 2002 in C.S.No. 866 of 2002 contended that they
have been using the trademark ""Annapurna"" along with the mark ""Kissan"" for the last few years. Though the appellant has made a claim that they
have been using the trademark ""Annapurna"", the fact remains that there was no mention in the counter affidavit with respect to the adoption of
trademark ""Annapurna"" per se. There was a reference about ""Annapurna"" and ""Kissan Annapurna"". However there was no specific reference with
regard to ""Annapurna"" per se in the earlier round of litigation.
On the other hand, the respondents claimed that the appellant, not withstanding the earlier undertaking given in O.S.A.No. 246 of 2003 started
marketing the products under the brand name ""Annapurna"" per se. The appellant has produced the registration obtained by them in respect of
various trademarks. The appellant has obtained the trademark registration with respect to ""Annapurna"" and ""Kissan Annapurna"". There are no
materials before this Court to arrive at a prima facie satisfaction that there was an intentional relinquishment on the part of the respondents with
respect to the relief regarding the trademark ""Annapurna"" per se and as such, the second suit was legally not maintainable.
The appellant in the application filed under Order VII Rule 11 read with Section 151 of the CPC raised the following four grounds to reject the
plaint:
(i) Relief of infringement claimed not maintainable:
Contention:
According to the appellant, they have registered the trademark ""Annapurna"" and ""Kissan Annapurna"" and as such they are the registered
proprietors of the said trademark ""Annapurna"". It was the contention of the appellant that the first respondent has already filed a rectification
petition seeking cancellation of the registration obtained by them for its trademark ""Annapurna"" under No. 720333 and the rectification petition is
still pending on the file of Intellectual Property Appellate Board. It was under the said circumstances, the appellant has taken up a contention that
the suit was not maintainable.
Our finding:
The present suit in C.S.No. 674 of 2010 relates to ""Annapurna"" per se. The appellant has no case that they are the registered proprietor of the
trademark ""Annapurna"" Per se. Therefore, it cannot be said that the subsequent suit relating to the trademark ""Annapurna"" per se was not
maintainable.
(ii) The relief of passing off claimed is barred by res judicata:
Contention:
The appellant contended that the very same relief was claimed in C.S.No. 866 of 2002 and as such the subsequent suit was not maintainable.
Our finding:
There is absolutely no merit in the contention with respect to res judicata. In order to axe the subsequent suit u/s 11 of the CPC the party must
demonstrate that the issue raised in the subsequent suit was substantially and directly in issue in a former suit between the same parties, and the
Court competent has already decided the matter and the issue therefore has attained finality.
Admittedly, the suit in C.S.No. 866 of 2002 is still pending. Since the earlier suit has not attained finality, it cannot be said that the subsequent suit
was barred by res judicata.
(iii) The plaintiff is guilty of delay, laches and acquiescence:
Contention:
It is the contention of the appellant that the first respondent already filed a suit in C.S.No. 866 of 2002 and in the said suit, a counter affidavit was
filed on 25 December 2002. It was long thereafter the present suit has been filed with respect to the very same cause of action.
Our Finding:
Prima facie there is absolutely no merit in the said contention. The question of delay, laches and acquiescence are all matters of evidence. The same
cannot be decided in an application under Order VII Rule 11 of the Code of Civil Procedure.
(iv) The present suit constitutes gross abuse of judicial process:
Contention:
According to the appellant, the respondents deliberately made false-hood to appear as if they came to know of the trademark ""Annapurna"" per se
only recently. In view of such false statement, the suit is liable to be struck off.
Our Finding:
The fourth question raised by the appellant also involves question of fact, which cannot be decided on the basis of the statement made in the
application filed under Order VII Rule 11 of the Code of Civil Procedure.
Authorities:
We have been referred to several decisions of the Supreme Court by the learned counsel for the appellant and the respondents. Since the
learned Single Judge has placed reliance on as many as 18 judgments in the order dated 28 February 2011, and in view of the finding that none of
the grounds raised by the appellant would qualify for rejection of plaint, we consider it not necessary to discuss each and every decision in this
judgment.
Though the learned counsel for the appellant has argued extensively on facts and on law, the fact remains that the application filed by the
appellant in Application No. 5296 of 2010 does not contain any such contention. The appellant prayed for a positive order to reject the plaint on
the basis of the alleged act of reliquishment and suppression of material particulars. None of the grounds raised by the appellant would constitute
valid grounds to reject the plaint under Order VII Rule 11 of the Code of Civil Procedure.
It is trite that for deciding an application under Order VII Rule 11 of the Code of Civil Procedure, the avements in the plaint alone are
germane. The petitioner in an application under Order VII Rule 11 of the CPC must demonstrate that on a simple perusal of the plaint, it is liable to
be rejected either on account of failure to disclose cause of action or barred by law.
The Supreme Court in M/s. Bengal Waterproof Limited Vs. M/s. Bombay Waterproof Manufacturing Company and Another, held that a
subsequent deceitful act would give a new cause of action to file a fresh suit. The Supreme Court said:
20.... It is now well settled that an action for 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 reliefs, 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....
Most recently, the Supreme Court in Bhau Ram Vs. Janak Singh and Others, referred to the earlier decisions relating to Order VII Rule 11 of
the CPC and observed that while considering the application for rejection of plaint, the Court has to examine the averments in the plaint alone and
the pleas taken by the defendants in the written statement would be totally irrelevant.
Summary of Conclusion:
The main points urged by the appellant relate to relinquishment of the cause of action and re-litigation. The plaint filed in C.S.No. 674 of 2010
contains a clear statement that the cause of action for the second suit has arisen only during the currency of the suit in C.S.No. 866 of 2002. The
plaint in C.S.No. 866 of 2002 does not contain any reference about the marketing of products by the appellant under the trade name ""Annapurna
per se. According to the respondents, it was only during the year 2010, they came to know about the marketing of products by the appellant under
the trademark ""Annapurna"" per se which is identical and deceptively similar to that of their registered trademark ""Annapoorna"". The respondents
have also disclosed the pendency of the earlier suit filed by them against the appellant. The materials on record does not contain any indication that
the product ""Annapurna"" per se was also referred to in C.S.No. 866 of 2002 and in spite of the same, no relief was claimed with respect to the
said trade mark. It is therefore not possible to reject the plaint on the basis of the grounds taken in the application.
Disposition:
We are, therefore, of the considered view that on the basis of the materials produced by the appellant in Application No. 5296 of 2010, the suit in
C.S.No. 674 of 2010 cannot be axed at the initial stage. In the result, the original side appeal is dismissed. Consequently, the connected MP is
closed. No costs.