LT Food Ltd. vs Sachdeva and Sons Rice Mills Ltd.

S. Muralidhar, J.

IA No. 14779 of 2012 (under Order VI Rule 17 CPC)

This is an application under Order VI Rule 17 CPC filed by Defendant No. 1 for amendment in the written statement. The background to this application is that the above suit has been filed by LT Food Ltd. against Sachdeva and Sons Rice Mills Ltd. (Defendant No. 1), Pari Foods Private Limited (Defendant No. 2) and the Chief Commissioner of Customs, Delhi Zone (Defendant No. 3) for permanent injunction restraining the Defendants 1 and 2 from infringing the registered trade mark? HERITAGE? of the Plaintiff and for passing off, rendition of accounts and other incidental reliefs.

A written statement was filed on behalf of Defendants 1 and 2 on 29th April 2009 inter alia contending that the trade mark? INDIAN HERITAGE SELECT? Has been used by Defendant No. 1 with the consent of the registered proprietor of Trade Mark No. 1149872 in Class 30 under a written letter of authorization. It was contended that the suit is therefore not maintainable u/s 28(3) of the Trade Marks Act, 1999 (?TM Act?). Defendant No. 1 also claimed prior user of the trade mark? INDIAN HERITAGE SELECT?. It was contended that the adoption and use of the mark? HERITAGE? by the Plaintiff was in bad faith.

In the replication, it was contended by the Plaintiff that it had already filed a rectification application for cancellation of the trade mark registration in favour of the Defendant No. 1. The authorization letter dated 1st March 2009 and the agreement dated 4th March 2009 relied upon by the Defendant were question as to their validity and genuineness.

By an order dated 23rd November 2009, an earlier filed by the Defendant under Order VI Rule 17 CPC was allowed subject to costs.

By a detailed order dated 30th March 2012, the Court passed an order, inter alia, in IA No. 4748 of 2009 under Order XXXIX Rule 1 and 2 CPC as well as in similar IAs in two other suits, directing that till the disposal of the suit the Defendants, their licensees and franchisees would be restrained from selling exporting or dealing in rice under the impugned trade mark? INDIAN HERITAGE SELECT? HERITAGE Select? Or any

Other trade mark as may be deceptively similar to the trade mark? HERITAGE? of the Plaintiff.

On 24th September 2012, the present application was listed before the JR. Pleadings were directed to be completed in the application. A reply has been filed by the Plaintiff on 26th September 2012.

In the application, the Defendant No. 1 refers to a disclaimer made by the Plaintiff in an application filed by it through its subsidiary in the United States Trademark and Present Office (? UPSO?) to the effect that? No claim is made to the exclusive right to use? HERITAGE? and BASMATI RICE?

Apart from the mars as show?. It is accordingly contended that the Plaintiff has given up its exclusive use of the mark and has not disclosed this fact proceedings. Accordingly, the Defendant No. 1 seeks to amend its written statement by including a preliminary objection in paras 9A to 9E particularly in relation to the Plaintiff''s application before the UPSO. In para 9C, it is sought to be averred that the disclaimer before the UPSO amounts to an abandonment and waiver by the Plaintiff of its right to the exclusive use of the trade mark. In proposed para 9D it is sought to contended that the mark? HERITAGE? is a generic word and no monopoly can claimed by the Plaintiff.

Mr. Manish Vashisht, learned counsel for the Defendants relied upon the decisions in Usha Balashaheb Swami and Others Vs. Kiran Appaso Swami and Others, and Revajeetu Builders and Developers v. Narayanasamy and Sons written statement must be liberal.

This application is resisted by learned counsel for the Plaintiff who points out that the amendments are sought to be made by the Defendant more than three years after the filling of the written statement and, therefore, should not permitted. Relying on the decision in Revajeetu Builders and Developers, he submits that where the amendment is not made bona fide and where it fundamentally changes the nature and character of the defence, it ought not be allowed. He submits that the contention now urged by way of amendment to the written statement that the Plaintiff''s mark was generic in nature contradicts the earlier plea of the Defendant No. 1. He further point out that there is no indication as to the date on which the Defendant No. 1 became aware of the stand taken by the Plaintiff before the USPO. He submits that the amendment application barred by laches. Learned counsel for the Plaintiff add that the disclaimer made before the USPO cannot ipso facto affect the right of the Plaintiff in respect of the trade mark in another territory or country. He submit that a disclaimer under the under trade mark law relates only outside of such right arising out of the registration of a trade mark and not outside of such obligations. He submits that regardless of the said disclaimer, the Plaintiff is entitled to maintain a suit for passing off as well as for infringement of portions of the mark which have not been disclaimed.

As far as the law relating to amendment of written statement is concerned the decision in Usha Balashaheb Swami states in paras 21 and 22 as under:-

21...in allowing the amendment of the written statement a liberal approach is general view when admittedly in the event of allowing the amendment the other party can be compensated in money. Technicality of law should not be permitted to hamper the courts in the administration of justice between the parties?.

22....in a case of amendment of a written statement the courts would be more liberal in allowing than that of a plaint as the question of prejudice would be far less in former than in the letter and addition of new ground of defense or taking inconsistent pleas in the written statement can also be allowed.

The decision in Revajeetu Builders and Developers, relied upon by the learned counsel for the Plaintiff related to amendments to plaint and not to the written statement and therefore is not relevant to the present case.

Although learned counsel for the Plaintiff right that an amendment to the written statement nearly three years after the filing of the earlier written statement would normally be barred by laches, the fact remains that the parties are yet to complete the exercise of admission/denial of document and issue are yet to be framed in suit. The Defendant No. 1 can be put to terms for seeking amendment to the written statement at this stage. It is clarified that allowing of the amendments as sought to the written statement should not be construed as expression of the Court of any opinion on the merits of the contentions raised by way of such amendment to the written statement.

Accordingly, the application is allowed with the above observations subjects to the Defendant No. 1 paying the Plaintiff costs of Rs. 20,000 within two weeks. The amended written statement be filed within two week from today.

Subjects to the complains with the above directions, replications be filed by the Plaintiff to the amended written statement within four weeks of it being filed.

List before the Joint Registrar on 21st February 2014 for admission/denial of the documents. By that date, the parties will file their affidavits of admissions/denial and produce the originals of the documents relied upon by them respectively.

List before the Court for framing of issues on 28th April 2014.

Crl. M.A. No. 7406 of 2009 (under Section 340 CrPC)

List on 28th April 2014.